Notification of Refusal

Appeal provisional refusals in Thailand

The international extension of trademarks administered by the World Intellectual Property Organization (WIPO) allows many applicants to designate Thai territory through the Madrid System.

Thailand joined the Madrid Protocol in 2017. However, Thai trademark legislation is struggling to adapt to the standards of the Madrid System, resulting in a large number of Notifications of Total Provisional Refusal of Protection (Rule 17(1) of the Common Regulations) issued.

Refusal under sections 9 and 17 of the Trademarks Act B.E. 2559

Since entering the Madrid Protocol in 2017, Thailand has made an effort to harmonize its trademark legislation and the guidelines of the Department of Intellectual Property of Thailand to align with the standards imposed by the WIPO.

Nevertheless, this harmonization knows its limits, especially since the country has not ratified the Nice Agreement of 1957 establishing the International Classification of Goods and Services also known as the Nice Classification.

Thus, although it is possible to designate Thailand with an international extension pursuant to the Madrid System, due to the incompatibility between the Nice Classification and the system of nomenclature of goods and services used by the Department of Intellectual Property of Thailand, applicants designating Thailand almost systematically face a Notification of Total Provisional Refusal of Protection because this application does not comply with the Thailand Trademarks Act (No. 3) B.E. 2559, section 9 because of broad/vague identification. In addition to refusals under section 9, many notifications concern the Thailand Trademarks Act (No. 3) B.E. 2559, section 17.

How to appeal a provisional refusal of protection in Thailand?

Upon receipt of such a Notification of Total Provisional Refusal of Protection, you have 90 days from receipt of the notification to request an appeal of the provisional refusal. Only a law firm registered in Thailand and mandated to be a trademark agent is able to submit an appeal to the Trademark Board, Department of Intellectual Property of Thailand.

JUSLAWS INTELLECTUAL PROPERTY is a law firm authorized to act as a trademark agent for its clients abroad, in particular to appeal provisional refusals under the Madrid System.

We process more than 20 similar appeals per month and can successfully appeal your Notification of Total Provisional Refusal of Protection within 7 days thanks to the expertise of our IP lawyers and our experience with the Trademark Board, Department of Intellectual Property of Thailand.