Madrid Protocol Watch

Final Step to Madrid: The DIPs Preparation for the Madrid Protocol

 

For years, the Thai Department of Intellectual Property has gradually taken various steps to prepare for accession to the Madrid Protocol. As the effective date (November 7, 2017) is fast approaching, significant progress is being made as follows.

- Organization

The Madrid Division currently with 8 staff has been established within the Trademark Office. This Division will be responsible for preliminary examination of the international applications filed through the Thai Trademark Office as an office or origin as well as preparation of Thai translations and substantive examination of international applications designing Thailand.

However, the relevant officer has insisted that both Madrid and local applications be examined under a consistent standardsuggesting that that marks held non-distinctive as well as terms of goods/services held too broad under the current practice will still face the same rejections even when filed through the Madrid system. To avoid such rejections, applicants may have to specifically customize their international applications in accordance with the Thai practice or file local applications instead.

Moreover, it would be prudent to ensure that the terms of goods/services in the international applications are accurately translated into Thai. Otherwise, they may be rejected or even worse the scopes of protection may be jeopardized or unreasonably narrowed.

- Computer system

The Department of Intellectual Property has implemented an on-line filing system, under which certain details of Thai basic applications/registrations can be automatically converted into international applications. Before using this system, applicants and agents have to register and verify their identities by presenting original official documents to the Trademark Office in person. Paper applications may not be allowed.

This on-line system should facilitate filing processes of international applications, but there may be some difficulties if applicants wish to file basic applications and international applications simultaneously because

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the Trademark Office will have to promptly input details of basis applications into the system in order that they can be used for filing international applications. Currently, it takes approximately 5 working days for the Trademark Office to update such details of new applications.

- Relevant regulation

The draft regulation specifying details of the Madrid procedure has been approved by the Council of State and should be promulgated soon. According to this draft, international applications submitted through the Thai Office will be examined in 25 days after filed, and the applicants will have to rectify incorrectness or incompleteness (if any) in 15 days upon receipt of the official notices. In case that the applications are in good order, the applicants will have to pay official fees to the International Bureau within 3 days upon receipt of requests from the Trademark Office. In view of these tight deadlines, the applicants should closely and consistently monitor status of their applications in order to ensure timely responses to official notices.

For incoming applications, the applicants will have to deal with provisional refusals issued by the Thai Trademark Office through local agents within 60 days upon receipt of the relevant notices.

It is a universal truth that there is no one-size-fit-all system. There is no exception for the Madrid Protocol, which may not perfectly function in all member states. The authorities, including the Thai Trademark Office, will have to finely tune the system in accordance with their specific circumstances. For trademark owners, it would be beneficial to familiarize themselves to not only the Protocol but also characteristics of relevant jurisdictions in order that they can effectively employ the Protocol in those jurisdictions.


THAILAND JOINS MADRID PROTOCOL

On August 7, 2017, the Thai government officially deposited the instrument of accession to the Madrid Protocol with the WIPO, marking the starting date of the three-month period before the Protocol becomes effective in Thailand. Consequently, the Madrid System will come into effect for Thailand (the 99th member) as from November 7, 2017.

In its instrument, the government makes declarations on three issues. Firstly, a period to issue provisional refusal will be extended to eighteen months, with further extension possible in case of an opposition. Secondly, an individual fee to be specified in Ministerial Regulations to be issued by virtue of the accession will apply to international applications/registrations. designating Thailand. Thirdly, recordal of license agreements with the International Bureau will not be effective with regard to Thai applications/registrations.

After this deposition, the next step is to issue Ministerial Regulations to elaborate on the process. It is anticipated that the Regulations will contain the following details:

- All documents submitted through the Thai Trademark Office to the International Bureau must be in English. If the Thai Office finds an international application incorrector incomplete, the applicant will have to remedy it within 15 days upon receipt of a notice. Otherwise, the Thai Office may not be able to forward the application to the International Bureau within 120 days and the date of filing with the Thai Office will not be considered as the filing date of the international application.

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If the applicant does not comply with the Thai Office’s notice within 120 days, the application will be deemed abandoned. 

- For an international application designating Thailand, the Thai Trademark Office will translate the necessary content into Thai. In case of provisional refusal, the applicant is required to appoint an agent in Thailand to deal with it. The response may have to be in Thai. Incase of failure to respond, the Thai Office may partially accept the application for the goods/services in relation to which the refusal does not apply. 

- For certification marks and collective marks, the applicant is required to submit a rule on use and a list of authorized users in Thai. 

- The relevant forms, e.g. the application form and forms for various notices, will be prescribed by the Director- General of the Department of Intellectual Property. Inaddition, the DIP establishes a specialized unit to handle both inbound and outbound applications under the Madrid System. 

As the effective date is approaching, we are monitoring this matter closely and will keep you informed of all updates.

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