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​ 

March 31, 2026
Vietnam’s most recent amendment of the Law on Intellectual Property (amended IP Law), passed by the National Assembly on December 10, 2025, and effective from April 1, 2026, represents one of the most significant updates to the IP Law in recent years. This amendment modernizes the IP framework, moving a step closer to international standards, while addressing the realities of Vietnam’s booming digital economy, e-commerce growth, and increasing foreign investment, which is crucial for Vietnam’s objective of complete economic transformation. For trademark practitioners, brand owners, and businesses, the changes are largely positive, as they promise faster processes, stronger enforcement tools—especially for online actions—and better commercialization options. However, they also introduce stricter requirements and a need for proactive preparation. Below are some of the most noteworthy changes in the amended IP Law related to trademarks. Significantly Shortened Timelines and Introduction of Fast-Track Examination The statutory timelines under the amended IP Law have been notably reduced: Substantive examination for trademarks is shortened from 9 months to 5 months (from the publication date). The publication period is shortened from 2 months to 1 month. A new fast-track mechanism allows substantive examination in as little as 3 months for qualifying applications (e.g., marks in actual use, facing infringement threats, or meeting government-specified criteria; details to be clarified in implementing regulations). The opposition period is shortened from 5 months to 3 months from publication. This is arguably the most welcome change. Vietnam’s IP Office has long faced criticism for lengthy backlogs, often stretching the trademark registration process to 18–24 months or more. The new timelines bring Vietnam closer to efficient systems. The fast-track option is particularly smart for high-value or urgent cases such as counterfeit threats on e-commerce platforms. However, careful preparation is mandatory for flawless applications from the start to maximize fast-track eligibility.
Read More
March 16, 2026
Indonesia’s Ministry of Law has introduced a new framework for patent applications that tightens filing requirements and introduces formal mechanisms for accelerated examination. Minister of Law Regulation No. 6 of 2026 on Patent Applications, which was issued on January 13, 2026, and took effect on February 23, 2026, serves as the implementing regulation for Law No. 65 of 2024 on Patents. It replaces the previous patent application framework (under Minister of Law and Human Rights Regulation No. 38 of 2018, as amended by Regulation No. 13 of 2021), which was considered no longer aligned with current legal, institutional, and technological developments. The regulation also reflects the institutional restructuring of the Ministry of Law and Human Rights into the Ministry of Law. Patent applications filed on or after February 23, 2026, must fully comply with the new regulation. Applications that were filed before this date will continue to be examined and processed under the previous regulation, pursuant to transitional provisions. Substantive Changes Definition of Invention The definition of “Invention” now explicitly includes systems, methods, and uses, in addition to products and processes. This expansion creates broader protection opportunities, particularly for software-enabled, digital, and method-based technologies, although it may also result in closer scrutiny during substantive examination. Excess Claims Fee Excess claims fees must now be paid at the time of filing. Failure to pay excess claims fees at filing results in the application being deemed withdrawn. There is no longer an option to defer payment to the substantive examination stage. This amendment forces applicants to face higher upfront costs. Patent claim strategy must be finalized prior to filing, reducing flexibility at later stages. Procedural and System Changes Fully Electronic Filing Patent applications must be filed electronically via the Directorate General of Intellectual Property (DGIP) online filing system. Assisted filings to
Read More
March 13, 2026
For decades, intellectual property rights holders seeking to eliminate counterfeit goods from the Thai market have relied primarily on criminal raid actions to seize infringing products and hold infringers accountable. The deterrent value of this approach is typically threefold: imposing criminal liability on infringers, removing counterfeit goods from circulation, and subjecting violators to imprisonment and fines. However, these outcomes often fall short of fulfilling brand owners’ broader objectives. In many cases, those prosecuted are merely staff or intermediaries rather than the principals orchestrating the infringing operations. Moreover, any fines imposed are remitted to the Thai government—not to the rights holders who have suffered commercial harm and invested substantial resources in investigation and coordination with law enforcement authorities. As in other jurisdictions worldwide, rights holders seeking monetary compensation for IP infringement in Thailand have traditionally pursued separate civil litigation. Before initiating such proceedings, a brand owner must gather sufficient evidence to establish both the infringement and the resulting damages. Notably, Thai law does not recognize punitive damages; courts award only actual damages proven by the claimant. In the absence of seized infringing goods, the damages awarded in such cases are typically minimal. This all leaves rights holders with limited recourse despite possibly having suffered significant commercial injury. In 2005, Thailand amended its Criminal Procedure Code to introduce Section 44/1, which enables rights holders to claim damages within criminal proceedings at the Intellectual Property and International Trade Court prior to the evidentiary hearing. In practice, this mechanism allows an injured party to submit a petition for civil damages directly within the criminal case initiated by the public prosecutor. Historically, rights holders in Thailand have been reluctant to use Section 44/1 because the compensation awarded by courts was often insufficient to justify the effort. However, recent years have seen a notable shift
Read More
March 13, 2026
Vietnam’s Law on Intellectual Property (IP Law) has undergone continuous amendment in recent years, with the latest amendment issued at the end of 2025. Among the amended and supplemented provisions, the regulation that has perhaps attracted the most attention is a provision relating to the use of protected IP objects by artificial intelligence (AI) systems. Specifically, Article 7 of the 2025 IP Law introduces a completely new Clause 5, which reads in full as follows: “Organizations and individuals are permitted to use texts and data relating to intellectual property objects that have been lawfully published, and which the public is allowed to access, for the purposes of scientific research, experimentation, and training of artificial intelligence systems, provided that such use will not unreasonably affect the legitimate rights and interests of the authors and intellectual property rights holders in accordance with this Law. With respect to texts and data that are objects protected by copyright and related rights, the use of the texts and data as set forth herein must also be in accordance with the regulations of the Government.” Analyzing this newly added provision in the context of how it was conceived, as well as the challenges that still lie ahead, can provide some interesting insights. From Aspirations to Flight in Science and Technology From the end of 2024 and throughout 2025—the 50th anniversary of the country’s reunification—Vietnam witnessed numerous sweeping changes in many areas, including legislative development. It could be said that no sessions of the National Assembly have ever adopted as many laws, resolutions, and major policies as this one. The aspirations of the highest-level leadership have been concretized into major law and policy projects, which were drafted, developed, and passed at record speed. All of this was aimed at building a foundation for Vietnam to achieve
Read More