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Trademark Registration under the Madrid Protocol

Juni 2, 2021

Trademarks are used to identify and protect a particular product or service. Companies often invest a significant amount of money in introducing and establishing a trademark. To protect this investment, it is essential to grant exclusive use to the investor.

In general, there are two different ways to protect a trademark in Thailand:

Local trademark rights

The local trademark registration follows the international standardized classification of the Nice System. Local trademark protection is ensured by the Trademark Act (No.3) B.E. 2559 (2016), where a trademark can be registered at the Department of Intellectual Property (DIP). The registration fee is 1,000 THB for between one to five items and 9,000 THB for more than five items. The registration is valid for ten years and extendable for ten further years by paying a fee to the DIP. Trademarks that have been previously registered can be easily extended. The owner of the trademark must be a natural or juristic person located in Thailand, and a natural person is required to be a Thai citizen. For juristic persons, it is possible to register a trademark through a Thai affiliated company. Trademark protection under the Trademark Act only grants protection in Thailand; other ASEAN-Countries are not included.

Madrid Protocol

Since the Kingdom of Thailand joined the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) on August 7th, 2017, which came into effect on November 7th, 2017, it is now possible to protect a trademark internationally. This protection is guaranteed in all ASEAN countries, except Malaysia and Myanmar.

The Madrid Protocol provides a system that allows a trademark owner with an existing trademark registration – the so-called basic registration – in a member-state of the Madrid system to extend their trademark to other member states by applying for a so-called international registration.

This centrally administered system allows its members to obtain multiple trademark registrations in separate jurisdictions. This certification under the Madrid Protocol creates a bundle of international protection rights that can be managed easily. The protection period under the Madrid Protocol is also ten years and can be extended by a further ten years.

The applicant should be aware that a refusal, withdrawal, or cancellation of the basic registration within five years after its registration will have the same consequence on the international registration under the Madrid Protocol.

Conclusion

In conclusion, the registration of a trademark in Thailand (local registration) provides trademark protection; exclusively within Thailand. However, if one wishes for their trademark to be protected internationally, international registration of their trademark under the Madrid Protocol provides such protection. The registration is valid for ten years and could be extended for a further ten years for local and international registration. If the local registration is refused, withdrawn, or cancelled, within five years of the registration, the international registration will have the same consequence as the local registration.

Feel free to contact me if you have any questions at [email protected]  

Rangsarit Suwanarat is partner at FRANK Legal & Tax. He focuses his practice on corporate/commercial law and intellectual property matters.


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