It is now official, from November 7, 2017 applicants will have the choice when filing a mark in Thailand to either file it via the Madrid System or through filing a national application directly with the Department of Intellectual Property (DIP). The Thai trademark system can be complicated, regimented, and sometimes capricious due to over imaginative examiners. Can the one-size-fits-all Madrid System elide all of this and make registering a trademark in Thailand easy? it is too early to tell; however the following features should be considered:
- International applications designating Thailand will be examined by a dedicated group of examiners different from those examining national applications. It remains to be seen if that group of examiners will be more liberal than those in charge of domestic filings.
- Goods and services in international applications designating Thailand will be translated into Thai by the DIP itself. Even if the application goes smoothly the accuracy of the translated goods/services in Thai is likely to be a concern. Checking translated goods/services prior to the grant of applications may become part of the filing strategy.
- It is still essential to conduct a pre-application trademark clearance search to assess the trademark’s registrability. Is the mark inherently distinctive? Does it run afoul of Thailand statutory prohibitions on trademarks? Does it conflict with any preexisting trademarks,. Thailand is somewhat notorious for trade mark squatters and counterfeits.
- Finally assuming the screening results are clear, applicants must determine which class(es) to file in and the specific products or services (“items”) to be covered by the mark. This is a lot trickier than it sounds because the Thai system is picky on how goods and services must be itemized.