One of the most widely talked about issues in legal circles lately has been a discussion of the Madrid Protocol, which is the Protocol relating to the Madrid Agreement concerning the International Registration of Marks. After much debate and research on the topic, Thailand finally decided to join this Protocol after it had appointed a committee in 2005 to provide concrete analysis as to the advantages and benefits of being a participant . With adherence to the Madrid Protocol, Thailand will need to enact or amend its laws and regulations related to the mark registration to be in accordance with the provisions of the Madrid Protocol which, in this case, a Ministerial Regulation and Royal Decree to enforce the Madrid Protocol’s provisions must be declared.
Normally, a mark, e.g. a trademark or service mark, which is registered with the Department of Intellectual Property of Thailand will be protected by the laws throughout its territory, as well as the mark being registered in other countries which will in turn be protected by the subsequent laws regarding that territory also. However, in order to benefit from this protection , the mark owner needs to apply for the application and file it with the Office of Intellectual Property in each country. Therefore, this will increase the expenditures to the mark owner by filing for numerous mark applications in each country. The costs involved in this process may include a fee for legal advice, an appointed mark agent service fee, and a translation fee for conducting said applications in other languages.
Fortunately, in 2016, there has been an amendment to the Trademark Act B.E. 2534 (1991), which has made a significant impact to the IP community in Thailand Recently, the Cabinet approved, in principle, the drafting of the above-mentioned Ministerial Regulation and Royal Decree to the Trademark Act B.E. 2534 (1991) and then sent the said Ministerial Regulation and Royal Decree to the Council of State for its comments and later return of those comments to the Cabinet for its final consideration and approval. If everything continues according to plan, the amended laws and provisions should be effective on 7th November 2017. This revision will facilitate the process of the entrepreneur who has registered their mark in Thailand, and are seeking an order to request for the protection on their mark in a foreign country. Instead of filing the application in each country in their official language, the mark owner only needs to file one application in the language which has been previously prescribed in the Madrid Protocol (i.e. English, Spanish and French) with the Office of Origin (in Thailand – it is the Department of Intellectual Property). Subsequently, they will submit the application to the International Bureau of WIPO and then the aforementioned application will be sent to the office of the designated contracting party for substantive examination as to whether it is in accordance with the internal legislations. After receiving the application of request, the office of the designated contracting party shall then inform the mark owner what the outcome of the consideration is within 12 or 18 months dependent upon the agreement between WIPO and each individual country. As a result, if the mark is found to be conformed with all of the domestic laws in place, then it will be registered and protected under the said laws in each designated contracting party. . However, one of the important disadvantages and issues of the Madrid Protocol system is – in that – if the based application filed at the Office of Origin in the home country is rejected or withdrawn within 5 years of the application date, all applications submitted in other designated contracting parties will be rejected. This domino effect is called “The Central Attack”. The mark owner will need to file each individual application in each designated contracting party by following internal rules and regulations of each country in order to reserve its right in term of the original filing date.
Therefore, as a whole, the Madrid Protocol system will be advantageous to the brand owner assuming that it be the cost-effective process whereby the brand owner has the convenience in filing the application in one of the three selected languages at the Office of Origin in case that the owner is very confident that the mark will be registered in the designated contracting countries. If not, the owner will be faced with the “Central Attack” problem and that will increase costs dramatically and prove time-consuming to the mark owner also.
In order to ensure whether the mark can be registered or not, the owner should first consult with its legal counsel who are specialists and use that expertise on trademark prosecution before deciding to file the application through the Madrid Protocol system.
Panisa Suwanmatajarn Theerapat Upaipanit
Partner Junior Lawyer