INTERNATIONAL TRADEMARK REGISTRATION THROUGH SINGAPORE
REGISTRATION OF TRADEMARKS IN MULTIPLE JURISDICTIONS AROUND THE WORLD MAY BE DONE VIA THE MADRID PROTOCOL – AN INTERNATIONAL SYSTEM FOR OBTAINING TRADE MARK PROTECTION FOR A NUMBER OF COUNTRIES AND/OR REGIONS USING A SINGLE APPLICATION. MADRID PROTOCOL PERMITS THE FILING, REGISTRATION AND MAINTENANCE OF TRADE MARK RIGHTS IN MORE THAN ONE JURISDICTION ON A GLOBAL BASIS.
Currently, there are more than 85 countries that have become members of the Madrid Protocol. Singapore joined the Madrid Protocol in 2000. The Madrid Protocol is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
This guide provides information on how to register a trademark worldwide under Madrid Protocol by filing the application through the Singapore trademark office.
International Trademark Registration – Pre-Requisites
Note that under the Protocol, before you can file the international application, you must have first registered the trademark or filed an application domestically in the country of origin (in this case, Singapore). A country of origin is a country that is a member of the Madrid Protocol where the applicant (person or entity filing the application) is a resident or national of, or has a real and effective industrial or commercial establishment. For details on filing a domestic application, see how to register a trademark in Singapore guide.
International Trademark Registration – Key Benefits
- The cost will almost certainly be less than applying separately for registration for each member country and/or region
- Protection for some countries/regions may be obtained more quickly than by using the national route. This is because strict time limits are set under the Protocol.
- Record of changes of name and assignments etc and, for some countries/regions, licences is carried out centrally via the International Bureau. There is thus a cost saving compared with having to record such changes separately in each member country/region.
- An International Registration can replace a corresponding national/regional registration without any loss of rights.
- It is usually possible to add extra countries/regions later, though these will not have the same filing date.
International Trademark Registration – Basic Facts
Applications for international registration of a trademark may be filed only by natural persons or legal entities within a country that is a party to the Madrid Protocol (e.g. Singapore).
You can submit a single international trademark registration application and list the countries in which you are seeking protection for the trademark. There is no limit on the number of countries applied for so long as they are all members of the Protocol. However, keep in mind that a separate fee is applicable for each country; and the costs can add up quickly.
An international application will be presented to the WIPO International Bureau through the Office of Origin, and must contain at least:
- a reproduction of the mark that must be identical to that in the basic registration or application; and
- a list of the goods and services for which protection is sought, classified in accordance with the International Classification of Goods and Services (called Nice Classification).
International trademark registration is valid for 10 years (same as the domestic registration in Singapore). It may be renewed for further periods of 10 years by paying the prescribed fees to WIPO via the country of origin. Note that for the first five years, international registration remains dependent on the validity of the mark registered or applied for in the country of origin.
Since Singapore is a member of the Madrid Protocol, an application for worldwide trademark registration may be filed with the Singapore trademark office. Before making such an application:
- the applicant must have an application or a registration in Singapore on which to base his International application;
- the goods or services in the applicant’s international application must be covered by his Singapore trademark; and
- the applicant must be a resident or national of Singapore or have a real and effective industrial or commercial establishment in Singapore.
An international application is treated much in the same manner as Singapore domestic applications and is therefore published in the Trade Marks Journal for opposition purposes before protection is granted. They are published in a separate section of the Trade Marks Journal entitled “International Registrations filed under the Madrid Protocol Published for Opposition Purposes under the Trade Marks Act (Cap. 332, 1999 Ed.)”. Unlike Singapore domestic applications, they are published according to the international registration number instead of the class of goods or services.
International Trademark Registration – Procedure
Once the trademark has been registered or applied for in Singapore, the basic steps for registration of the trademark in other member countries under the Madrid Protocol is as below:
- International application is prepared and submitted through IPOS Singapore.
- WIPO will conduct a limited review of the application for formalities, publish the mark in the WIPO Gazette of International Marks and forward the application to all the countries designated for protection.
- The trademark goes through a similar trademark registration process as the national application in each designated country although each country must comply with strict timeline guidelines under the Protocol. Each country has up to 18 months to notify WIPO of the refusal of the application. If no refusal has been communicated within the 18 months, the trade mark is deemed to be registered in the designated countries.
International Trademark Registration – Professional Help
Trademark registration paperwork, as well as the process, is usually quite complex and you are well-advised to utilize the services of a professional firm for this purpose. You will significantly increase your chances of successfully registering your trademark as well as save a lot of personal time and effort. Knowledge and prior experience is the key.