International Trademark

Registration of International through Singapore Trademark Office

Pre – Requisite of International Trademark Registration

Before an applicant can file the international application, under the Madrid Protocol, he/she must have first registered the trademark or filed an application domestically in the country of origin.   A country of origin is a country that is a member of the Madrid Protocol where the applicant, the person or entity filing the application, is a resident or national of, or has a real and effective industrial or commercial establishment.

 

Madrid Protocol

The Madrid Protocol is an international system for obtaining trademark protection, using a single application, for a number of countries and/or regions. Madrid Protocol permits the filing, registration, and maintenance of trademark rights in more than one jurisdiction on a global basis.

The madrid Protocol is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. At present there are more than 85 countries that have become members of the Madrid Protocol. In 2000, Singapore joined the Madrid Protocol.

 

Basic Facts about International Trade Mark Registration

  • Registration of trade marks in multiple jurisdiction around the world may be done via The Madrid Protocol
  • Applications for international registration of a trade mark may be filed only by natural people or legal entities within a country that is party to the Madrid Protocol.
  • A single international trade mark registration application need only be submitted with the list of countries in which the applicant is seeking protection for the trade mark. A separate fee is applicable for each country and there is no limit on the number of countries applied as long as the listed countries are all members of the Protocol.
  • An International application presented to the World International Property Organization (WIPO) through the office of origin must at the least contain
    • A duplicate of the mark identical with that in the basic registration or application
    • Classified in accordance with Nice Classification, the International Classification of Goods and Services, the list of the goods and services for which protection is sought.
  • For the first five years, the international registration is dependent on the validity of the mark registered or applied in the country of origin. Same as the domestic registration in Singapore, an International trade mark registration is also valid for 10 years. It may be renewed for further period of 10 years by paying the fees via the country of origin to the World International Property Organization (WIPO).
  • The applicant must have an application or a registration in Singapore on which to base his international application.
  • The applicant’s international application must only mention the goods and services that are covered by his Singapore trademark
  • 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, much like a Singapore domestic application, is 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.)  for opposition purposes before protection is granted.
  • The international applications are published according to the International registration number, unlike the Singapore domestic applications which are published according to the class of goods and services.

 

Procedure for International Trade Mark Registration

  1. The international application is prepared and submitted to through Intellectual Property Office of Singapore (IPOS).
  2. World Intellectual Property Office (WIPO) will carry out the following procedures:
    1. Limited review of the application for formalities
    2. Publish the mark in the World Intellectual Property Office Gazette of International Marks
    3. Forward the application to all the designated countries for protection.
  3. The trademark goes through the similar trade mark registration process as the designated country’s national application registration. Each country must comply with the strict timeline guidelines under the Madrid Protocol under which each country has up to 18 months to notify the World Intellectual Property Office of the refusal of the application. The trade mark is deemed as registered in the designated countries in case of no refusal has been communicated within 18 months.

Trade mark registration as well as the paperwork is usually quite complex requiring knowledge and prior experience. Hence, utilizing the services of a professional firm for international application registration will not only significantly increase the chances of successful registration of the trade mark but will save a lot of personal time and effort.

 

Benefits of registering an International Trade Mark

  1. The cost is less than that of applying separate registration for each country and/or region.
  2. Due to strict time limits set under the Madrid Protocol, protection for some countries or region is obtained more quickly than by using the national route.
  3. Without any loss of rights, an international registration can replace a corresponding national or regional registration.
  4. It is possible to add extra countries or regions later but these may not have the same filing dates.
  5. Changes of name, assignment, licences, etc. for some countries or regions in the record are carried out centrally via the International Bureau. Thus it is more cost efficient than having to record such changes separately in each member country or region.

 

Amendments to Singapore’s Trade Marks Act

Significant amendments were made in the Singapore’s Trade Marks Act (Cap. 332) since it’s introduction in 1939 in order to comply with the obligations under the Singapore Treaty on the Law of Trade Marks administered by the World Intellectual Property Office (WIPO). The amendments came into effect on July 2, 2007 and were intended towards simplifying and streamlining the procedures as well as reducing the costs associated with trade mark registration office.

  1. Multi – Class Trade mark Applications : Following the new amendments, now severals classes of applicable goods and services can be covered with a single trade mark registration application in Singapore.
  2. Division of Trade mark Applications : Singapore trade mark application filed on or after 2 July 2007 can be divided into two or more separate applications.. The division of trade mark application might expedite trade mark registration as appropriate in the following cases :
    1. The trade mark application faces opposition or objection at the examination stage.
    2. The trade mark application faces opposition by third parties after publication.
  3. License Registration for Pending Trade mark Applications : An applicant will no longer need to wait for the completion of the registration of the trade mark application in order to apply for the recordal of a trade mark license and can register a licence directly to pending Singapore trade mark application.
  4. Procedural Oversight Relief Measures : To alleviate procedural mistakes by trade mark applicants and notably missed time limits, the amendment provides for relief measures. These provide the avenue for a Singapore trade mark applicant to maintain rights, even when the time limits have been missed, in an application that has been filed.