How can you move forward to protect your Trademark? What are your options?
In most cases, there are two internationally recognized systems that are commonly used for Trademark Protection.
The Paris Convention
The first of these two separate systems consists of filing with the Paris Convention for the Protection of Industrial Property which means the trademark owner can file their trademark directly with the designated countries. Even with the proper filing through the Paris Convention, it does not automatically protect the trademark in all the Paris Union countries referenced and once it is protected in the countries where the trademark has been filed with.
The Madrid Protocol
Another popular way to protect the trademark is filing with the Madrid Protocol. This means the trademark owner uses the Madrid system to protect the trademark in over the 130 countries that are members of the aforementioned system by filing a single international application and one-time payment of the set of fees.
In addition, Thailand has been a member of the Madrid Protocol since November 7, 2017, and is one amount the 130 countries who are members of the treaty. The Madrid Protocol is administered by the World Intellectual Property Organization (WIPO) which is convenient, cost-effective, although it may be viewed as time-consuming.
What are the advantages and disadvantages of the Madrid Protocol?
Advantages
| An international application can receive protection amongst the member countries through a single application. |
| An international application can make a one-time payment of the set of fees. |
| Cost-effective method. |
| The process is less time-consuming. |
| Any amendment in the details of the applicant can be amended by forwarding one single document to the International Bureau whereas there is no need for it to be made at each national office. |
| The costs of filing and renewal of an international application are lower than a direct application. |
Disadvantages
| International registration can extend only to Protocol territories. |
| If a basic application filed in Thailand is canceled or limited in the first 5 years, then the international mark will similarly be cancelled or limited. |
| If an international registration is designated in Thailand receiving the office action from Thai DIP, the applicant must appoint a Thai representative to proceed with the next action. |
As we can see from the detailed information presented above regarding the Trademark Systems available and as both may present unique advantages and disadvantages dependent upon the client as well as the factors and details presented. As part of the Madrid Protocol, Thailand is part of a much larger trademark community which may offer additional advantages to the trademark applicant.
As always, before taking any action, it is highly recommended to contact a trademark professional who can guide you as well as provide additional insights into what may be the most cost-effective solution to your needs.
Read the full article: Article II – full report (pdf)
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Patcharaporn Thongprapai
ASSOCIATE & PATENT ATTORNEY
RWT International Law Office
