Thailand has enacted the Ministerial Regulation Implementing the International Trademark Registration under the Madrid Protocol (the “Regulation”). It was published in the Royal Gazette on 18th December 2017 and became effective retroactively on 7th November 2017, which is the effective date for enforcing the Madrid Protocol System in Thailand.
According to the Regulation, an international trademark application under the Madrid Protocol filed with the Trademark Office in Thailand (the “Trademark Office”) must be based on either a trademark registration (the “Basic Registration”) in Thailand or a pending trademark application filed with the Trademark Office (the “Basic Application”) in which such Basic Registration or Basic Application will be used as a base for the international trademark application under the Madrid Protocol.
For a period of 5 years from the date of its registration, an international application remains dependent on such Basic Registration. If the Basic Registration ceases to have an effect, whether through cancellation following the Trademark Office’s decision, voluntary cancellation, or non-renewal, within this 5-year period, the international application will no longer be registrable. Similarly, if the Basic Application is refused or withdrawn within such 5-year period, the international application will also be refused for registration resulting from the Basic Application ceases to have an effect within such period. After the expiry of the abovementioned period of 5 years, the international application will become independent from the Basic Registration or the Basic Application.
More importantly, in regard to the list of goods and/or services, although, WIPO has designated that the list of goods and/or services must be classified and specified according to the Nice Classification and Thailand has already adopted the same, the Trademark Office has not strictly followed the Nice Classification as they have their own practice and guideline for classifications and specifications of goods and/or services.
If the international application designated Thailand filed with a trademark office of any member state does not indicate the goods and/or services following such practice and guideline, it is possible that the international application will be refused for registration by the Trademark Office in which a provisional refusal will be issued ordering the applicant to comply with the same within a specified period of time.
Besides, the list of goods and/or services must be translated into Thai once it has entered into the local examination procedures. If such list of goods and/or services is unable to be translated and/or matched to the Thai words as a matter of differentiation of languages, such items of goods and/or services may also be ordered for amendment.
In order to solve this issue, the Trademark Office is now preparing for a guideline regarding the list of goods and/or services to facilitate the applicant for preparing its international application designed Thailand as one of the countries in obtaining protection of its trademark. For the said guideline, the Trademark Office will translate the list of goods and/or services in Thai used to be allowed for registration into English so that it will be easier for the applicant to consider and choose the terms of goods and/or services and designed the same in its international application.
Author: Panisa Suwanmatajarn and Jinnaphat Srithepthamrong