International trademark filing through the Madrid Protocol

The Madrid Protocol entered into force for Thailand on 7 August 2017. An applicant who is a Thai national, is domiciled in Thailand or has a real and effective industrial or commercial establishment here may use the Department of Intellectual Property as office of origin to file a single international application with the World Intellectual Property Organization. The current list of members should be checked on the WIPO website.

A Madrid filing uses one application, one language and one fee package covering several designated member countries, and renewals or changes are managed through a single international register. Direct national filing is necessary where the target country is not a member, or where strategy favours avoiding the dependency on the basic mark. In both routes the designated office still examines the mark under its own law.

For five years from the date of the international registration, that registration remains tied to the basic application or registration at the office of origin. If the basic mark is refused, withdrawn or cancelled during that period, the international registration falls with it, a situation known as central attack. Where this happens the holder may transform the registration into national applications in each designated country within the prescribed time limit.

Under the Madrid Protocol a designated office must notify a provisional refusal within twelve months, or eighteen months for countries that have declared the extended period, counted from the notification of designation. If no refusal is notified in time the mark is treated as protected in that country. A provisional refusal must be answered under the local law of that country and normally requires appointing a local representative.

Thailand has been bound by the Patent Cooperation Treaty since 24 December 2009. An applicant with an international application may enter the Thai national phase within thirty months of the priority date by filing a Thai translation of the description and claims, together with the power of attorney and supporting papers, at the Department of Intellectual Property.

Thailand is a Madrid member. You need a Thai basic application or registration, then file the international application through the DIP to WIPO, designating target countries in a single filing. Fees depend on the number of countries and classes. Note the five-year central attack rule: if the Thai basic mark falls, the international registration is affected.

The Patent Cooperation Treaty lets a single international application preserve your filing date in more than 150 countries and defers the national phase decision up to thirty months from the earliest priority date. It suits applicants uncertain about target markets or awaiting funding. It is not a world patent — grant remains with each national office.

The international application must mirror a Thai basic application or registration in owner, mark and goods. For the first five years it remains dependent on that basic mark: if the basic filing is refused or cancelled, the international registration is affected and must be transformed into national applications within the deadline. Each designated country also examines under its own law and may issue a provisional refusal that has to be answered through a local agent.

National-phase entry must be made within thirty months of the earliest filing or priority date, by filing with the Department of Intellectual Property together with a Thai translation of the description and claims, the international application number, and the appointment of a Thai agent if the applicant is abroad. A request for substantive examination must then be filed within the prescribed period, otherwise the application is treated as abandoned.

Search the Department of Intellectual Property database and WIPO's Global Brand Database for identical words, phonetic equivalents and similar device marks in the same and neighbouring Nice classes. Search results are only an indication, because the registrar also assesses similarity through the eyes of ordinary consumers. Prepare a fallback, such as a modified logotype or an added distinctive element, before filing.

Madrid is efficient when several countries are needed at once, because one application and one renewal cycle cover them all. It stays dependent on the home registration for five years, so a successful central attack affects every designation. Direct filings suit a handful of core markets, cases needing locally tailored goods descriptions, or countries with a high office-action rate.

Madrid suits multi-country filings when you already hold a Thai basic application or registration, because renewals and recordals are managed centrally. Watch the five-year dependency rule: cancellation of the basic mark affects every designated country. Direct filing suits jurisdictions with strict examination or specific requirements on goods descriptions.

The Paris Convention allows a priority claim within 12 months for inventions and 6 months for industrial designs. Under the PCT you file the international application within 12 months and generally have 30 or 31 months from the priority date to enter national phase. Budget and translations should be planned early, as national phase is the costliest stage.

Our advisers have handled cross-border filings and documentation for over 15 years. We cover clearance searches, class drafting, filing and office-action responses, Madrid or PCT expansion strategy, translations and legalisation, plus online infringement monitoring and coordination with Thai Customs. Contact us by phone or LINE for a portfolio review before any work begins.