The Madrid Protocol: Expanding Trademark Protection for Thai Marks

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INTRODUCTION

Thailand has just finished amending its Trademark Act in order to become part of the Madrid Protocol, [1] which manages international trademark rights. Thailand’s accession to the Protocol is in furtherance of the Asean Economic Community's harmonization plan. [2] The plan strategizes several initiatives to unify and strengthen Asean economic and political forces to counter other major global markets, such as the EU and China. [3]

Bangkok Traffic
The Madrid Protocol foreshadows a bright future for trademark law
in Thailand. Photo via Wikimedia Commons.

BACKGROUND LAW

The Madrid Protocol is an international treaty governing trademark filings for owners seeking protection in multiple countries.[4] Filing trademarks under the Madrid Protocol simplifies the process of expanding trademark protection in the global market. A trademark owner who applies for an international registration of the mark under the Madrid Protocol may benefit from the system’s several advantages. Namely, an internationally registered mark under the Protocol has only one renewal date, uses one language, and charges just one filing fee.[5] Apart from being less expensive for the client, using an international registration is also easier from the lawyer’s perspective because maintaining a single international registration, as opposed to several national registrations, is less-time consuming.[6]

Currently, more than 110 countries are party to the Madrid Protocol, and the number is growing – most recently, with the accession of Thailand. [7]

THAILAND’S PREPARATIONS

In order to be accepted as a contracting party to the Protocol, Thailand was required to make amendments to its Trademark Act. [8] Most notably, Thailand – a country previously known for its non-traditional trademark protection – needed to change the way it treated the scope of protection for sounds and smells. [9] Prior to the revision, neither sounds nor smells could be registered as trademarks. [10] Under the revised Act, sounds and smells will be protectable in Thailand. [11]

This is important for brand owners who may currently have sounds or smells essential to their products that now merit protection. Even though it may seem like an inconsequential component of an owner’s brand, many protected sounds and smells in other countries – the U.S., for one – have been crucial in expanding a brand’s growth in a given market. A great domestic example is Homer Simpson’s sigh, which is a protected sound in the U.S.[12] [xii]

THE IMPLICATIONS OF THAILAND’S ASSESSION TO MADRID PROTOCOL

Thailand's accession to the Madrid Protocol is extremely beneficial for Thai brand owners, who will now enjoy the same trademark rights as brand owners in developed countries.[13] [xiii] This is because the international application acts as a bundle of national and regional rights.[14][xiv] Once a trademark owner receives an international registration, the owner may extend the international trademark rights by applying to have the mark registered in any of the other countries party to the Protocol at any time.[15][xv]

Think of the Madrid Protocol as the Chipotle of treaties governing trademark agreements. In the same way a customer at Chipotle selects toppings from a fixed selection to customize a burrito, a trademark owner may proceed to pick and choose the countries (“condiments”) of her choosing to build her desired bundle of rights (“burrito of rights”).

A trademark owner’s application for rights in a particular country party to the Protocol is contingent on that party’s refusal of the rights within a specified time limit - usually, about eighteen months.[16] [xvi] If a country does not refuse the trademark within the eighteen month (or shorter) period, the trademark will automatically receive protection in that country.[17][xvii] Trademark owners will want to take note that while they may narrow the rights awarded to their goods and/or services in a given national registration, they may not expand their lists of goods and/or services under a mark past those protected by its original international registration.[18][xviii] This narrowing may be accomplished on an individual, country-by-country basis, or may include a group of countries with similar limitations.[19][xix]

CONCLUSION

Thailand’s preparations for becoming party to the Protocol reflect an expansion of Thai trademark law that more closely mirrors that of developed nations. Moreover, Thailand’s accession to the Madrid Protocol increases international trademark protection for big and small business owners in Thailand who want to market their goods globally. In turn, this will make Thai brands - along with other Asean countries' brands - more competitive internationally.



[1] [i] Making the Most of the Madrid System: Information and Practical Tips on How to Use Specific Forms , WIPO, 7 available at http://www.wipo.int/export/sites/www/madrid/en/forms/docs/making_the_most_of_the_madrid_system_mm_forms.pdf [https://perma.cc/3GDU-BR6B] [hereinafter WIPO] (last updated 2016).

[2] Id.

[3] See Sharon Chen, Southeast Asian Businesses Want Details on Asean Community Plan, Bloomberg (Dec. 2, 2015 11:49 PM), [https://perma.cc/E4R2-EW7X].

[4] See WIPO, supra note 1, at para 1.

[5] Id. at 8.

[6] Id. at 9. Filing at WIPO must be based on a trademark application or registration in the trademark owner’s country of origin. The international application’s filing date is the same as its priority date under Article 4 of the Paris Convention. See generally Madrid Protocol Implementation Act, Pub. L. No. 107-273, §67, 116 Stat. 1758, 1917 (2002).

[7] Id. at 7.

[8] See Darani Vachanavuttivong, Trademark Act Amendments Usher in Thailand’s Accession to the Madrid Protocol, Tilleke & Gibbins (June 3, 2016), http://www.tilleke.com/resources/trademark-act-amendments-usher-thailand%E2%80%99s-accession-madrid-protocol [https://perma.cc/P6SS-ZSWE] [hereinafter Vachanavuttivong].

[9] See Say Sujintaya & Jomjai Jintasuwon, Registering non-traditional trademarks in Thailand, The Nation: Thailand’s Independent Newspaper (May 29, 2012, 12:00 AM), http://www.nationmultimedia.com/opinion/Registering-non-traditional-trademarks-in-Thailand-30182973.html [https://perma.cc/HMH7-68A5].

[10] Id.

[11] Id.

[12] See Trademark “Sound Mark” Examples , USPTO, http://www.uspto.gov/trademark/soundmarks/trademark-sound-mark-examples [https://perma.cc/W46B-GRUZ] (last visited Sept. 14, 2016).

[13] See Vachanavuttivong, supra note 6, at para 17.

[14] See Fact Sheets Cross-Border Topics, International Trademark Association, (March 2016), http://www.inta.org/TrademarkBasics/FactSheets/Pages/MadridProtocol.aspx [https://perma.cc/NG9W-46QS].

[15] Id.

[16] Id.

[17] Id.

[18] Id.

[19] Id.


Posted by Maria T. Cannon on Mon. October 24, 2016 8:00 AM
Categories: Madrid Protocol, Thailand

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