Date announced for Thailand to join the Madrid Protocol

It is now official, from November 7, 2017 you will have the choice when filing your mark in Thailand to either file it via the Madrid System or through filing a national application directly with the Department of Intellectual Property (DIP).

The Thai trademark system is complicated, regimented, and overseen by capricious and over imaginative examiners. Can the one-size-fits-all Madrid System elide all of this and make registering a trademark in Thailand easier? It is too early to tell, although the following features should be considered:

Searches

  • It is still essential to conduct a pre-application trademark clearance to assess the trademark’s registrability. Is the mark inherently distinctive? Does it fall foul of Thailand statutory prohibitions on trademarks? Does it conflict with any preexisting trademarks - Thailand is notorious for trade mark squatters and counterfeits.
  • Next, assuming the screening results don’t scare you away, you must determine which class(es) to file in and the specific products or services (“items”) to be covered by the mark. This is a lot trickier than it sounds because the Thai examiners are very particular on how goods and services must be itemised.

Filing

  • Thailand will impose an individual fee which is yet to be determined. Since it cannot exceed the maximum national filing fee, it shouldn't be more than CHF260, on top of WIPO's basic filing fees.
  • Goods and services of international applications designating Thailand will be translated into Thai by the DIP itself. Even if the application goes smoothly the accuracy of the translated goods/services in Thai is likely to be a concern. Means to check translated goods/services prior to the grant of applications should be deployed as part of your filing strategy.

 Examination

  • Examination of trade marks shall occur within 18 months from the date the notification of extension is sent from WIPO to DIP, which is similar to the current practice of the DIP.
  • International applications designating Thailand will be examined by a dedicated group of examiners different from those examining national applications. It remains to be seen if that group of examiners would be more liberal than the one in charge of domestic filings.

 

If you have any questions please contact: Bangkok@rouse.com.