For overseas counsel
Madrid Protocol Provisional Refusals in Thailand
Responding to a Madrid provisional refusal in Thailand, from analysing the grounds and amending specifications to Trademark Board appeals.
Overview
When Thailand refuses an international registration
International registrations designating Thailand are examined by the Department of Intellectual Property in the same way as national applications. Many receive a provisional refusal, most often because of the wording of goods and services, and a response must be filed locally within a strict deadline.
We act as Thai agent for overseas counsel on Madrid provisional refusals in Thailand, reporting in clear English at each stage. Counsel typically instruct us when they have:
- Received a provisional refusal from WIPO
- Objections to goods and services wording
- A disclaimer requirement to assess
- A citation of an earlier Thai mark
- A lack of distinctiveness objection
- An opposition filed against the mark
What we do
How we handle Madrid refusals
Refusal analysis
Review of the provisional refusal, the grounds cited and the goods and services affected, with a clear recommendation on options.
Local agent appointment
Acting as the Thai trademark agent required to respond, including guidance on the notarised power of attorney.
Specification amendments
Rewording goods and services into terms acceptable to the Registrar, while preserving the commercial scope of protection.
Arguments and disclaimers
Written arguments on distinctiveness and similarity, supporting evidence of use, and advice on whether to accept a disclaimer.
Trademark Board appeals
Appeals to the Trademark Board where the Registrar maintains a refusal, and further appeals to the IP&IT Court.
Follow-up to registration
Monitoring the application after the response, handling further objections and following up on the registration process.
Refusal grounds
Common grounds of provisional refusal in Thailand
A single refusal often combines more than one ground, and each calls for a different response.
Broad or vague specifications
The most common ground. Terms accepted in other countries are often considered too broad or unclear by the Thai Registrar.
Disclaimers
The Registrar may require the applicant to disclaim words or elements considered common to the trade or descriptive.
Lack of distinctiveness
The mark is considered descriptive or otherwise not distinctive enough to be registered without evidence of use.
Confusing similarity
The mark is considered similar to an earlier Thai application or registration for the same or similar goods or services.
Local practice
What overseas counsel should know
Practical points that most often affect the outcome of a Thai provisional refusal.
A strict 90-day deadline
The response deadline is shown in the refusal and runs from the date the refusal is received by WIPO. It cannot be extended, so instructions should be sent early.
A Thai agent is required
A response can only be filed through a Thai trademark agent. A notarised power of attorney is needed.
The application is treated as a whole
Refusals are not limited to a single class, so an appeal can affect every class in the designation.
FAQs
Madrid provisional refusals in Thailand: common questions
What is the deadline to respond to a provisional refusal in Thailand?
The deadline is the date shown in the refusal, which is 90 days from the date the refusal was received by WIPO. This deadline cannot be extended, although an extension to submit the notarised power of attorney may be requested.
Do I need a local agent to respond?
Yes. The response must be filed through a Thai trademark agent appointed under a notarised power of attorney.
What happens if no response is filed?
If no response is filed, the designation is generally deemed abandoned. Where the refusal concerns only broad or vague wording for some goods or services, protection may proceed for the remaining items.
How long does a Trademark Board appeal take?
Appeals to the Trademark Board can take several years to be decided. Because of this, we consider carefully whether an amendment, disclaimer or fresh national filing would secure protection sooner.
Related services
Other support for overseas counsel
Trademarks
National filings, often faster where a Madrid designation faces difficulties.
Contact the firm
Send us a provisional refusal
Send us the refusal and your deadline, and we will review the grounds and advise on the response options for Thailand.