Australia: Trade Marks: Examination of international tegistrations designating Thailand.

The Thai Department of Intellectual Property (DIP) began receiving international trade mark applications under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) on 7 November 2017. Although 2015 amendments to the Thai Trademark Act holistically define the examination process for Thai designations of International Registrations, a lack of clarity existed on several practical points. After almost two years of the DIP's substantive examination of inbound Madrid Protocol applications, we are now able to shed further light on these issues.

Translation of Applicants' Details

Once the DIP receives an incoming International Application from WIPO, the DIP will be responsible for translating all pertinent details of the Application into Thai and assigning a Thai Trademark Application Number that is distinct from the International Registration Number. The DIP's translation of the applicants' details at this stage is performed under ordinary rules of translation and transliteration without consideration of consistency. Thus, the DIP's translation of, for example, an applicant's name, could vary each time it receives an incoming Madrid application from the same applicant. Further, while all forms to be filed with the DIP after this stage up to issuance of the Registration Certificate are to be completed with the applicants' details in English, the DIP's records of these incoming Madrid applications are in Thai.

The crucial point is that the DIP's similarity examination for trade marks focuses on the identity of each mark's owner, and similarity rejections are often issued for marks that are similar to earlier marks of the same owner, where such owner's name in Thai is spelt however minutely differently from the earlier applications. In other words, a missing comma could require a trade mark owner to have to appeal to the Trademark Board against a citation of one of its own marks. This prospect can be avoided by filing amendments to harmonise an applicant's name in Thai for all its applications in Thailand.

List of Goods/Services Translation

Once a new application is received from WIPO, the DIP is also responsible for preparing a Thai translation of the list of goods/services claimed. Examination of the goods/service descriptions is carried out based on such Thai translation. The descriptions are examined against a database of accepted goods/service descriptions, created by the DIP with reference to Nice Classification (11th Edition). If amendments are to be made to the goods/service descriptions, the DIP would issue a provisional refusal which includes the DIP's suggested amendments – in English.

The process described above involves the DIP 1) translating the goods/service descriptions from English to Thai, 2) bringing the translated descriptions in line with its database, 3) finding suggestions for amending any rogue descriptions and 4) translating its suggestion into English. The convoluted nature of this procedure creates ample opportunity for the DIP's suggested amendments to stray far from the original descriptions for which the applicant intended to claim protection. While the DIP's suggestions in these cases may be well-intentioned, following them in a straightforward manner will likely skew the expected scope of protection.

Office Action Response Deadline Calculation

The Trademark Act and subsequent Ministerial Regulations set the deadline to respond to the DIP's office actions at 60 days from the date on which such office actions are received. However, in practice, this provision is automatically implemented along with the regulation whereby any communication from the DIP issued to the Applicant is deemed received after 30 days of the communication dispatch date. This practice invariably results in all office action response deadlines being calculated 90 days from the date on which the DIP submits its office action to WIPO.

As shown in our discussions above, the outward simplicity of laws, regulations and rules for the Thai DIP's examination of incoming Madrid Protocol applications is rendered derisory by their practical implementation. Designating Thailand in your International Application is a simple task, but enlisting careful assistance of local trademark counsels may be a good idea for navigating the Thai DIP's practices when the time comes.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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