Registering A Trademark In Multiple Jurisdictions Through Singapore Trademark Office
The Madrid Protocol is an international system by which trademark holder may make a single application for trade mark protection in a number of countries or regions. Singapore has been a signatory to the Madrid Protocol since 2000, which permits and regulates the filing, registration and maintenance of trade mark rights by local owners across multiple jurisdictions around the world.
Currently 90 countries are members under the Madrid Protocol, and trademark owners may at any time extend their registration to other countries as their business becomes active within their jurisdiction or as they join the Protocol. The Madrid Protocol is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
Ottavia has prepare this guide to provide a broad overview to local trade mark owners and prospective owners interested in taking advantage of the additional protections offered under the Madrid Protocol. It will include a basic guide to applying for international registration through the Singapore trademark office.
Pre-requisites to international registration
Prospective international applicants are required under the Madrid Protocol to first either register the trademark or file an application to register a trademark domestically in the original country of origin (i.e. Singapore). A country of origin is defined under the Madrid Protocol as a country that is a signatory to the Protocol that the applicant (either the person or corporate entity filing the application) is either resident or national of, or has a real and effective commercial or industrial establishment within. For a more detailed guide to filing a domestic trademark registration application, please refer to the relevant Ottavia guide.
Key benefits of international registration
The key benefit of this has been an immense streamlining of administrative processes, providing owners with one channel (via the International Bureau) through which they can obtain new and renew or modify existing registrations in nearly one hundred jurisdictions, saving time and money. Trademark applicants also benefit from:
- a substantial reduction in cost over that incurred by applying separately for registration in each country and/or region.
- faster protection for their trademark in certain countries or regions because of the strict time limits mandated by the Madrid Protocol.
- articles in the Madrid Protocol allowing an international registration to replace a corresponding national or regional registration without any loss of protection or rights by the owner.
- the ability to add countries or regions later as your business or the scope of the agreement expands. Please note that these will not have the same filing date as those made at the time of your original registration.
Only natural persons or legal entities satisfying the above residency/establishment requirements of a country that is party to the Madrid Protocol (i.e. Singapore) may make an application for international registration of a trademark.
A list of Protocol member countries in which you are seeking protection may be submitted alongside a single international trademark application. There is no limit to the number of countries you can apply for protection in either at the time of initial registration or during the lifetime of the trademark, but applicants should note that each country will attract a separate application fee, which can rapidly add up.
The Office of Origin (i.e. the Intellectual Property Office of Singapore) will present your international application to the WIPO International Bureau. This application is to include at a minimum:
- a reproduction of the mark that is identical to that provided in the basic domestic application or registration; and
- a list of the goods and services for which protection is sought, provided with their appropriate classification under the International Classification of Goods and Services (also known as the Nice Classification).
The validity period of an international trademark registration is 10 years, identical to the validity period for domestic registration in Singapore. The two systems share another similarity in that both the international and the domestic registration may be renewed indefinitely for an additional period of 10 years. International renewal is achieved by payment of the prescribed fees to WIPO via the country of origin. Applicant should note that for the first five years of the international registration’s validity period, the international registration requires that the mark registered or applied for in the country of origin remain valid.
As Singapore is a member of the Madrid Protocol, applications for international registration may be made through the Intellectual Property Office of Singapore. Prior to making your application:
- the applicant must have either a domestic application or registration in Singapore on which they can base their international application;
- the goods or services applied for in the international application must be covered by the Singapore trademark; and
- the applicant is required to be either a permanent resident of a national of Singapore, or have a real and effective commercial or industrial establishment in Singapore.
All international applications are treated in an identical manner to Singapore domestic applications. Publication is required in the Trade Mark Journal for the purposes of opposition before the domestic office will grant protection. The international registration will be published in the “International Registrations filed under the Madrid Protocol Published for Opposition Purposes under the Trade Marks Act (Cap. 332, 1999 Ed.)” section of the Trade Mark Journal. Where publication differs is in that the international application is published in accordance with the international registration number, rather than the class of goods or services.
Upon registration or application of the trademark in Singapore, registration of the trademark in other member countries is as below:
- The international application is prepared and submitted through the Intellectual Property Office of Singapore.
- A limited review of the application will be conducted by WIPO for formalities, and the mark published in WIPO Gazette of International Marks. The application will then be forwarded to all countries in which the applicant sought protection.
- The trademark will undergo a similar application process in each designated country as it did during its initial domestic application, with the key difference that that each country is required to comply with strict time limits stipulated in the Madrid Protocol. Countries have up to 18 months to notify WIPO should they find reason the refuse the application. In the event that no refusal has been communicated to WIPO by the designated country, WIPO shall consider that trademark to be registered in that country.
The paperwork and the process involved in registering a trademark is frequently quite complex. Potential applicants are advised to consider contracting a professional firm for the purposes of managing this process, which can substantially increase your chances of a successful registration, while also saving a lot of time, stress and effort on your behalf. Knowledge and prior experience is the key in trademark registration, making Ottavia a strong choice.