Prior to the introduction of products or services to the Thai market, trademark owners must consider whether trademark applications should be filed through the Madrid (international trademark) system or the national filing system in Thailand. It is worth considering concurrent filings under both the Thailand system and the international trademark filing system.
Trademark registration process in Thailand
In Thailand, a trademark needs to be registered to obtain protection. The application for a trademark is to be submitted to the Department of Intellectual Property (DIP). To be registrable, the trademark must be distinctive, not be prohibited under Section 8 of the Trademark Act (No. 3) B.E. 2559 (“TMA”), and not to be same as, or similar, to a trademark registered by another person. Currently, Thailand has adopted the 11th edition of the Nice Classification, under which 34 classifications of goods (Classes 1 to 34) and 11 classifications of services (Classes 35 to 45) exist.
The registration can be for a certificate of service mark, certification, or collective mark. Each has its own form prescribed by the Ministerial Regulation (B.E. 2535 (1992)) issued under the TMA. The application fee ranges from 1,000 Baht per item for less than 5 items class of goods or services to 9,000 Baht in case of more than 5 items. If the applicant is a foreigner, they must have a fixed address in Thailand. Non-residents must appoint a Thai resident and grant them a power of attorney to be able to register a trademark. All the required documents must be submitted in the Thai language.
The application will then be examined by a trademark registrar; this process can take between 7-10 months. If the application or documentary evidence is incorrect or incomplete, the applicant will be given an opportunity to correct the application.
Once the requirements are met, the proposal will be published in the Trademark Gazette for 60 days. The total registration process can take between 12 and 18 months. The trademark will be registered if there is no objection made during that period and the registration fee is due at this time. Registration is valid for 10 years starting from the application date and can be renewed for another 10 years. Thailand DIP’s ‘First Action Fast Track’ system enables trademark owners to renew their marks in 45 minutes.
The Madrid Protocol
The first version of the Madrid system was an International Trademark Registration Process created in 1892 providing a bundle of trademark registrations across jurisdictions. Thailand became a member of the Madrid Protocol in November 2017. Under the Madrid system, any person having a personal or business connection to one of the System’s Common regulations and administrative instructions are also part of the legal framework of the Madrid system.
To file an international trademark application through the Madrid system, the applicant must have already registered for the trademark in Thailand’s IP office and the relevant business:
✓ must be domiciled in a contracting party, or
✓ have an industrial or commercial establishment in a contracting party, or
✓ must be in one of the 124 countries covered by the Madrid system’s 108 members.
Any person can register their trademarks by filing the application through the Madrid system regardless of their business size. 80% of the applicants of the Madrid system are small IP rights holders with only one or two registered marks.
Under the Madrid Protocol, an applicant can obtain an international registration while there is a pending trademark application. Thus, a trademark owner can apply for an international registration and simultaneously file an application in a Contracting Party’s jurisdiction.
The main advantage of the Madrid system is the multi-jurisdictional protection that is obtained upon approval. The language of the application forms is English, French or Spanish. In addition, the trademark protection can be extended insofar as new countries become signatories to the Madrid Protocol.
It is recommended that applicants first consider their marketing strategy. If they intend to use their trademark in more than four countries, filing an application through the Madrid system would be more convenient and cheaper. However, if the trademark is meant for less than four countries, it might be better to file a separate registration in each country through an agent with the help of a trademark lawyer.
As the Madrid and national filing systems are available under certain conditions, businesses establishing themselves in Thailand should be aware of the first-to-file rule for trademark registration and should also be clear on their marketing plan in order to anticipate their needs for multi-jurisdictional registration.