Madrid Application Receiving Office opens for business in Thailand

Thailand
  • The Madrid Protocol entered into force in November 2017, prompting a high volume of applications that designate Thailand
  • The Madrid Application Receiving Office has been established to process applications
  • Applicants should be aware of the risks associated with filing applications in Thailand

The Madrid Protocol entered into force in Thailand on 7 November 2017. Within its first 17 months of enactment, more than 9,000 Madrid applications designated Thailand. This is expected to increase as the process for rights holders seeking trademark protection in Thailand becomes more efficient and cost-effective. However, rights holders should be aware of the peculiarities of local practice to avoid rejection and ensure enforceability.

To cope with the increasing number of applicants, the Department of Intellectual Property (DIP) has established the Madrid Application Receiving Office. It comprises nine officials who are responsible for both inbound and outbound applications. According to an announcement made by the office, all Madrid applications will be examined under the same procedures and methods as domestic applications, except for the proscribed 18-month period to issue a provisional refusal.

There are three main risks for rights holders with regard to Madrid applications in Thailand:

  • The DIP is notoriously strict with regard to inherent distinctiveness. It does not distinguish between a suggestive and directly descriptive mark and often rejects it for descriptiveness whenever it can find any connection between the mark and the goods or services, regardless of whether the mark directly describes the goods or services. If the same strict approach to distinctiveness is applied to Madrid applications, they could face rejection on absolute grounds.
  • Although Thailand follows the Nice Classification of Goods and Services, the DIP has created guidelines on their itemisation, which is strictly followed by examiners. Broad descriptions or class headings will not be accepted. Further, each item of goods or services must be clearly specified. If an application contains broad descriptions of goods or services, the applicant should expect to receive a specification objection, which may result in a delay or refusal of the application.
  • All applications that designate Thailand will be translated from English into Thai by the Receiving Office. This raises concerns with regard to the accuracy of translation made by the office as Thai examiners may not be familiar with translating descriptions of goods and services, especially complicated ones.

Due to these risks, the Madrid System will not be suitable for all marks.

It is recommended that rights holders discuss whether to designate Thailand with local practitioners to see if their mark is better suited for a Madrid or domestic application. If the mark is distinctive and contains detailed standard descriptions of goods and services, a Madrid application may be the most suitable option. However, for less distinctive marks with complex goods or services, rights holders should consider a domestic application and adjust the mark before filing to suit local requirements and reduce the risk of refusal. Appointing a local representative to review the Thai translation (especially for goods and services) is recommended, as mistranslation may affect the scope of protection. Although there is no formal process in place to address any inaccurate translations, it should be possible to submit a written request to the responsible examiner to review and correct the error.

In summary, the recommendations for filing a Madrid or a domestic application are as follows.

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