INTERNATIONAL TRADEMARK TREATIES
A. Paris Convention
Thailand is a member of the Paris Convention for the Protection of Industrial Property. However, The Paris Convention does not automatically protect the trademark in all Paris Union countries once it is protected in one country. Rather, in most cases, protection depends upon securing a trademark registration in each of the other member countries.
The Paris Convention provides that once a mark owner applies to register his/her mark in member nation A, he/she obtains filing priority (the benefit of his/her application date in nation A) in other member nations if he/she files to register there during the next six months.
B. The Madrid Protocol
The Madrid Protocol is an international trademark filing treaty among over 123 countries. The treaty allows non – Thai applicants from member countries to extend their international registrations to Thailand and allows domestic mark owners to obtain international registrations extending to member countries based upon the owner’s Thai applications or registration. The international registration system is administered by the World Intellectual Property Organization (“WIPO”) located in Geneva. The mark owner can select the member countries to which the international registration will extend, and those countries then have the ability to accept or refuse the extension. Each designated country has 18 months to evaluate the application based on its domestic laws. The international registration offers several benefits, such as the ability to renew registrations and to record assignments in one place for a single registration that covers many countries.
Nevertheless, a unique feature of an international registration under the Protocol is the possibility of central attack. If the basic application or registration upon which the international registration (“IR”) is based is restricted, abandoned or cancelled within 5 years (or more than 5 years if the change resulted from an action within the 5 years), then all the extensions of the IR to various countries, including to Thailand, will be similarly restricted, abandoned or cancelled. For instance, if a Vietnamese application is the basis for the IR and is successfully opposed in Vietnam, then the IR and all extensions of the IR to other countries will be cancelled.