MADRID PROTOCOL IN THAILAND - 26 April 2018
Trademark protection is territorial, which means that trademark owners must apply for protection of their trademark in each jurisdiction that may be of interest to them. This may become a costly affair and time consuming. However, there is no way around it, as an unprotected trademark in a jurisdiction may be prone to unauthorised use of the trademark by a third party, even protected trademarks are vulnerable!
Registration of a trademark, which may cover several jurisdictions, may now be available to trademark owners in Thailand. This is because, after a long wait, Thailand is now a member of the Madrid Protocol (“MP”). The Trademark Act, B.E. 2534 (1991), as amended by the Trademark Act (No.2) B.E. 2543 (2000) and the Trademark Act (No. 3) B.E. 2559 (2016), was amended in 2016 to include the much anticipated acceding to the MP; on 7 November 2017, Thailand finally effectively acceded to the Madrid Protocol.
This is a significant development in the trademark registration system in Thailand. Registration of trademark in multiple jurisdictions around the world may now be done through the MP, which is an international filing system for obtaining trademark protection for a selected number of countries using one single application.
Currently, as of March 2018, there are 101 countries who are members of the MP. To qualify to file an application in Thailand, the applicant must be a resident or a Thai national, or have a real and effective industrial or commercial establishment in Thailand. In order to file an international application, the applicant must first have either a registered or an applied-for trademark in Thailand, which is known as a “basic mark”. Once the basic mark is obtained, the applicant can then file an international application via the MP through the Department of Intellectual Property of Thailand (“DIP”).
Theoretically, with the basic mark, an applicant can seek registration of the trademark in all MP member countries; this is perhaps not always practical, but in essence it is possible. The applicant can select all the counties in which the applicant wishes the trademark to cover. In practice, aspects to be considered are the costs involved and whether the trademark will be used in all the jurisdictions.
A note of caution however is that before taking the MP route of seeking trademark protection, applicants must conduct all necessary research so as to ensure that their trademark is free for use in all the jurisdictions in which they would like to apply for registration.
One of the downsides of taking the MP route is that if the basic mark application (Thailand application) is withdrawn, abandoned rejected, refused or cancelled within five years of the international registration date, other applications submitted which rely on this basic application will also potentially affect the international registration partially or in its entirety; this is known as “The Central Attack”. In this regard, there is an option to convert the international application into a national application in the member countries where the application is rejected, but this will no doubt increase the cost.
Once the trademark is registered, renewals, as well as any change of ownership, recordals of change of address etc., can all be done once to cover the multiple jurisdictions for which the trademark is being registered for, subject to local practice.
In the ASEAN context, since Thailand is now a member of the MP, a Thai applicant can seek protection for their trademark in all ASEAN countries, except Malaysia and Myanmar, who have yet to become MP members. Protection can be extended to these two countries once MP is effective in said countries. Based on researches in countries that already have the MP, taking the MP route is a popular choice as applications must be examined and acted (granted/rejected) upon by the trademark offices in the member countries within 18 months of the filing of the international application. This is particularly effective in jurisdictions where national applications take a longer time before registration.
With the ASEAN economy growing rapidly, having an effective trademark registration system via the MP would encourage the growth of brand developments and further encourage the growth of the economy in this region. The success of the growth of businesses in ASEAN can often be a bench mark of the further expansion of business beyond ASEAN countries.
The MP route is also one that may potentially benefit small or medium size companies, who have restrictions on their budgets but have aggressive marketing strategies, as registration of trademark in multiple jurisdictions may not be a cost effective affair. Therefore, filing one single application to cover multiple jurisdictions maybe potentially work in their favour.
Although the use of the MP is in the early stages in Thailand, the hope is that the MP will encourage the development of small and medium size businesses in Thailand, and enhance the growth of their trademark protection within the ASEAN region. Similarly, other ASEAN countries could potentially get additional protection in Thailand now, under the MP.
Note : This article is not to be treated as a legal opinion but rather only as a guide to Madrid Protocol in Thailand.
This article is prepared by Ms. Pavinee Bunyamissara and Mr. Rajen Ramiah
SCL Law Group