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      Madrid Protocol: Filing trade mark application in foreign countries

      Published on 16 Oct 2017 | 4 minute read

      “The wait is over”, for Thai businesses planning to file trade mark applications in foreign countries, it has indeed. Until now, Thai businesses that want to file trade mark applications in foreign countries need to file one trade mark application in each country separately, or collectively for groups of countries such as the European Union. In fact, there is a well-established system which allow businesses to file a single international trade mark application called “the Madrid Protocol” to obtain trade mark protection in all member countries of the Madrid Protocol. It has now been more than 10 years of anticipation and planning for Thailand to join the Madrid Protocol. But, it was not until this year that the date was finally set to implement the Madrid Protocol in Thailand starting from 7 November 2017. Today, the Madrid Protocol has 116 member countries, which covers more than 80% of the world’s leading markets. Thai businesses may now obtain trade mark protection in these member countries via a single international application.

      With less than a month from now until the international trade mark application can be filed under the Madrid Protocol, businesses that plan to utilize this system should be prepared. To help businesses prepare and be ready to file the international application under the Madrid Protocol, Rouse has prepared 4 Points to note about the international application below.

       

      1. Use a strong Basic Application with sufficient coverage of goods/services

      When filing an international trade mark application under the Madrid Protocol, applicants need to have an existing trade mark application or registration in Thailand to be used as the “Basic Application”. This is very important because if the Basic Application is denied or cancelled within 5 years from the date the international trade mark application was filed, the international application will be dismissed as well. Therefore, the Basic Application should be a trade mark application that is most likely to be accepted for registration or, a registered mark.

      The scope of the specification of goods/services in the Basic Application is also important. This is because goods/services specified in the international application must be within the same scope of the goods/services listed in the Basic Application. Therefore, the specifications listed in the Basic Application should provide sufficient coverage and not be too broad or too narrow. A well-designed list of specification of goods/services will greatly benefit your trade mark protection in all countries. In addition, it will also reduce the risk that the countries you designate will issue an objection to the specification of goods/services. You may check whether the desired goods/services are accepted in each jurisdiction from the Madrid Goods and Services (MGS) Tool on WIPO’s website at http://webaccess.wipo.int/mgs/

       

      2. Search for existing trade marks prior to filing an international application

      Before applying for an international application under the Madrid Protocol, you should search for existing trade marks in the countries you wish to seek protection. If your trade mark is identical or similar to a prior registered trade mark in a particular country, your trade mark will be rejected in that country.

      Nevertheless, searching the trade mark database in each country by professionals could be costly. Instead, you may perform a trade mark search to find identical or similar trade marks yourself through WIPO’s Global Brand Database at http:///www.wipo.int/branddb/en/. Although the search will not be comprehensive, it will add a degree of certainty and help you decide on the countries to designate and the appropriate mark to file for an international application under the Madrid Protocol.

       

      3. Choose the country to designate and evaluate the cost

      A benefit of applying for an international application under the Madrid Protocol is cost savings for filing in multiple countries. The official fee starts at about THB23,000 for black and white marks, plus Individual Countries’ official fees which vary from country to country at about THB 3,500 – 14,000 per country. From the second country onward, there will be only Individual Countries’ official fees. Therefore, when compared to directly filing a trade mark in each country that costs about THB20,000 – 70,000 per country, the savings for filing an international application under the Madrid Protocol is noticeable.

      You may check the countries that are members of the Madrid Protocol and calculate the fees for applying in each country yourself at http://www.wipo.int/madrid/en/fees/calculator.jsp

      Having said that, the examination of an international application will depend on the laws and practice of each country you designate. If a country refuses your international application or issues an order for you to amendment the application, you will need to appoint a local agent in that country to respond to the refusal/order, which will incur extra costs.

       

      4. A single application, a single set of documents, a single payment of fees

      Another benefit of filing an international application under the Madrid Protocol is that you only use a single language for filing (English), you do not need to prepare as many documents in order to file and you do not need to contact local agents in each country to apply for a trade mark.  You can file only a single international trade mark application with WIPO’s International Bureau, in English, and pay the official fees directly with WIPO using a single currency (Swiss Franc) to obtain protection in many member countries. You do not need to separately find agents in each country, prepare documents or transfer money to each country.

      *** A word of caution: If you receive a letter requiring you to pay an official fee for an international application, please make sure to check the details contained in the letter carefully. Many fraudsters send fake letters requesting applicants to transfer money to entities that sound legitimate but are in fact fake entities. There have been many cases in foreign member countries that have joined the Madrid Protocol. Thus, should you receive a notice to pay for an international application you applied for and are not sure whether it is legitimate or authentic, please do not hesitate to contact a trade mark representative to check before payment.

      Rouse is happy to assist by providing professional advice or additional information for you regarding the international trade mark application under the Madrid Protocol, including strategic planning of trade mark registration to optimize the application and protection of your trade mark.

       

      To download the Thai version of this article, please click the link below. If you have any questions, please do not hesitate to contact us at tmg_thailand@rouse.com or Tel. 02-6532730.

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      Rouse Editor
      Editor
      +44 20 7536 4100
      Rouse Editor
      Editor
      +44 20 7536 4100