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

August 5, 2016

Thailand Prepares for the Madrid Protocol

Subscribe to Updates
Bangkok Post, Corporate Counsellor Column

As part of the ASEAN Economic Community’s Harmonization Plan, ASEAN member states collectively agreed to accede to the Protocol on the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), an existing system for the registration of trademarks.

The Madrid Protocol is administered by the World Intellectual Property Organization (WIPO). It provides a cost-effective and efficient means for trademark owners to obtain protection for their marks in multiple countries through filing one application, called an “international application,” at a single trademark office, in one language, and with one set of fees.

The Madrid Protocol eliminates the high filing costs normally associated with filing separate national applications in each jurisdiction in which protection is sought. Renewals and recordals of changes of the proprietor’s name or address can all be done centrally at WIPO.

Thailand’s Trademark Act was recently amended to allow the country to accede to the Madrid Protocol, and the amended Act entered into force on July 28, 2016. The Department of Intellectual Property (DIP) is in the process of drafting Ministerial Regulations that will allow Thailand to become a member of the Madrid Protocol, and it is preparing a new team of Trademark Registrars who will be responsible for taking charge of filing international applications at WIPO and examining international registrations from WIPO that designate Thailand.

According to the Madrid Protocol and WIPO, an international application will proceed through the following three main stages.

Stage 1: Application through the Office of Origin or DIP

For a Thai applicant, a pending Thai trademark application or registration is a prerequisite for filing an international application under the Madrid Protocol. After the international application based on the Thai application/registration is submitted, the DIP certifies the information in the international application, such as the mark, goods or services, and so on. The DIP then forwards the application to WIPO.

The applicant may extend their protection by requesting to designate jurisdictions that are part of the Madrid Protocol in the international application or subsequently after receiving the international registration.

Stage 2: Formal Examination by WIPO

WIPO conducts a formal examination to check whether the application complies with the requirements of the Madrid Protocol. If there are any irregularities, the applicant will be notified. The irregularities need to be remedied within three months; otherwise, the application will be treated as abandoned, the application process will end, and the trademark will not be registered. In this situation, the filing fees will not be refunded.

If everything is in order, the application is recorded in the International Register, and it is published in the WIPO Gazette of International Marks. WIPO will then send the applicant a certificate of international registration and notify the other trademark offices in the jurisdictions where the applicant has chosen to extend the protection of the mark. This does not mean the trademark has been registered in the designated jurisdictions. Each respective trademark office determines whether the mark can be registered in its country, usually through substantive examination of the application and publication to allow third parties to oppose the application.

Stage 3: Substantive Examination by the Trademark Offices of Designated Jurisdictions

The application passes through substantive examination at the trademark offices of the jurisdictions that the applicant designated, in the same way as an application filed directly in each country. Refusal of the application, together with a statement of all grounds, must be notified to WIPO within a certain time limit—12 or 18 months, depending on the jurisdiction.

If there are any procedures after the refusal, such as a response to an opposition, an appeal, or a hearing, they will be handled between trademark offices and the applicant directly. WIPO will not get involved in these procedures. On the other hand, theoretically, if the application is accepted, a statement that protection of the mark has been granted will be sent to WIPO, which will later be published in the Gazette. The international registration is valid for a period of ten years, with the possibility of renewal.

However, if the international registration is based on a Thai application that has not been granted registration, or if it is based on a Thai registration that is cancelled in the first five years after registration, the rights granted under the international registration will be extinguished—a process called a “central attack.” If this occurs, the international registration will be cancelled. It is possible to transform an international registration into national applications in each designated country, but these transformations may face reexamination by each designated jurisdiction’s trademark office.

There are other hurdles in using this system as well. For example, the Madrid Protocol does not allow applicants to reclassify goods or services in a designated country once the application is accepted by WIPO. In some countries, such as the United States and the Philippines, the applicant would need to file a Declaration of Use and Evidence of Use within a certain period of time—otherwise the registration would be invalid, which is different from Thai practice.

As there are a number of challenges in using this system, before filing an application through the Madrid Protocol, trademark owners should consult an intellectual property lawyer to review the applications and conduct any precautionary measures to fully utilize the system. Thai IP lawyers who have experience filing trademark applications in foreign countries understand the nuances of filing applications in designated foreign countries. Consulting an experienced IP lawyer will help identify any potential risks in filing a Madrid Protocol application and avoid unnecessary expenses.

Despite its challenges, the Madrid Protocol is a good alternative trademark system for businesses of all sizes to protect their trademarks in foreign markets through a centralized, cost-effective means. It also promotes foreign investment, as it gives businesses confidence that their valuable trademarks will be protected. This will, in turn, enhance competitiveness in ASEAN and international markets.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

September 9, 2024
The popularity of the franchise business model has been growing rapidly in Southeast Asia in recent years, with some of the world’s top brands becoming common sights in the commercial districts and shopping malls of major regional cities in Cambodia, Indonesia, Laos, Myanmar, Thailand, and Vietnam. While for most countries in this part of the world, franchising has not been explicitly mentioned in legislation, well prepared franchise business operations can comfortably adapt to each country’s regulatory framework, and the growth is poised to continue even as the global retail sector redesigns and redoubles its efforts in the wake of the COVID-19 outbreak. In fact, the franchise business model, which is both global and hyper-local at once, is one of the most promising solutions that entrepreneurs are turning to in their quest to overcome the challenges of the new economic reality. The Regional Guide to Franchising Law in Southeast Asia provides key, up-to-date insights into the legal frameworks regulating franchise operations in these Southeast Asian countries, and helps brand owners understand the most relevant laws, authorities, and procedures for their business. Some of the essential topics covered for each jurisdiction include considerations in negotiating and designing franchise agreements, protecting intellectual property rights, and important information on judicial and arbitral procedures should a dispute arise between franchisor and franchisee. Practitioners from Tilleke & Gibbins’ offices in Cambodia, Indonesia, Laos, Myanmar, Thailand, and Vietnam contributed to guide—not only by providing legal expertise on the laws and mechanisms applicable in each jurisdiction, but also by examining strategies for establishing and running resilient franchise operations in Southeast Asia. The full guide can be accessed as a PDF through the button below.
Read More
August 30, 2024
As in many other countries, registered trademarks in Indonesia that are not used for a given period of time can be canceled. A recent decision (Decision No. 144/PUU-XXI/2023) from the country’s Constitutional Court has extended the non-use cancellation period from three years to five years, applicable from July 30, 2024. This ruling could have a major impact on trademark holders in the country. Background of the Case Article 74 of Indonesia’s Trademark Law of 2016 specifies that trademarks can be canceled if they go unused in the trade of goods or services for three consecutive years from the date of registration or last use. This provision is aligned with the Paris Convention and the TRIPs Agreement. On October 27, 2023, an Indonesian individual named Ricky Thio asked the Constitutional Court to examine the constitutionality of Article 74, arguing that it opened a pathway for third parties to eliminate trademarks owned by small and medium-sized enterprises (SMEs), and did not provide certainty to his registered trademark in terms of the period of protection. Additionally, he argued that the period of three consecutive years was burdensome for SMEs, and asked the court to void Article 74 and add force majeure circumstances—such as Covid-19—as an exemption to non-use cancellation. Mr. Thio submitted this request while he was defending his trademark registration from a non-use cancellation request filed by Zhejiang Dahua Technology Co., Ltd. In his defense to that cancellation request, Mr. Thio explained that the non-use of the trademark was due to the Covid-19 pandemic. The cancellation case followed a different judicial pathway, and was under appeal before the Supreme Court at the time Mr. Thio filed his request for judicial review with the Constitutional Court. Mr. Thio’s case also attracted the submission of an amicus brief—a relatively new trend in Indonesia—from
Read More
August 30, 2024
In 2023, Vietnam’s Intellectual Property Rights Infringement Prevention Cooperation Program reported that 776 cases of IPR infringement were resolved nationwide. Of these, 546 were addressed through administrative measures, while criminal proceedings were initiated in just five cases. These statistics clearly show that administrative measures overwhelmingly dominate the response to counterfeit goods, with criminal actions being relatively rare. This raises an intriguing question: Why do IPR holders prefer administrative routes over criminal measures in Vietnam? And what challenges and obstacles make criminal enforcement less commonly pursued in these cases? Overlapping legal provisions Under Vietnam’s Penal Code, two key offenses address counterfeit goods: Manufacturing and trading in counterfeit goods under Article 192. Manufacturing and trading in industrial property rights-infringing goods under Article 226. Both provisions regulate counterfeit goods, yet they suffer from a lack of clear definitions and guidelines for application. Article 192 does not explicitly define “counterfeit goods”. Instead, authorities refer to Article 3.7 of Decree No. 98/2020/ND-CP, as amended, which outlines several categories of counterfeit goods, including: (i) utility counterfeits (goods not meeting normal expectations of usage or function), (ii) substandard goods, (iii) counterfeit goods based on misrepresentation, and (iv) counterfeit stamps, labels, and packaging. Meanwhile, Article 226 specifically deals with counterfeit goods that infringe trademark rights. These “trademark-counterfeit goods” are defined under Article 213.2 of the IP Law as goods or packaging bearing trademarks or signs that are identical or confusingly similar to protected trademarks for the same goods, used without the trademark owner’s permission. In this regard, “counterfeit goods” and “trademark-counterfeit goods” are treated as distinct, non-overlapping concepts, each corresponding to a separate offense. However, in practice, there is often a gray area where the two overlap. Many cases involve infringing goods that meet the criteria for both categories, allowing authorities to apply both regulations simultaneously. For
Read More
August 30, 2024
With the emergence of online marketplaces and e-commerce platforms, consumers have transformed their ways of engaging in transactions, gaining unprecedented convenience and access to a vast array of products. These platforms allow small businesses and individual entrepreneurs to reach a wider audience in an increasingly competitive market. Challenges in Tracing Online Infringers The growth of these online marketplaces and e-commerce platforms has also given rise to challenges, particularly in locating the actual identity of online infringers and combating intellectual property infringement activities. Online infringers often take advantage of anonymity to offer counterfeit products for sale on their platforms. Not only do these online infringing activities violate the rights of IP owners, but they also involve the sale of counterfeit products that are often manufactured with inferior quality and may pose significant risks to consumers’ health and safety. In today’s modern world, tracing the actual identity of online infringers proves challenging, as infringers adopt numerous methods to conceal their identity. The most frequently used method is using a fake name and address when dispatching parcels to consumers, making it difficult to verify the seller’s identity and the location of the sender on the parcel package. Some infringers exploit cash-on-delivery logistics services to prevent the disclosure of their identity, such as bank account numbers and bank account owner names, which would typically be required for direct payments. Instead, the shipping company collects the payment on their behalf, allowing the infringers to remain anonymous and making it more difficult to find their actual identity. Thailand’s New Regulations on Cash-on-Delivery Logistics Services Recently, the Committee on Contracts of Thailand’s Consumer Protection Board announced the Notification regarding Stipulation of Cash-on-Delivery Logistics Services as a Controlled-Receipt Business B.E. 2567 (2024) under the Consumer Protection Act B.E. 2522 (1979) in the Thai Royal Gazette dated July
Read More