Madrid Protocol International Trademark Filing

How the Madrid System works from a Thai base

Thailand joined the Madrid Protocol with effect from 7 November 2017, so a Thai applicant can file one international application at the Department of Intellectual Property, in one language, paying one set of fees, and designate any number of the other Madrid members. WIPO records the international registration and forwards each designation to the national office concerned, which then examines under its own law.

The international registration is not a global trademark. It is a bundle of national rights administered centrally. Each designated office may refuse protection on its own absolute or relative grounds within the twelve or eighteen month refusal period, and a refusal in one country does not disturb the others. What the system genuinely saves is administration: one renewal, one address change, one ownership record instead of thirty.

The application must be based on a Thai basic application or registration for the same mark and for goods no broader than the basic filing. That dependency lasts five years: if the Thai basic mark falls away in that period, every designation falls with it in what practitioners call central attack. Transformation into national applications is possible afterwards but expensive, which is why the strength of the Thai basic mark deserves scrutiny before the international filing.

Classification decisions that determine value

• Thailand applies the Nice Classification, and the Department of Intellectual Property is comparatively strict about specification wording; broad class headings that pass elsewhere are often objected to here.
• The international application cannot be broader than the basic mark, so a narrow Thai specification permanently caps the scope of every designation.
• Designations should follow the commercial map: manufacturing countries for enforcement against counterfeit production, and market countries for distribution control.
• Where a mark contains Thai script or a transliteration, decide early whether to protect the Thai characters, the roman transliteration, or both, since foreign offices treat them as distinct marks.
• Colour claims narrow protection to that colour combination; filing in black and white generally gives wider scope in most designated jurisdictions.

Timeline and the refusal period

1. Thai basic filing: File or rely on an existing Thai application or registration at the Department of Intellectual Property, matching the mark exactly.
2. International application: Filed through DIP as office of origin, which certifies the correspondence with the basic mark before transmitting to WIPO.
3. WIPO formal examination: Typically a few months; irregularities are notified and must be corrected within set periods.
4. National examination: Each designated office has twelve or eighteen months to notify provisional refusal; silence means protection is granted.
5. Response to refusals: Handled by local counsel in the refusing country under that country's procedure and deadlines.

Enforcement in Thailand once the mark is protected

Registered marks are enforced under the Trademark Act B.E. 2534 (1991) as amended, with civil and criminal remedies heard by the Central Intellectual Property and International Trade Court. Customs recordation is a practical companion measure: recording the mark with the Customs Department allows suspension of suspected infringing imports and exports at the border.

Foreign proprietors enforcing in Thailand file powers of attorney and corporate authority documents with certified Thai translations, notarised and legalised through the Royal Thai Embassy where executed abroad. Thailand's accession to the Apostille Convention enters into force on 28 February 2027, so filings before that date still follow the embassy chain.

Use matters. A Thai registration is vulnerable to cancellation for three years of non-use, so proprietors who register defensively should keep dated evidence of genuine commercial use in Thailand for each class they intend to keep.

Common mistakes and how we avoid them

More questions we are asked

Can a foreign company use Thailand as office of origin?

Only with a real and effective industrial or commercial establishment, a domicile, or nationality connection to Thailand.

How long does protection last?

Ten years from the international registration date, renewable in ten-year terms through a single WIPO renewal.

Is Madrid always cheaper than national filings?

For roughly four or more countries it usually is. For one or two markets, direct national filings are often cheaper and avoid the dependency period.

Can I add countries later?

Yes, by subsequent designation, which takes effect from its own date rather than from the original registration date.

Does a Madrid registration cover Hong Kong or Taiwan?

No. Neither is a Madrid member, so separate national or regional filings are required.