Provisional refusals against international trademark registration under the Madrid System designating Thailand are very frequent. The below article aims at providing guidance on how to deal with these refusals.

As a starting point, an applicant receiving a provisional refusal against an international trademark registration designating Thailand must appoint a local representative to file a response to the refusal before the trademark registrars or before the Trademark Board of the Thai Intellectual Property Department (DIP), depending on the grounds for refusal.

VARIOUS GROUNDS FOR REFUSAL

There are four common grounds for refusal issued by the DIP trademark registrars:

1) Broad/Vague Identification of Products/Services

In such situation, an amendment application should be filed before the trademark registrar, amending the products/services specification to be in accordance with the pre-approved item list of the Thai classification.

Thailand follows the general framework of the Nice Classification regarding the list of products/ services. However, there are specific conditions applicable to Thailand. For example, broad descriptions of products/services such as “clothing” or “cosmetics” are not accepted and should be specified, such as “shirts,” “trousers,” “perfumes,” “lipsticks,” etc.

2) Disclaimer Requirement

A disclaimer application should be filed before the trademark registrar to disclaim exclusive rights to use one or more parts which are common to trade or not distinctive. For example, a trademark containing “&CO” or a geographical name such as “PARIS” must be disclaimed in Thailand. This is merely a waiver of rights; the disclaimed element will not be removed from the trademark.

3) Prior Identical/Confusingly Similar Trademarks

An appeal against the registrar’s order should be filed before the Trademark Board, arguing that the applicant’s trademark is not identical or confusingly similar to the cited prior trademark. A letter for co-existence is not acceptable in Thailand.

To avoid such situation, it is highly recommended to check the availability of a trademark before filing. It is important to also check classes of products/services which are related to the classes for which the protection is sought. For example, a trademark for vehicles should not be identical or confusingly similar to a service mark for transportation services

 4) Non-Distinctiveness

 An appeal against the registrar’s order should be filed before the Trademark Board. The registrars usually find trademarks lack distinctiveness for being directly descriptive or suggestive of products/services. For example, the Registrar will reject the mark “UROFLOW” for being descriptive of pharmaceutical products in class 5. The applicant may argue in the appeal that the trademark is arbitrary or suggestive. However, it should be noted that the Trademark Board is very strict when considering the distinctiveness of signs applied for trademark registration.

REQUIRED DOCUMENTS

In all circumstances, a notarized Power of Attorney is required in case the applicant is not a Thai national.

DEADLINE

The deadline to file a response to the refusal is the date as shown in the refusal, which is 90 days from the date of receipt of the refusal by WIPO. The said deadline cannot be extended. However, a 90-day extension to submit a notarized POA is possible upon request.

IN CASE NO RESPONSE IS FILED

If the refusal contains only the ground of broad/vague identification and it applies only to some products/services, the application can proceed further with the remaining products/services.

If the refusal however consists of other grounds but no response is filed, the application shall be deemed abandoned.

Should the applicant wish to refile the application, the applicant may designate again Thailand as a subsequent designation under the Madrid system or file a new local application.

TIMELINE

The DIP usually takes 3-4 years to review responses to the refusal. The registrar may issue an additional office action to the local representative, ordering the applicant to further amend the identification of products/services to be in accordance with a periodically updated pre-approved list of the Thai classification. If no office action is issued or if the amendment of identification is accepted, the application will be published for 60 days for opposition purposes. If no opposition is filed, the application will proceed to registration. A local registration number will also be allotted.

GRANT OF PROTECTION

Once the application proceeds to registration, a Statement of Grant will be published by WIPO. In addition, the DIP will issue a registration certificate and send it to the appointed local representative.

Filing an application through the Madrid System allows applicants to easily monitor and manage their trademark portfolio in multiple jurisdictions. However, applicants should carefully consider the pros and cons between filing via the Madrid System and the national route in Thailand and anticipate potential issues since the timing to obtain registration may be seriously impacted.