You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

September 15, 2017

The Madrid Protocol: A Big Leap in International Trademark Cooperation

Subscribe to Updates
Bangkok Post, Corporate Counsellor Column

On November 7 this year, Thailand will officially become the 99th member of the Madrid Protocol, a centralized system for trademark owners to protect marks in multiple jurisdictions, using only one international application, and subsequently to manage that protection in a single step.

An international application filed under the Madrid system can protect a trademark in up to 114 territories, of the other 98 members, in one shot. The system also lets mark owners from other member territories register their marks in Thailand through an international application filed in their own jurisdiction. If you are a trademark owner, understanding how the system works is key to reaping the full benefit.

Let’s say that, as a Thai trademark owner, you wish to protect your mark in Thailand, plus the United States, Japan, and South Korea. Before the Madrid Protocol, you would have needed to file four separate applications in four countries, prepared in four different languages, with application fees in four currencies.

Under the Madrid system, however, you can designate other Madrid system members in an international application. Therefore, you could file a local application with the Department of Intellectual Property (DIP) in Bangkok, and at the same time file an international application designating the US, Japan and South Korea, using the local application as the basic application, and simply wait for the result.

If you already have a local registration, you can use the local registration as the basic registration for filing your international application. The DIP will certify the international application and send it to the World Intellectual Property Office (WIPO) for examination and approval for international registration. Once international registration is granted, WIPO will notify the designated countries, and each country will further examine it for registration in its jurisdiction.

It should be noted that an international registration does not automatically gain protection in all other jurisdictions. The list of member countries that you can designate on applications is available on the WIPO website (www.wipo.int).

As you can see, you would now only need to file one international application, in one language, at one place, and pay fees in one currency, in order to extend protection over your mark to other jurisdictions.

In addition, the Madrid system sets time limits for provisional refusal in each designated country, so your mark gains automatic protection if the designated country does not provide notice of the provisional refusal within the time specified.

For instance, the US Patent and Trademark Office (USPTO) has to issue a provisional refusal within 18 months of receiving notification of the international registration from WIPO. If it fails to meet the deadline, the mark will be protected as if it had been successfully registered with the USPTO. Each member country can choose a provisional refusal deadline of 12 or 18 months. Thailand has set its limit at 18 months.

Nevertheless, if an office of a designated country issues a provisional refusal against your international registration within the limit, you will need to deal directly with that office. This may require the assistance of a local representative who is familiar with trademark practice in that country.

An international registration is valid for 10 years from the international application filing date. Within the first five years, the validity depends on the status of the basic mark. If the basic mark becomes void for any reason within these five years, the international registration will be cancelled. This type of incident is called a “central attack.”

Despite some minor limitations, the Madrid system is still a recommended tool for trademark owners who wish to seek protection in several jurisdictions.

If you wish to use the system, it is highly recommended that you plan ahead, and plan well, especially if you are going to use your local application as the basic application. Although the new system makes things much smoother for prospective international trademark holders, failing to properly prepare may prevent you from getting the full benefit from the Madrid system and may ultimately lead to additional costs.

For those who do not require international protection, the national trademark protection regime is unchanged. If you have a change of mind later on, however, a pending local application for the mark (or a successful registration of it) can be used for an international application.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

September 7, 2026
Indonesia’s Constitutional Court (Mahkamah Konstitusi) has reinstated a key provision limiting pharmaceutical patent protection, signaling a renewed commitment to balancing patent rights with public access to medicines. In its ruling to Case No. 255/PUU-XXIII/2025, the court partially granted a petition for judicial review of Law No. 65 of 2024, which had amended the country’s Patent Law, and ordered the restoration of a provision that had excluded certain pharmaceutical inventions from patentability. The decision took effect immediately upon its pronouncement at the court’s plenary session on August 28, 2026. Background The petition challenged the removal of article 4(f) from Law No. 13 of 2016 concerning Patents (Patent Law), as amended by Law No. 65 of 2024. Article 4(f) had excluded from patentability certain inventions relating to new uses of known substances. The petitioners argued that removing this provision would open the door to patent protection for second medical use inventions and facilitate patent evergreening—practices that can extend exclusivity periods, delay generic market entry, and reduce public access to affordable medicines. The petitioners included several patient advocacy and public-interest organizations: the Indonesian Dialysis Patients Community Association, the Indonesian Association of Drug Abuse Victims (PKNI), the Indonesian Pulmonary Hypertension Foundation (YHPI), the Rekat Peduli Indonesia Foundation, and the Indonesian Positive Women’s Association (IPPI), along with the Indonesia for Global Justice Association and four individual petitioners. The petitioners also challenged the constitutionality of the phrase “interested party” in article 70(1) of the Patent Law, arguing that it should be construed expressly to clarify who has standing to appeal a decision to grant a patent before the Board of Patent Appeal, and to allow a broader range of parties—such as patent holders, licensees, consumer organizations, prosecutors, aggrieved third parties, and others who may suffer direct or indirect harm from the grant of a patent—to
Read More
September 2, 2026
Thailand and China have a longstanding and significant trade relationship, which increasingly extends to e-commerce and digitally enabled supply chains. While these channels create new opportunities for businesses to reach consumers across borders, their growth also brings greater exposure to intellectual property (IP) infringement across jurisdictions and online platforms. Effective cooperation between the two countries’ enforcement authorities has therefore become increasingly important. To strengthen cooperation in this area, Thailand and China signed a memorandum of understanding (MOU) on IP enforcement in Beijing on July 20, 2026, during the Thai prime minister’s official visit to China. Officially titled “Memorandum of Understanding Between the State Administration for Market Regulation of the People’s Republic of China and the Ministry of Commerce of the Kingdom of Thailand on Cooperation in the Field of Intellectual Property Enforcement,” the MOU forms part of a broader bilateral agenda covering industrial and supply chains, participation by micro, small, and medium-sized enterprises (MSMEs), cooperation associated with the ASEAN–China Free Trade Area 3.0, and progress on the registration of Thai geographical indications in China. The MOU establishes a bilateral framework for cooperation and coordination in five broad areas: Strengthening dialogue in IP enforcement; Enhancing information sharing; Facilitating the enforcement of IP rights in cases arising in the parties’ domestic markets and on online platforms, in accordance with their respective domestic laws; Promoting cooperation in IP enforcement training and human resource development; and Undertaking other cooperation activities agreed upon by both sides. The Department of Intellectual Property (DIP) will serve as the principal coordinating agency for Thailand, while the Bureau of Law Enforcement and Inspection in China’s State Administration for Market Regulation (SAMR) will serve in that role for China. The framework is particularly relevant to the growth of e-commerce, as it covers infringement in the domestic markets and on
Read More
August 28, 2026
When considering a franchise, many people first think of a restaurant, retail chain, or service outlet. From a legal perspective, however, the foundation of every franchise lies in the right to use a brand, which is typically granted through a trademark license. Trademarks are often the most valuable assets in a franchise system. Through a trademark license, a franchisor authorizes a franchisee to use its trademarks, logos, and branding while maintaining control over how the brand is presented to customers. The Role of Trademarks in Franchise Businesses Under the Trademark Law 2019, a mark is defined as a sign that is capable of distinguishing the goods or services of one undertaking from those of others in the course of trade. This distinguishing function is particularly important in a franchise arrangement, where the franchisee’s use of the franchisor’s trademark allows consumers to recognize the source, quality, and reputation of the business. In this way, trademarks help preserve brand identity, strengthen market recognition, and protect the commercial value of the franchise system. Legal Foundation for Franchise Brand Protection Myanmar presently does not have a specific statutory framework governing franchise arrangements. As a result, franchise agreements are generally regulated under the broader applicable legal framework, including the Contract Act 1872, the Trademark Law 2019, the Competition Law 2015, the Consumer Protection Law 2019, and the relevant implementing rules and regulations. The licensing of trademarks within a franchise arrangement is particularly governed by the Trademark Law 2019. Franchisors should ensure that the trademarks intended to be licensed to franchisees in Myanmar are registered under the Trademark Law 2019 and that the relevant trademark license is properly recorded with the Intellectual Property Department (IPD). Trademark License Recordal Under the Trademark Law 2019, the owner of a registered trademark may grant a license to another
Read More
August 27, 2026
It is generally understood that patents are granted for new designs that have not been widely known or used in Thailand and not been disclosed anywhere prior to the date of the patent application. It is trite law that design law protects the distinctive appearance or products. Under Section 3 of the Thai Patent Act B.E. 2522, as amended by the Patent Act (No. 2) B.E. 2535 and the Patent Act (No. 3) B.E. 2542, a design is defined as “any form or composition of lines or colors that gives a product a special appearance and can serve as a pattern for an industrial or handicraft product.” This raises an important question. Can a patent be issued for a product design that contains text, numerals, trademarks, or symbols that do not fall under the definition of a design? This issue commonly arises when attempting to register packaging, labels, and graphical user interfaces (GUIs). Until a few years ago, applicants could file design applications with the Thai Patent Office for designs that contained such elements, provided that an appropriate disclaimer was included. This practice was generally accepted by Thai design examiners at that time, but the Patent Office has since implemented a change in its practice that could have a significant impact on applicants for design patents. Where design representations are submitted as line drawings or computer-aided design (CAD) drawings, the examiner may now issue an office action requiring their removal. This practice, however, appears to be applied inconsistently, as some examiners still exercise their own discretion in determining whether drawings containing these elements are acceptable. Below are examples of a GUI design, a CAD drawing design, and a photographic design representation that illustrates issues relating to the presence of nonallowable elements. GUI design For this GUI design, the submitted
Read More