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October 1, 2024

The Wait is (Almost) Over for Local Certificates for IR Designations

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World Trademark Review

Background

Since Thailand’s accession to the Madrid Protocol in November 2017, the trademark registration landscape in the country has undergone significant transformation. Brand owners can seek trademark protection in Thailand through a streamlined international process in addition to the national route. This alignment with global practices has somewhat simplified the registration process, offering businesses a valuable pathway to safeguard their brands in this key Southeast Asian market.

However, despite the streamlined process, a technical glitch at the Trademark Office in Thailand’s Department of Intellectual Property has caused delays in issuing local certificates and statements of grant following provisional refusals — commonly referred to as ‘Model Form 5’. These documents are crucial for finalising trademark registrations and confirming their validity within Thailand. It is important to note, however, that this technical issue did not affect the issuance of statements of grant for international registrations (IRs) that had not been provisionally refused.

Recent developments

The good news is that, as of 19 August 2024, the Trademark Office has successfully resolved the technical issues impacting the issuance of these essential documents. With the glitch now fixed, the office has begun to process the backlog of local certificates of registration and statements of grant for IRs designating Thailand following provisional refusals.

What this means for brand owners

The resolution of this technical issue represents a significant milestone for brand owners who have been waiting for their local certificates. As the Trademark Office works to clear the backlog, the issuance of certificates and statements of grant is likely to proceed more promptly. For those affected by the delay, the end is in sight. The issuance of these documents will enable brand owners to officially complete their trademark registration in Thailand and benefit from the protections offered under Thai law.

In the meantime, brand owners needing a certificate of registration for specific purposes, such as enforcement or trademark assignment, should consult with local counsel. In such a case, it may be beneficial to request a certified extract of registration particulars, which has always been available.

Looking ahead

The Trademark Office is now positioned to continue making progress in addressing the backlog. In the interim, brand owners should review their portfolios and consult with local counsel to select the most appropriate registration route — whether national or international — for each mark. This strategic approach will help optimise the benefits of each registration system.

 

This article was first published by World Trademark Review on August 29, 2024.

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