Newsletter No. 167

Thailand’s accession to the Madrid Protocol

 

May 2017

 

I. Introduction

Thailand is to become a member of the Madrid Protocol Concerning the International Registration of Trademarks (the “Madrid Protocol”) along with its
ASEAN neighbours (except Brunei, Cambodia, Laos, Philippines and Singapore, which have already acceded).

II. The Madrid Protocol

The Madrid Protocol facilitates the international protection of trademarks by allowing trademark owners to file a single trademark “International Registration” on which they can designate any of the other member countries in which they wish to obtain trademark protection. This process significantly reduces the trademark filing, management and renewal time and costs of trademark owners, and eases monitoring obligations for authorities. An International Registration may be
filed by any legal entity that is domiciled or has a commercial establishment in, or is a national of, a member country of the Madrid Protocol.

As of May 2017, the Madrid Protocol has 98 member countries. III. Reform of the Trademark Act  One of the key reforms required for Thailand’s accession to the Madrid Protocol was the amendment of the Trademark Act which came into force on 28 July 2016 to bring it in line with the protocol’s regulations. The Department of Intellectual Property (the “DIP”), the government authority behind the push for membership, is in the process of drafting ministerial regulations that will allow Thailand to become a member of the Madrid Protocol.

Thailand is expecting to accede to the Madrid Protocol in 2017 in order to comply with the ASEAN Economic Community Blueprint milestones for harmonisation of intellectual property protection within the region.

Key Features of the amended Trademark Act include:

– multi-class application
– sound marks can be registered
– criteria of “distinctiveness” clearly stipulated in Sec. 7 (2)
– partial assignment allowed
– registration of associated marks no longer required
– opposition period reduced from 90 to 60 days
– grace period of 6 months after expiry to renew registration

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