On 7 November 2017, the Thai Department of Intellectual Property (DIP) began receiving international applications under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). Shortly afterwards, on 18 December 2017, the Ministerial Regulations setting out detailed rules on the application procedure were published in the Thai Government Gazette (with retroactive validity, backdated to 7 November 2017); and on 10 January 2018 the Thailand Madrid Application Receiving Office was officially opened.
We have summarized below the rules in the Ministerial Regulations that potential applicants should consider before filing international applications from Thailand or choosing Thailand as a designated country in a Madrid application.
Outbound International Application Based on Thai Application/Registration
- International Applications must be filed in English.
- A Registrar of the DIP carries out formalities examination. The Registrar notifies the Applicant if there are any Application defects. Such defects must be corrected by the Applicant within 15 days of receipt of the Registrar’s Notification.
Once all formal requirements are satisfied, the DIP will forward all relevant documents to WIPO.
- If the documents are forwarded within 2 months from the date the International Application was filed at the DIP, the DIP filing date will be taken as the International Application Filing Date.
- If the documents are forwarded later than 2 months from the date the International Application was filed at the DIP, the date on which WIPO receives the documents will be taken as the International Application Filing Date.
If the Thai-based Application/Registration Becomes Invalid
If, within 5 years of the International Registration Date, the Thai-based application/registration becomes invalid through cancellation, abandonment or refusal, regardless of the cause, the DIP will notify WIPO with a request to cancel or vary the International Registration based on complete or partial invalidity of the Thai-based application/registration.
Inbound International Application Designating Thailand
Receipt of the Application
Once the DIP receives an International Application from WIPO, the DIP will be responsible for translating all pertinent details of the Application into Thai and for assigning a Thai Trademark Application Number that is distinct from the International Registration Number.
All substantive examinations of the Thai national entry application must be carried out under the laws, regulations and practices applicable to national Thai trademark applications.
- The DIP is obligated to complete substantive examination of an application and the registration process within 18 months from the date it received the International Application from WIPO.
- The Thai Registrar must notify WIPO of any provisional refusal against the Thai application within the same 18-month period.
- Responses to any provisional refusal must be filed through a Thai agent within 60 days of receipt of the Notification of Provisional Refusal.
- Any communication from the DIP issued to the Applicant is deemed received after 30 days of the communication dispatch date.
- If at the end of the 18-month DIP examination period no action is taken by the Registrar, the application will be presumed to have proceeded to registration.
Amendments, Assignments and Renewals
- Any amendment, assignment and renewal processed or recorded against the International Registration will be deemed effective in relation to the Thai national entry application as well. However, the Thai Registrar has the option to notify WIPO of a decision to refuse such amendment, assignment or renewal in some cases.
- Where a trademark licensing agreement has been recorded against the International Registration, the Thai Registrar will issue a notice of refusal to WIPO, and the parties are obliged to effect recordal of their licensing agreement specifically against the Thai national entry registration, subject to Thai national laws, regulations and practices.
Invalidity of the International Registration
- If the International Registration becomes invalid within 5 years of the International Registration Date, the Applicant can apply for conversion of the registration to a Thai national registration for the same goods/services as specified in the Thai national entry application.
- Such conversion application must be filed within 3 months of the date on which the International Registration becomes invalid.
- Once the conversion is complete, any priority date specified in the invalid International Registration will remain effective for the converted Thai national application.
At present, the number of International Applications filed based on Thai national applications/registrations and of Thai national entry applications are steadily increasing, as both Thai and international operators see the practical benefits of obtaining protection of their trademarks in Thailand through the Madrid channel. We are confident the use of Madrid will grow significantly in Thailand as it presents an efficient and cost-effective process for brand owners to register and maintain their trademarks.
Please don’t hesitate to contact us if you have any questions about protecting your trademark in Thailand.