You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

August 5, 2016

Thailand Prepares for the Madrid Protocol

Subscribe to Updates
Bangkok Post, Corporate Counsellor Column

As part of the ASEAN Economic Community’s Harmonization Plan, ASEAN member states collectively agreed to accede to the Protocol on the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), an existing system for the registration of trademarks.

The Madrid Protocol is administered by the World Intellectual Property Organization (WIPO). It provides a cost-effective and efficient means for trademark owners to obtain protection for their marks in multiple countries through filing one application, called an “international application,” at a single trademark office, in one language, and with one set of fees.

The Madrid Protocol eliminates the high filing costs normally associated with filing separate national applications in each jurisdiction in which protection is sought. Renewals and recordals of changes of the proprietor’s name or address can all be done centrally at WIPO.

Thailand’s Trademark Act was recently amended to allow the country to accede to the Madrid Protocol, and the amended Act entered into force on July 28, 2016. The Department of Intellectual Property (DIP) is in the process of drafting Ministerial Regulations that will allow Thailand to become a member of the Madrid Protocol, and it is preparing a new team of Trademark Registrars who will be responsible for taking charge of filing international applications at WIPO and examining international registrations from WIPO that designate Thailand.

According to the Madrid Protocol and WIPO, an international application will proceed through the following three main stages.

Stage 1: Application through the Office of Origin or DIP

For a Thai applicant, a pending Thai trademark application or registration is a prerequisite for filing an international application under the Madrid Protocol. After the international application based on the Thai application/registration is submitted, the DIP certifies the information in the international application, such as the mark, goods or services, and so on. The DIP then forwards the application to WIPO.

The applicant may extend their protection by requesting to designate jurisdictions that are part of the Madrid Protocol in the international application or subsequently after receiving the international registration.

Stage 2: Formal Examination by WIPO

WIPO conducts a formal examination to check whether the application complies with the requirements of the Madrid Protocol. If there are any irregularities, the applicant will be notified. The irregularities need to be remedied within three months; otherwise, the application will be treated as abandoned, the application process will end, and the trademark will not be registered. In this situation, the filing fees will not be refunded.

If everything is in order, the application is recorded in the International Register, and it is published in the WIPO Gazette of International Marks. WIPO will then send the applicant a certificate of international registration and notify the other trademark offices in the jurisdictions where the applicant has chosen to extend the protection of the mark. This does not mean the trademark has been registered in the designated jurisdictions. Each respective trademark office determines whether the mark can be registered in its country, usually through substantive examination of the application and publication to allow third parties to oppose the application.

Stage 3: Substantive Examination by the Trademark Offices of Designated Jurisdictions

The application passes through substantive examination at the trademark offices of the jurisdictions that the applicant designated, in the same way as an application filed directly in each country. Refusal of the application, together with a statement of all grounds, must be notified to WIPO within a certain time limit—12 or 18 months, depending on the jurisdiction.

If there are any procedures after the refusal, such as a response to an opposition, an appeal, or a hearing, they will be handled between trademark offices and the applicant directly. WIPO will not get involved in these procedures. On the other hand, theoretically, if the application is accepted, a statement that protection of the mark has been granted will be sent to WIPO, which will later be published in the Gazette. The international registration is valid for a period of ten years, with the possibility of renewal.

However, if the international registration is based on a Thai application that has not been granted registration, or if it is based on a Thai registration that is cancelled in the first five years after registration, the rights granted under the international registration will be extinguished—a process called a “central attack.” If this occurs, the international registration will be cancelled. It is possible to transform an international registration into national applications in each designated country, but these transformations may face reexamination by each designated jurisdiction’s trademark office.

There are other hurdles in using this system as well. For example, the Madrid Protocol does not allow applicants to reclassify goods or services in a designated country once the application is accepted by WIPO. In some countries, such as the United States and the Philippines, the applicant would need to file a Declaration of Use and Evidence of Use within a certain period of time—otherwise the registration would be invalid, which is different from Thai practice.

As there are a number of challenges in using this system, before filing an application through the Madrid Protocol, trademark owners should consult an intellectual property lawyer to review the applications and conduct any precautionary measures to fully utilize the system. Thai IP lawyers who have experience filing trademark applications in foreign countries understand the nuances of filing applications in designated foreign countries. Consulting an experienced IP lawyer will help identify any potential risks in filing a Madrid Protocol application and avoid unnecessary expenses.

Despite its challenges, the Madrid Protocol is a good alternative trademark system for businesses of all sizes to protect their trademarks in foreign markets through a centralized, cost-effective means. It also promotes foreign investment, as it gives businesses confidence that their valuable trademarks will be protected. This will, in turn, enhance competitiveness in ASEAN and international markets.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

September 14, 2026
Myanmar’s first-to-file trademark registration regime under the Trademark Law 2019—which became fully operational in April 2023—provides mark owners with enhanced legal protection compared with the country’s former system. Correspondingly, the current system imposes more rigorous statutory requirements for obtaining, maintaining, and enforcing rights in marks. In this first-to-file trademark registration system, however, evidence of use remains particularly significant, as it may establish acquired distinctiveness, support a claim that a mark is well-known, and strengthen the owner’s position in both registration and enforcement proceedings. Accordingly, it can be said that this framework is underpinned by three key concepts: distinctiveness, well-known status, and, importantly, use of the trademark. Trademark Distinctiveness Under the Trademark Law, signs that lack distinctiveness are generally ineligible for mark protection. These signs include generic terms, basic shapes, unstylized single letters or numerals, and signs that merely describe the kind, quality, quantity, intended purpose, value, geographical origin, production time, or other characteristics of the relevant goods or services. However, a mark that would otherwise be refused on distinctiveness or descriptiveness grounds may be registrable if it has acquired distinctiveness through its use prior to the filing date. To show this, the applicant must demonstrate that the mark became distinctive to relevant consumers through continuous, exclusive, and good-faith use in trade within Myanmar. The burden of proving acquired distinctiveness rests with the mark owner. Accordingly, sufficient evidence demonstrating both use of the mark and the level of consumer recognition attained should be prepared in advance. Well-Known Mark Criteria Myanmar’s Trademark Rules, which govern the substantive examination of mark registration applications, establish criteria for determining well-known marks, aligned with international standards. Where an applicant claims well-known status—whether to overcome a refusal on relative grounds or to oppose a third party’s registration—the registrar will assess the claim based on the following
Read More
September 14, 2026
On August 23, 2026, Vietnam’s National Assembly passed Law No. 11/2026/QH16, amending the country’s Customs Law with effect from March 1, 2027. The amendments represent a substantial reform of Vietnam’s customs-based intellectual property enforcement regime. The reforms come amid considerable external pressure. In its 2026 Special 301 review, the US Trade Representative (USTR) designated Vietnam a “priority foreign country,” citing widespread counterfeiting, weak border enforcement, limited ex officio customs powers, and the absence of controls over goods in transit. Vietnam’s legislative response signals a commitment to bringing its border enforcement practices into line with international expectations. For IP rights holders operating in or through Vietnam, the amended law introduces several tools that substantially strengthen enforcement options at the border. Closing the Transit Gap One of the most consequential amendments is the extension of IP-related customs enforcement to goods in transit. Previously, Vietnam’s customs regime applied IP controls only to goods being imported or exported, a gap the USTR had specifically identified as enabling infringing goods to pass through Vietnamese ports with impunity. Vietnam’s geographic position as a logistics hub for Southeast Asia means that substantial volumes of goods transit its ports and free-trade zones. Extending enforcement to cover these shipments brings Vietnam closer to the standard set by the EU’s customs enforcement regulation and addresses a longstanding concern of multinational brand owners whose goods are frequently counterfeited in the region. Strengthened Suspension and Ex Officio Powers The amended law introduces a dual-track suspension mechanism (Article 73(2)). Customs authorities will suspend clearance upon request by an IP rights holder (or authorized representative) who provides evidence of IP ownership, evidence of infringement, and a financial guarantee. Customs can now proactively suspend clearance on an ex officio basis if, during inspection and monitoring, they discover “clear grounds” to suspect that imported, exported,
Read More
September 7, 2026
Indonesia’s Constitutional Court (Mahkamah Konstitusi) has reinstated a key provision limiting pharmaceutical patent protection, signaling a renewed commitment to balancing patent rights with public access to medicines. In its ruling to Case No. 255/PUU-XXIII/2025, the court partially granted a petition for judicial review of Law No. 65 of 2024, which had amended the country’s Patent Law, and ordered the restoration of a provision that had excluded certain pharmaceutical inventions from patentability. The decision took effect immediately upon its pronouncement at the court’s plenary session on August 28, 2026. Background The petition challenged the removal of article 4(f) from Law No. 13 of 2016 concerning Patents (Patent Law), as amended by Law No. 65 of 2024. Article 4(f) had excluded from patentability certain inventions relating to new uses of known substances. The petitioners argued that removing this provision would open the door to patent protection for second medical use inventions and facilitate patent evergreening—practices that can extend exclusivity periods, delay generic market entry, and reduce public access to affordable medicines. The petitioners included several patient advocacy and public-interest organizations: the Indonesian Dialysis Patients Community Association, the Indonesian Association of Drug Abuse Victims (PKNI), the Indonesian Pulmonary Hypertension Foundation (YHPI), the Rekat Peduli Indonesia Foundation, and the Indonesian Positive Women’s Association (IPPI), along with the Indonesia for Global Justice Association and four individual petitioners. The petitioners also challenged the constitutionality of the phrase “interested party” in article 70(1) of the Patent Law, arguing that it should be construed expressly to clarify who has standing to appeal a decision to grant a patent before the Board of Patent Appeal, and to allow a broader range of parties—such as patent holders, licensees, consumer organizations, prosecutors, aggrieved third parties, and others who may suffer direct or indirect harm from the grant of a patent—to
Read More
September 2, 2026
Thailand and China have a longstanding and significant trade relationship, which increasingly extends to e-commerce and digitally enabled supply chains. While these channels create new opportunities for businesses to reach consumers across borders, their growth also brings greater exposure to intellectual property (IP) infringement across jurisdictions and online platforms. Effective cooperation between the two countries’ enforcement authorities has therefore become increasingly important. To strengthen cooperation in this area, Thailand and China signed a memorandum of understanding (MOU) on IP enforcement in Beijing on July 20, 2026, during the Thai prime minister’s official visit to China. Officially titled “Memorandum of Understanding Between the State Administration for Market Regulation of the People’s Republic of China and the Ministry of Commerce of the Kingdom of Thailand on Cooperation in the Field of Intellectual Property Enforcement,” the MOU forms part of a broader bilateral agenda covering industrial and supply chains, participation by micro, small, and medium-sized enterprises (MSMEs), cooperation associated with the ASEAN–China Free Trade Area 3.0, and progress on the registration of Thai geographical indications in China. The MOU establishes a bilateral framework for cooperation and coordination in five broad areas: Strengthening dialogue in IP enforcement; Enhancing information sharing; Facilitating the enforcement of IP rights in cases arising in the parties’ domestic markets and on online platforms, in accordance with their respective domestic laws; Promoting cooperation in IP enforcement training and human resource development; and Undertaking other cooperation activities agreed upon by both sides. The Department of Intellectual Property (DIP) will serve as the principal coordinating agency for Thailand, while the Bureau of Law Enforcement and Inspection in China’s State Administration for Market Regulation (SAMR) will serve in that role for China. The framework is particularly relevant to the growth of e-commerce, as it covers infringement in the domestic markets and on
Read More