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 filing and registration through MP is pretty much the same as any other MP member country.
From a practical standpoint, Thailand has been selected by other MP member countries as a
country in which a particular trademark is to be protected, but on the 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, which have yet to become MP members.
Protection can be extended to these two countries once MP is effective in said countries. Based on research 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 long 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 benchmark for 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 trademarks in multiple jurisdictions may not be a cost effective affair. Therefore, filing one single application, to cover multiple jurisdictions may be 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-sized 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
