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​ 

April 30, 2026
Vietnam’s Decree No. 134/2026/ND‑CP, which took effect on 9 April 2026, plays an important role in detailing and implementing Vietnam’s Intellectual Property (IP) Law in the context of rapid digital transformation and the growing application of artificial intelligence (AI). The new decree provides comprehensive guidance on the application of copyright and related‑rights regulations, addressing key issues such as authorship, ownership, statutory exceptions and limitations, registration procedures, and enforcement mechanisms. Through these measures, Decree 134 seeks to achieve an appropriate balance between safeguarding the legitimate interests of rightsholders and fostering innovation, research, and technological advancement, thereby strengthening the state’s framework for the effective management, protection, and exploitation of intellectual property in the digital and AI‑driven environment. Some notable aspects of Decree 134 are discussed below. Copyright for AI-Created Works Decree 134 provides important guidance on the determination of copyright and related rights in works created with the assistance of AI. Article 5a reaffirms the principle that human creativity remains central to copyright protection, clarifying that copyright or related rights arise only where a human makes a substantial and decisive intellectual contribution, exercises effective control over the creative outcome, and assumes responsibility for the content and its legality. At the same time, the provision confirms that AI is regarded solely as a technological tool rather than a rights‑holding subject, thus ensuring consistency with the fundamental concepts of authorship and ownership under the IP Law. By introducing requirements on transparency, proof of human contribution, and compliance with AI‑specific labelling and technical marking obligations, Decree 134 establishes a clear and enforceable legal framework for the responsible use of AI in creative activities. Lawful Use of Copyrighted Texts and Data Article 37a of Decree 134 sets out the specific conditions under which copyrighted texts and data may be lawfully used for scientific research, experimentation,
Read More
April 29, 2026
Across the region, local brands have become key drivers of economic growth, cultural identity, and innovation, and Myanmar is no exception. From traditional products and creative industries to modern startups and small and medium‑sized enterprises (SMEs), Myanmar’s local brands are increasingly shaping domestic markets. However, as local brands grow, they also face higher risks of imitation, misuse, and unfair competition. In this context, protecting brand identity, creativity, and innovation through proper intellectual property (IP) strategies is essential to ensure that Myanmar’s homegrown businesses can grow sustainably, compete confidently, and retain the value of what they create. The Key IP Laws for Local Brands In 2019, Myanmar enacted a comprehensive suite of four IP laws, aligning the nation’s IP enforcement framework with international standards. Trademark Law 2019: This law introduced the “first-to-file” system into the country, with trademark rights primarily obtained through registration with the Intellectual Property Department (IPD). Trademarks protect brand names, logos, and other signs that distinguish goods or services. Registration grants the exclusive rights to use the mark and to prevent others from using identical or confusingly similar marks. Each registration lasts for 10 years from the filing date and can be renewed for subsequent 10-year periods. Copyright Law 2019: Copyright, which arises automatically upon creation, protects literary, artistic, musical, and audiovisual works, including software, advertisements, artwork, and social media content. While registration with the IPD is not mandatory under this law, it can be helpful for establishing evidence and supporting any future enforcement. The terms of protection for economic rights associated with copyrights vary depending on the type of work involved. In contrast, the protection for moral rights lasts indefinitely—continuing even after the author’s death. Industrial Design Law 2019: Under this law, any industrial design that is new and independently created can be filed with the
Read More
April 21, 2026
Vietnam continues to refine its intellectual property framework to align with the 2025 amendments to the Law on Intellectual Property (IP Law). On March 31, 2026, the government issued Decree 100/2026/ND-CP (Decree 100), which substantially amends Decree 65/2023/ND-CP detailing the implementation of the IP Law (Decree 65). On the same day, the Ministry of Science and Technology released Circular 10/2026/TT-BKHCN (Circular 10), providing detailed procedural guidance and new forms. Both instruments took effect on April 1, 2026, along with the amended IP Law. While the updates touch on every IP right, trademark owners and brand strategists will find several practical and forward-looking changes that directly affect filing strategy, examination timelines, portfolio management, and enforcement readiness. 1. Fast-Track Substantive Examination for Eligible Applications One of the most business-friendly innovations is the new fast-track substantive examination pathway for applications meeting specified eligibility criteria. Successful fast-track applications enjoy a shortened substantive examination period of three months. This offers a significant competitive edge for tech-driven or regulated-sector brands. If the mark is identical or similar to a mark in another person’s trademark application with an earlier filing date in the case of a priority application that has not yet been processed, the fast-track process will return to the ordinary process. However, the law does not touch on cases where marks under fast-track examination face office action due to other reasons (i.e. lack of distinctiveness, confusingly similar to others’ copyright, trade name, industrial design, etc.) 2. AI-Generated Trademarks Receive Clear Protection Pathway Decree 100 explicitly addresses the use of artificial intelligence (AI) in IP creation, amending Article 10a of Decree 65 to confirm that trademarks created with AI systems are fully protectable, provided they meet the standard requirements of registration. Trademarks face no additional “human authorship” hurdle (unlike patents or industrial designs). Brand owners
Read More
April 20, 2026
Myanmar’s industrial design registration regime has been steadily gaining momentum since the country officially began accepting applications under the Industrial Design Law of 2019. The Industrial Design Division of Myanmar’s Intellectual Property Department (IPD) has actively advanced examination and registration procedures, and as of March 2026, approximately 300 industrial design applications have been published in the IPD’s publicly accessible database—a meaningful milestone in the development of Myanmar’s emerging intellectual property framework. This figure reflects only published applications; additional filings remain pending and will be published after the conclusion of ongoing examination. Filing Requirements in Practice Compliance with a defined set of mandatory requirements is the foundation for filing a valid design application. These mandatory particulars must be provided at the time of filing in order to establish a filing date. These include the applicant’s and creator’s identifying details, a notarized appointment of representative form, the Locarno Classification of the associated product, and a set of graphic representations of the design across multiple standard views. Applicants must also provide a written description of the design and, where applicable, information relating to any priority claim or request for deferred publication. Filing fees are payable at the time of submission. Beyond these core requirements, applicants typically need to provide supplementary documentation, either at the time of filing or in response to a formality examination. This may include evidence of the applicant’s legal entitlement to the design—particularly where the applicant and creator are different parties—as well as supporting corporate and authorization documents. Where priority rights are claimed, the relevant documents must generally be submitted within three months of the Myanmar filing date, with certified English translations required for any non-English priority applications. The supplementary requirements may vary depending on the nature of the application and the examiner’s requests during the formality examination process.
Read More