After a very long wait, on 7 November 2017, Thailand finally effectively acceded to the
Madrid Protocol (MP). The Trademark Act, B.E. 2534 (1991), as amended by the Trademark Act (No.2) B.E. 2543 (2000) and the Trademark Act (No. 3) B.E. 2559 (2016), was amended in 2016 to include the much anticipated acceding to the MP. The concept of the filing and registration through MP is pretty much the same as any other MP member countries.

On a practical stand point, Thailand has been selected by other MP member country as a
country in which a particular trademark is to be protected, but on reverse side, Thailand itself has not submitted many applications under MP. The Department of Intellectual Property of Thailand (“DIP”) is indeed doing a lot to bring awareness of the MP to the Thai general public through seminars and public awareness programs. It is anticipated that the number of MP filings will increase over the course of this year.

In the ASEAN context, since Thailand is now a member of the MP, a Thai applicant can seek protection for their trademark in all ASEAN countries, except Malaysia and Myanmar, who have yet to become MP members. Protection can be extended to these two countries once MP is effective in said countries. Based on researches in countries that already have the MP, taking the MP route is a popular choice as applications must be examined and acted (granted/rejected) upon by the trademark offices in the member countries within 18 months of the filing of the international application. This is particularly effective in jurisdictions where national applications take a longer time before registration.

With the ASEAN economy growing rapidly, having an effective trademark registration
system via the MP would encourage the growth of brand developments and further encourage the growth of the economy in this region. The success of the growth of businesses in ASEAN can often be a bench mark of the further expansion of business beyond ASEAN countries.

The MP route is also one that may potentially benefit small or medium size companies, who have restrictions on their budgets but have aggressive marketing strategies, as registration of trademark in multiple jurisdictions may not be a cost effective affair. Therefore, filing one single application, to cover multiple jurisdictions maybe potentially work in their favour. This may also be a cost effective strategy.

Although the use of the MP is in the early stages in Thailand, the hope is that the MP will
encourage the development of small and medium size businesses in Thailand, and enhance the growth of their trademark protection within the ASEAN region. Similarly, other ASEAN countries could potentially get additional protection in Thailand now, under the MP.

Eventually, it is hoped that Malaysia and Myanmar will also become members of MP, and, with this, a MP application may potentially cover the whole of ASEAN countries. This would be a great benefit for an applicant. The success of this remains to be seen but on an optimistic note, it is hoped that the MP will be a way in moving forward with trademark registrations in ASEAN.

As a whole, the MP would be a good registration mechanism that would benefit the ASEAN region but how effective the MP system is for this region remains to be seen

Posted by Rajen Ramiah

With more than 12 years of experience in the IP field, Rajen Ramiah joined SCL Law Group in June 2015 as a Business Development Consultant. To kick-start in his new role, Rajen led efforts in rebranding the Group. With the Group recently celebrating its 10-year anniversary, Rajen was instrumental in the rebranding process, which involved creating a clear and impactful corporate identity for the Group and revamping the website content and design. The rebranding effort was a massive success. Prior to joining SCL Law Group, Rajen worked in the Middle East for Emirates Airlines and, prior to that, with several high-profile law firms in both Malaysia and Singapore, in the capacity of a Trademarks/IP Associate. He also worked for an IT company based in Memphis, Tennessee managing their international IP portfolio. Rajen holds a Management & HR Certificate, Emirates Aviation College, Dubai, UAE (2010) and an LLB, University of London, England, UK (1998). He can be reached on email: rajen@sclinter.com and telephone +66 (0) 2 6766667-8

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