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 20, 2012

Thailand’s Accession to the Madrid System: Possible in 2014

Subscribe to Updates
Informed Counsel

After a seven-year wait, it seems that Thailand’s accession to the Madrid System will indeed be possible by 2014. The responsible committees have made great progress on the proposed amendments to the Trademark Act, having completed the draft amendments in relation to the Madrid system in June 2012. The proposed amendments will now be forwarded to the Council of State for review. They will then go forward to the Cabinet, the Parliament, and the Senate for approval. This process will most likely take approximately one year, after which Thailand will be ready to become a member of the Madrid Protocol by 2014, as planned.

First Set of Proposed Amendments

There are two sets of proposed amendments to the Trademark Act. The first proposed amendment, which was submitted to the consideration of the Council of State in 2009, passed the first reading of the Parliament in the last quarter of 2011, and is now in the second reading stage. Some of the significant proposed amendments of the first set are listed below.

Smells and sounds. The definition of a “mark” (Section 4 of the Trademark Act) will be amended to include “smells” and “sounds.”

Distinctive marks. Distinctive marks under Section 7(2) will include shapes or three-dimensional objects which are not the natural shapes of the applied goods, are not functionally necessary and do not add value to the goods. Also, smells and sounds must not be descriptive of the applied goods, and any registrable smells must not be the result of the functioning of the applied goods.

Secondary meanings. Marks that would otherwise be unregistrable due to their lack of distinctiveness can be accepted for registration provided they have developed a secondary meaning (Section 7(3)).

Multiple-class applications. Multiple-class applications will now be allowed.

Oppositions and responses to official actions. The time period allowed for responses to official actions and appeal petitions against orders from the Registrar will be reduced from 90 days to 60 days. Along with this, the publication period for opposition purposes and the period to file counterstatements to oppositions will also be reduced accordingly. However, the time period allowed for registration fee payment will be increased from 30 days to 60 days. Additionally, responses to official actions regarding trademark assignment must be completed within 60 days, after which the application for assignment will be deemed abandoned.

License agreements. In the absence of any provision in the trademark license agreement to the contrary, a license agreement will not be terminated as a result of the transfer or inheritance of the right of the mark for which the license agreement is made.

Expiry grace periods. After the expiry date, there will be a grace period of six months for renewal of registration of a mark. A surcharge of 20 percent of the government renewal fee must also be paid by the end of the grace period.

Government fees. The government fees for some transactions will be increased.

Second Set of Proposed Amendments

The main objective of the second amendments to the Trademark Act is to allow Thailand to become a member of the Madrid Protocol and to implement the Madrid system procedures and requirements. Some of the highlighted additional proposed amendments are as follows.

International conventions. Section 11 of the Trademark Act will be amended to allow Thailand to accede to the Madrid Protocol and to accept trademark applications under other international conventions, protocols, or agreements of which Thailand is a member.

Registration of associated marks. During the first phase amendments, there was a proposal to cancel the requirement to register associated marks, but the proposal was not approved. This issue is being reexamined in the second set of amendments.

Partial assignment. Because it will no longer be necessary to register associated marks, partial assignment will be allowed.

Madrid Protocol. A new chapter will be added to the Trademark Act to allow trademark registration under the Madrid Protocol. Under this Chapter, Thailand will implement an 18-month rule for examining international trademark registration under Madrid Protocol and will introduce central attack for such registrations.

Refilling. Refilling of genuine packages will be listed as an offense under Section 110.

Refilling

In combatting counterfeit goods, one of the key challenges for brand owners in Thailand is the issue of refilling—that is, the process by which infringers will use genuine packaging or containers but fill them with their own products to mislead consumers about the origin of the goods. To address this concern, a provision regarding refilling has been re-proposed in the second amendment after it was removed from the first version. This provision will permit trademark owners to take action under the Trademark Act against infringers who rely on refilling to deceive consumers.

The draft wording of the proposed is as follows:

“Any person who uses any packaging or container bearing a trademark, certification mark, or collective mark belonging to a third party which has been registered in Thailand, with their goods or others’ goods, in order to cause the public to believe that the goods are those of the owner of the trademark or collective mark, or that the goods are under a license to use the certification mark, shall be liable to imprisonment for a term not exceeding four years, or a fine not exceeding four hundred thousand baht, or both.”

Progress for IP Owners

The pending amendments to the Trademark Act represent important steps forward for brand owners in Thailand. Many of the proposed changes introduce greater flexibility into the trademark regime, while the refilling provision will tighten up a key area that needs greater protection. Most importantly, Thailand’s upcoming entry into the Madrid system will benefit IP owners by providing new opportunities both for international companies entering the local market and for Thai brands expanding internationally.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

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
August 27, 2026
Franchising in Thailand has matured into a sizeable commercial sector, but the rules governing franchisor–franchisee relationships remain scattered across general legislation rather than consolidated in a dedicated franchise statute. In this environment, the decisions of the Trade Competition Commission of Thailand (TCCT) have emerged as valuable practical guidance. Thailand follows a civil-law system in which judicial and administrative decisions do not create binding precedent; however, past rulings are nonetheless influential. This article examines the most instructive recent TCCT decisions and distills the practical compliance considerations for franchisors and franchisees operating in Thailand. Postcontract Changes: Justified or Unfair? A recurring issue is whether a franchisor may alter the terms of engagement after contract execution. The TCCT has established that midterm modifications are not inherently unfair; the determinative factors are whether there was a reasonable business justification, adequate advance notice, and a transparent process. In a 2023 coffee franchise matter, for instance, the TCCT declined to find a violation where a franchisor increased raw material prices, noting the increase had been communicated in advance and supported by demonstrable cost pressures. A bubble tea franchise matter reinforces this principle. The TCCT found that postcontract mandatory purchases of branded syrup and flavorings were justified, as the agreement reserved the franchisor’s right to modify product requirements, the materials were sold at or below market prices, and the branded ingredients possessed distinctive qualities deemed essential to franchise quality. The complaint was dismissed, with the additional requirements characterized as a legitimate measure to preserve brand consistency. Considered together, these decisions indicate that post‑contract modifications will be evaluated against three criteria: (1) whether there is a legitimate business rationale, (2) whether adequate advance notice was provided, and (3) whether franchisees were treated equitably throughout the transition. Discriminatory Treatment: Are Renewals and Information Equal? A 2024 automotive dealership
Read More
August 20, 2026
As part of its membership in Lex Mundi, Tilleke & Gibbins has released the latest edition of its Guide to Doing Business in Thailand, providing an overview of the legal, regulatory, and commercial considerations for companies establishing or expanding operations in Thailand. The 2026 edition offers practical insight into the country’s business environment, investment framework, and operational requirements. The guide covers a wide range of topics relevant to foreign and domestic investors, including: Investment incentives and promotion schemes Financial facilities and banking regulations Exchange controls and money transfers Import and export regulations Business structures and incorporation options Requirements for establishing a business Operational and compliance considerations Business cessation and insolvency procedures Employment and labor laws Taxation Immigration and visa requirements Prepared by Tilleke & Gibbins lawyers across multiple practice areas, the publication outlines key aspects of doing business in Thailand, including foreign investment restrictions, regulatory compliance obligations, corporate structures, employment requirements, and recent legal and economic developments affecting investors. The publication forms part of Lex Mundi’s Country Guides series, a global collection of jurisdiction-specific reference materials prepared by member firms around the world. Together, these guides help companies evaluate opportunities, compare regulatory environments, and plan international business activities across multiple markets. The full Guide to Doing Business in Thailand 2026 is available through the button below.
Read More