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​ 

July 9, 2026
Recycling, upcycling, and refill-packaging models are now widely promoted as ways to reduce waste, lower carbon emissions, and respond to consumer demand for sustainable products. However, complications arise when these environmentally driven trends intersect with intellectual property law—particularly where reused or altered packaging continues to display third parties’ registered trademarks. Adding to this complexity, Thailand’s draft Sustainable Packaging Management Act aims to introduce new environmental compliance obligations that businesses must navigate alongside existing trademark concerns. Recycling and upcycling packaging may infringe trademark rights, especially in cases not protected by the first-sale doctrine—the principle that a trademark owner’s rights over a particular mark-bearing product end once the owner first sells it. Furthermore, even refill packaging carries legal risk due to specific statutory prohibitions under Thai law. Compounding these challenges, the draft Sustainable Packaging Management Act will impose extended producer responsibility (EPR) obligations on manufacturers and brand owners, requiring them to manage packaging throughout its lifecycle. These overlapping legal frameworks could deter manufacturers from pursuing ESG-aligned business models unless businesses understand how to navigate both trademark and environmental requirements. Under Thai law, this issue remains uncertain because the Trademark Act does not expressly codify the first sale doctrine, also known as the exhaustion of trademark rights. Generally, this doctrine provides that once a trademark owner has lawfully sold goods bearing its trademark, the owner’s right to control further resale of those particular goods is exhausted. The rationale is that the owner has already received commercial benefit from the first authorized sale; therefore, the purchaser should be free to resell or otherwise dispose of the goods. Although the doctrine is not expressly codified in the Trademark Act, Thai courts have recognized it in relation to genuine goods and parallel imports, as seen in a Supreme Court Judgment No. 2817/2543 in which the
Read More
July 6, 2026
Indonesia’s regulation on reporting online intellectual property (IP) infringement provides comprehensive procedural guidance for IP rights holders and their licensees in reporting online infringement complaints. Issued in December 2025 by the Ministry of Law as Regulation No. 47 of 2025 regarding Handling of Intellectual Property Infringement Reports in Electronic Systems, this regulation covers all types of IP rights. It also specifies documentation when reporting infringement, and lays out the procedures for examination, verification, and enforcement actions. Submission of Complaints Complainants may submit reports through the online system of the Directorate General of Intellectual Property (DGIP) or in person at the DGIP office. Complaints may also be filed through an authorized proxy. Under the regulation, complainants are required to provide the following information and documents: Personal details of the complainant; Brief description of the protected work or subject matter (i.e., type of IP and name or address of the infringing website, portal, account, or application, or a link to the location of the infringing content); Complete description of the alleged infringement; Certificate of registration or recordal of the relevant IP; Recordal of IP license agreement, if any; and Other supporting evidence. Verification and Examination Process Upon receiving a complaint, the responsible formality officer may request clarification or additional supporting documents. In the latter case, the complainant must then submit the necessary administrative documents within 14 days of the notification date. Once the documentation is deemed complete and sufficient, the case will be formally registered. Subsequently, the DGIP will establish a verification team to handle online IP violations, which will include the Civil Servant Investigator (PPNS), the Ministry of Communication and Digital Affairs, experts with relevant expertise in IP, and representatives from related associations such as AVISI (Indonesian Video Streaming Association). After examining the report, the team will prepare the Minutes
Read More
June 30, 2026
Customs recordation is an enforcement mechanism in Myanmar that enables intellectual property (IP) rights holders to seek prevention of the cross-border movement of infringing goods. The enactment of Myanmar’s IP laws in 2019 has enabled customs recordation for registered marks and copyrights under the Trademark Law 2019 and the Copyright Law 2019. By contrast, the Patent Law 2019 and the Industrial Design Law 2019 do not provide a practical framework for customs recordation, and accordingly such rights are not subject to the customs recordation regime. Under the Trademark Law 2019, rights holders may apply for customs recordation and may also ask the Customs Department to suspend the release of goods suspected of bearing counterfeit marks. Likewise, the Copyright Law 2019 allows for customs intervention in relation to pirated works. These provisions reflect Myanmar’s gradual alignment with international standards on border measures, although the implementation framework remains at a relatively early stage of development. Customs Recordation Pursuant to the Trademark Law 2019 and the Copyright Law 2019, the relevant authorities have issued customs rules concerning the protection of registered marks and copyrights. In practice, the process generally begins with the submission of an application to the Customs Department together with supporting documentation. This typically includes proof of registration in Myanmar; details of the rights holder, applicant, and any authorized representative; and a comprehensive description of the genuine goods. Product identification materials—such as photographs, packaging samples, and distinguishing features—are particularly important in helping customs officers identify suspected infringing goods. A recordation remains valid for two years from the date of approval. It may be renewed for additional two-year terms, provided that the renewal application is filed within the thirty days prior to expiry for marks and up to thirty days in advance of the expiry date for copyrights, in accordance with
Read More
June 24, 2026
Patent enablement requirements are provided under Article 102 of Vietnam’s Law on Intellectual Property (IP Law). In particular, a patent specification must “fully and clearly disclose the nature of the invention to such an extent that, based on the specification, a person having ordinary skill in the relevant art can implement the invention.” In pharmaceutical and biotechnology patents, this requirement is more complicated and subject to more rigorous assessment. The Patent Examination Guidelines (Guidelines) of the Intellectual Property Office of Vietnam (IP Office) were amended in March 2026 to introduce Annexes III and IV for the pharmaceutical and biotechnology sectors, in which Annex III provides detailed guidelines on the assessment of specification requirements. These amendments were made under a project for strengthening capacity in industrial property examination between the Japan International Cooperation Agency (JICA) and the IP Office. Annex III provides detailed instructions on how examiners assess enablement in a pharmaceutical or biotechnology application, and offers examples of acceptable and unacceptable descriptions with regard to the enablement aspect. Enablement Requirements in Pharma and Biotech Patents Article 12.7 of Circular 10/2026/TT-BKHCN (Circular 10) adds to the requirements of Article 102 of the IP Law that the description must demonstrate the novelty, inventive step, and industrial applicability of the technical solution. For pharmaceutical composition subject matters, Article 12.9 of Circular 10 sets out that the description must present the results of clinical trials and/or the pharmacological effects of the claimed pharmaceutical composition, and must include at least the following information: Substance/mixture used. Testing method (system) employed. Information on the test results. Correlation between the pharmacological effects obtained from the tests and the application of the pharmaceutical product in the prevention, diagnosis, and treatment of diseases. The Guidelines note that pharmacological study results should be presented in a quantified manner, and pharmacological
Read More