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Madrid filings v direct applications: The route to go?

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Kritsana Mingtongkhum and Shantanu Ajit Tambe of Satyapon & Partners discuss the pros and cons of filing new trademark applications in Thailand via Madrid compared to direct filings

Thailand acceded to the Madrid Protocol and officially became a signatory in November 2017. Since then, international filings designating Thailand have steadily increased, so much so that as of August 20 2021, a total of 32,546 applications filed in Thailand have been through the Madrid route.

As per the latest figures retrieved from the Thai Trademark Office, the number of applications filed in Thailand using Madrid Protocol has led to a surge in the total number of applications filed in combination with the applications filed directly at the Trademark Office.

As Thailand gears up to celebrate its fourth anniversary of joining the Madrid system this year, it is easy to see that rights owners have in general greatly benefitted from it so far. It is not difficult to guess why Madrid Protocol has been such a success.

The centralised Madrid system offers a one-stop solution to the rights owners to manage their entire trademark portfolio, obvious advantages in terms of reduced filing costs for the applicants who wish to designate multiple jurisdictions by filing a single international application through their country of origin and in general is more convenient.

However, while acknowledging the plethora of benefits Madrid system has bestowed on the trademark owners, when considering the Thai trademark regime and examination practice which is prone to change without notice and heavily dependent on individual examiner’s discretion, it is imperative to examine if using Madrid route is indeed the most viable option to obtain protection in Thailand, filing cost advantages aside.

Weighing the pros and cons of choosing the international route while designating Thailand will give the trademark applicants much needed clarity on the best way to proceed in the future, so that their rights in the trademark for the goods and services are secured and can be enforced in a dispute without complications.

Is filing an international application designating Thailand the most viable option?

In order to examine the international applications forwarded to the Thai Trademark Office through WIPO, the Department of Intellectual Property (DIP) has established a Madrid Application Receiving Office within the Trademark Office.

The examiners, who earlier had the experience of only examining direct applications filed by the local agents, have now been tasked with examining the international applications as per the usual procedures under Thai trademark law. The increase in Madrid filings on yearly basis has unfortunately not been matched with the increase in number of examiners appointed to examine the applications thoroughly.

Thailand is obliged to grant protection or issue a refusal rejecting the application to WIPO within 18 months, thus in many cases the applicants have to wait for 16–18 months to receive a notification of refusal from the Trademark Office.

The Trademark Office examines the registrability of the trademarks as well as acceptability of the specification of goods and services based on local practices, which provide that each item of a good or service must be clearly separated and the items must not be vague or broad. As result, in our experience, a majority of the international applications filed face at least one provisional refusal on grounds of amendment of the specification.

Under the present examination practice on specification related refusals, if a provisional refusal is issued for only some of the items and the applicant does not file a response within 90 days from the date of issuance of the refusal, the application will not proceed further with the non-objected items automatically.

Instead, the registrar will issue a ‘confirmation of total provisional refusal’ giving the applicant a second opportunity to amend the objected items. There is no prescribed time period for issuing the ‘confirmation of total provisional refusal’, making the prosecution considerably slower.

If, after receiving the ‘confirmation of total provisional refusal’ the applicant does not file a response within 90 days from the date of such receipt, the confirmation of total provisional refusal’ shall be final, and the application will be deemed abandoned by the applicant. Thus, upon receiving the ‘confirmation of total provisional refusal’, the applicant must appoint a local representative to respond to the notification.

Since the translations of the specifications are often prepared without any expert guidance, the trademark applicants have no way of knowing or checking the correctness of the specification recorded in the Thai language. Legally speaking, it is not possible to amend the specifications of goods and services due to incorrect translation from English to Thai language after the mark is registered. A mistranslation of any item may adversely affect the registrant’s rights in the event of a trademark dispute or infringement, because the scope of rights in a registered trademark pursuant to Section 44 of the Trademark Act are extended only to the goods or services exactly as listed under the registration in the Thai language. Therefore, it becomes imperative that the registrant is aware what exactly the trademark is registered for without any ambiguity.

Lastly, for a multi-class application, there is no provision to split or divide multi-class application in case of refusal or opposition. If there is an office action or opposition for one or more classes, the entire application will be delayed. If the applicant wants the remaining classes to proceed first, the problematic class(es) must be withdrawn.

 

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Do direct national filings offer a better alternative?

Applications filed directly at the Thai Trademark Office through the local agents receive their first office actions usually within 10–12 months from the filing date, considerably faster than the time period of receiving provisional refusal for Madrid applications.

Applicants opting for direct filings also have the advantage of relying on the local agents for the continuous monitoring and expedition of their applications, which is not available for Madrid applications, as in the latter, the applicants must wait until a provisional refusal is issued and usually have no way to request acceleration of examination of the application.

The DIP has made remarkable improvements in the trademark examination practice recently, introducing several policies to expedite the registration process of new trademark applications. The most prominent one is the fast-track system, aimed to reduce the examination time period for new applications. In order to avail fast-track system, the trademark applicants must comply with the following conditions:

  • There are less than 10 items of goods or services under the application;

  • The description of goods or services is in accordance with the Thai classification practice; and

  • There is no amendment application for change of proprietor details such as name or address change, assignment or inheritance, or application based on acquired distinctiveness at the time of filing the application.

If the trademark applicants comply with these requirements, new applications directly filed at the Thai Trademark Office are expected to mature to registration in around 10–14 months from the filing date, significantly faster than the current time period for Madrid applications. The first examination report under the fast-track system is issued within six months from the filing date, as opposed to the 18-month period for international applications filed via the Madrid system.

Directly filed applications through local agents also have the significant advantage of a pre-filing review of the designated specification to ensure it complies with the latest classification practice. Expert guidance on accurate description of goods or services in the native language before the application is filed provides the applicant vital information about the scope of their rights and the opportunity to make changes in the description to cover their goods or services of interest in the best possible way before the application is actually filed, which can possibly end up in saving costs during the prosecution stage. Post-registration, a clear description of goods also helps in enforcement of rights in the event of a dispute or infringement.

In conclusion, while the Madrid filings and direct applications both offer their own distinct advantages, when selecting Thailand as the designated jurisdiction to obtain trademark protection, it is critical that the applicants be aware of the benefits of choosing either option, and the risks associated thereto. Doing so will help the applicants efficiently plan their brand protection strategy in the best possible manner.

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Kritsana Mingtongkhum

Partner

Satyapon & Partners

T: +66 02 254 8858

E: satyapon@satyapon.com

Kritsana Mingtongkhum is a partner at Satyapon & Partners and heads the trademark and litigation departments, overseeing enormous volumes of trademark prosecution, enforcement and litigation matters.

Kritsana’s reputation in the IP industry has been growing exponentially; he was recently elected by his peers to a second term on the ASEAN IPA Thailand Committee, and now elected to serve on the APAA committees as a member of the APAA Trademark committee.

After many years of volunteer service to the Intellectual Property Association of Thailand (IPAT), Kritsana has now been appointed General Secretary of the organisation.

 

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Shantanu Ajit Tambe

Senior associate

Satyapon & Partners

T: +66 02 254 8858

E: satyapon@satyapon.com

Shantanu Ajit Tambe is a senior associate at Satyapon & Partners.

Shantanu has more than six years of experience in advising clients on brand creation and protection strategies, managing brand portfolios, IP acquisitions and IP licensing. He mainly oversees the firm’s outgoing trademark and copyright prosecution, litigation and enforcement matters abroad including in India, China and ASEAN region.

An integral part of the firm’s business development group, Shantanu has a broad, hands-on-knowledge of various IP issues, with particular expertise in trademark, copyright and domain names and frequently liaises with international clients on these matters.

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