Recent developments in the international trade mark sphere have seen two key Asian nations, Thailand and Indonesia, announcing their intention to join the Madrid Protocol for the International Registration of Trade Marks later this year.
Together with the 98 nations already signed-on to the Madrid Protocol, these countries are looking to streamline trade mark filing processes and administration of trade mark portfolios.
The benefit for Thailand and Indonesia is twofold.
Thai and Indonesian nationals will be able to use the system to seek protection for their trade marks in multiple member countries in order to maximise the protection of their marks.
Equally, joining Madrid will likely stimulate local economic growth and provide easier access for foreign trade mark filers wishing to enter the Thai or Indonesian IP landscape.
This could help assure foreign businesses of the strength of local IP protection and promote business traffic in those nations.
What does this means for trade mark owners?
Bangkok and Jakarta are two of the most thriving business hubs in the last decade, and are continuing to expand rapidly.
Trade mark owners wishing to extend protection of their brands in Thailand or Indonesia will soon be able to file a new international Madrid application, based on their Australian trade mark application or registration, and select Thailand as a ‘designation’ from November 7, 2017, and Indonesia from January 2, 2018, respectively.
Owners will also have the opportunity to add Thailand and Indonesia as a designation to their existing international Madrid registrations.
The Madrid System’s paramount purpose is to provide a harmonised trade mark filing platform with the registrability of marks still decided by the local examining office.
While small amendments to claimed goods or services in an international application may be necessary to comply with Thai or Indonesian local practice guidelines, a notable advantage is that the goods and services do not need to be prepared and filed in the local language.
The burden of cost and time in respect of certified translations, declarations of ownership and legalised Power of Attorney forms can prove arduous, particularly when commercial time pressures apply to the expansion of protection of a trade mark owner’s brand.
Less likely to require foreign associates
Beyond filing, there are several mechanisms in place within the Madrid System to aid the cost and timing of your trade mark application.
For example, if no objections are raised when the national Trade Marks Office of a designated country examines the application, the application will receive an ex-officio examination notice confirming acceptance. This will be sent directly to WIPO and forwarded to the recorded address for service, saving any further involvement by the local designated office, and avoiding the necessity of engaging local representation in either Thailand or Indonesia.
If objections are raised when the application is examined, an official report will be delivered to the international bureau and forwarded directly to the address for service of the international registration. In these cases a local agent will need to be instructed to file a response to the objection at the national Trade Marks Office of the designated country.
Limited Time Frame for Refusal in Thailand and Indonesia
Interestingly, both Thailand and Indonesia have opted for a time period of 18 months, within which designated offices are mandated to examine the application. Once the time period has elapsed without an objection being raised, a notice of protection will issue to the brand owner.
However, in the case of third party opposition, the national Trade Marks Office of a designated country may still notify WIPO of a notification of refusal after the expiry of the 18-month time limit.
In comparison, it is not uncommon to wait 15 – 24 months before receiving an official report or publication notice when filing directly into Thailand and Indonesia through the national route.
The Madrid Protocol was first established in 1891 under the Madrid Agreement, and has evolved to address the pressures of a technology driven IP global landscape.
The Madrid Protocol filing system opens the door to protection of a trade mark in 115 nations and territories, stemming from one application filed with WIPO in one language, and one payment of a consolidated official fee.
Fundamentally, the Madrid System is a trade mark filing treaty, and serves to harmonise global IP interaction.
Trade marks registered through the Madrid System are protected for 10 years, and may be renewed for a further 10 years upon the payment of fees. Your protection in each designated country will be renewed by virtue of renewal of your international registration.
Why it (Thailand and Indonesia joining and Madrid generally) matters
The decision of Thailand and Indonesia to join the Madrid treaty is no coincidence.
It reflects each government’s commitment to the ASEAN BLUEPRINT 2025, a comprehensive 10 year plan focusing on economic integration, fostering innovation and a global community for its Asian member countries.
Essentially, it is a tangible show of cooperation with the mechanisms of international trade mark protection and a commitment to uphold a global standard of IP rights. Indeed it is a sign of the exciting growth to come for two of Asia’s most dynamic developing nations.
This latest development of Thailand and Indonesia coming to the table on the unification of filing process could be an indication of more news to come in respect of the only two remaining ASEAN members not to have joined the treaty: Malaysia and Myanmar.