Things to Consider before Filing a Trademark Application under the Madrid Protocol in Thailand

FotorCreated222Following an exciting webinar on the Madrid International Trade Mark System last week, our IPR SME Helpdesk  Expert Mr. Franck  Fougere  from Ananda  Intellectual Property has kindly drafted for us a blog post on the pros and cons of filing a trade mark application under the Madrid Protocol in Thailand.

The Madrid Protocol is a system that facilitates trademark applications in multiple countries. Thailand is expected to join the Madrid Protocol before the end of 2016. There are, however, issues that the prudent business owner should consider before filing a trademark application via the Madrid Protocol. These issues are of particular importance  for Thai businesses that plan to file applications in Thailand.

BENEFITS

  • Covers Multiple Countries. The Madrid Protocol currently has 97 member states.
  • Cost Savings: Initial and Ongoing.

The Madrid Protocol may substantially reduce the upfront cost of filing trademark applications in several countries that are members to the Protocol, because it negates the need for local counsel in each country during the initial phase (local counsel may be required at later phases if there are issues with the application). Using the Madrid Protocol system can also result in future savings, over the course of the trademark’s lifetime, in the form of fees associated with the maintenance and modification of the registration.  For example, any change of name or address can be made with a single document and a single fee filed at the [agency’s name]’s International Bureau.

  • Centralization: Simplified and Standardized Procedure
    1. One application
    2. In one place — Administrative tasks can be completed through WIPO, rather than through the Trademark Office of each relevant country.
    3. Fewer copies – submission of only one set of documents
    4. In one language — An application can be made in English.  No translation into Thai will be required.  This simplification stands to reduce potential problems that may arise due to problematic translations of unique terms.
    5. One fee
    6. One registration
    7. One number
    8. One renewal date
  • Time Savings: 

In certain countries, filing a national trademark application through the national trademark office may take six years or more.  Comparatively, filing a trademark application through the International Applications can shorten the timeframe substantially. The Protocol requires that member states submit their decisions regarding applications for registration within 18 months.

  • Ability to Add Countries After Filing an International Application:

Once the International Application is filed, applicants may add additional countries to the application, thereby expanding the geographical jurisdiction for trademark protection.

  • Trademark infringers can be identified and prosecuted more readily due to the centralized database.

As the Madrid Protocol establishes the central database of trademarks, it might be easier to identify and prosecute the infringers.

  • Ability to claim priority date under the Paris Convention.

The applicant may enjoy the priority claim for the International Application within 6 months after the basis application is filed in the country of origin.

  • Does not affect your current trademark registrations.

The registered trademarks remain protected as the International Registration is co-exist along with national registrations.

DRAWBACKS

  • Central Attack:  

 However, owners of registered trademarks do have the opportunity to transform an International Application into a national application, in of the each countries applied for, within 3 months following the lapse of the base national application.  Such conversions do entail considerable additional expenses, and are best avoided by ensuring that the base national mark is well prepared and as likely to succeed as possible. If the national, base application for a trademark registration is rejected or cancelled, the International Registration application is automatically cancelled.  It may be placed in jeopardy if a third party attacks the base application or registration through opposition or cancellation proceedings within the first five years from the date of international registration.

  • Requirement of highly description of goods/services: 

Thailand requires narrower and more specific descriptions for classes of goods/services than other countries.  This narrower class restriction could have adverse effects in foreign trademark litigation matters when a competing trademark is based on a broader scope of registration.  As such, it is sometimes more advantageous for the base, national registration of a trademark to be secured in a country with less stringent requirements.  To illustrate, describing a product as “clothing” may be acceptable in one jurisdiction, whereas in Thailand, an applicant would need to designate it as a “skirt”, “hat”, and “scarf” etc.

  • Restriction of transferability:  

Registration under the Madrid Protocol restricts assignment of registered trademarks to within member states. As a result, the Madrid Protocol cannot add additional value for registrations that trademark owners hope to transfer or assign to non-member countries. Although usually of regional interest for Thailand-based businesses, the jurisdictions of Malaysia, Hong Kong, and Indonesia are not members to the Madrid Protocol. As such, assignment and transfer of trademarks to the aforementioned countries is not aided with the use of the Madrid Protocol

  • Amendment of International application
  1. Class numbers cannot be changed
  2. Goods/services cannot be moved between classes
  3. Classes cannot be added

International registrations may not be amended after registration, so applicants need to be aware that should they later wish to make minor changes to their registration it would be preferable to file individual national registration in countries allowing post-registration amendments.

SUMMARY

The Madrid Protocol may be a good system to obtain trademark protections in multiple countries due to its centralization and cost effectiveness. It is, however, not for everyone — especially, if you desire to file a basic application in Thailand, where high descriptions of goods/services are required. Thai applicants will usually secure an International Registration with a narrower description of goods/service than could be obtained through national filings in contracting countries to the Protocol. Furthermore, it is important to consider what filing strategy delivers the best result by examining the nature of the trademark concerned. In the event that a “strong” trademark will be used in a large number of countries on the same goods/services, the Madrid Protocol may be the best and most cost-effective system to use. On the other hand, a trademark that will be used in certain countries on slightly different goods/services in each country, it may be better to file on an individual national basis, or a as a CTM where use in one country is sufficient for all member states. In a nutshell, each International Application is reviewed by the local trademark office for eligibility and potential conflicts. Because Thailand has stricter trademark applications requirements than other countries, foreign applicants will often need to hire Thai counsel to fix errors in Madrid Protocol trademark applications. It is very much worthwhile to take the time to consider the risks and advantages when deciding whether to use multiple national systems or the Madrid Protocol system for filing trademarks of international businesses.

Bio of IPR Expert Franck Fougere  Franck Fougere

Name: Mr. Franck Fougere
Firm:  Ananda Intellectual Property

Websitewww.ananda-ip.com

Location: Bangkok, Thailand
Email: fougere@ananda-ip.com

Franck is Managing Partner and Founder of Ananda Intellectual Property, one of Thailand’s leading IP law firms, and of Orbis Limited, a Business Advisory consultancy based in Hong-Kong, China, Thailand and the Philippines. His practice includes patent and trade mark prosecution, anti-counterfeiting and IP litigation (notably trademark and copyright infringement) in Thailand and throughout Asia.

Franck is recognized as one of Thailand’s leading IP professional and won in 2013 the ILO client choice award for best patent practitioner. He has authored numerous articles, expert studies and guides such as the European-Asean Business Centre (EABC) Guidebook on Intellectual Property in 2013.

 

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