3 Questions To Consider When Registering Your Trademark Overseas

You may already have a trademark that you have been using or intend to use for your business. What would be most crucial is to register your trademark in Singapore first so as to obtain protection for your trademark under the Trade Marks Act (read about what you can register as a trademark, and how to register a trademark.)

Subsequently, you may have intentions to register your trademark overseas. In such a case, you may want to ask yourself the following questions, while keeping in mind the level of financial resources that you are able to commit to protecting your trademark overseas.

Question 1: What are the countries in which you seek to register your trademark?

  • You should consider which countries you are currently operating businesses in and which you are intending to or may expand into in the near future. These countries will then be the key geographic markets in which you should register your trademark.
  • One common mistake that many businesses make is to register their trademarks only in countries where they have existing operations in, without having the foresight to secure such protection in markets that are brimming with potential but which have hitherto been untapped. What may then happen is that other parties in those markets may then register the businesses’ trademarks locally and subsequently charge extortionate fees for the legal assignment of the locally-registered trademarks. Alternatively, they may deter the businesses from entering the market, and should the latter enter the market and use the trademarks, the former may sue the latter for trademark infringement. To avert this situation, businesses should be proactive in identifying countries that have favourable conditions (in terms of demographics, individuals’ consumption and lifestyle patterns, and market saturation) that can be leveraged.
  • Admittedly, the costs of registering trademarks in several countries may be significant at the outset especially for smaller businesses. However, in the long term, it may reap dividends if businesses expand abroad since they would require legal protection over signs that can distinguish their goods and/or services from that of other parties’. That said, it is prudent not to adopt a “kitchen-sink approach” and to blindly seek protection in every country possible. This is not just due to the prohibitive costs that you would incur, but also due to the fact that your registered trademarks in certain countries might be revoked for non-use for a period of time.

Question 2: Are there any are identical or similar trademarks as yours in those countries already?

  • Before applying for trademark protection, you should search the local trademark registries of those countries that you have identified earlier to ascertain if there are any prior trademarks which are identical or similar to that which you seek to register.
  • If there are such trademarks as described, you may consider purchasing the trademark from the party in whose name the trademark has been registered, so that you may use the mark in that country without having to face allegations of trademark infringement.
  • Meanwhile, you should also look out for the use in those countries of any unregistered trademarks that are identical or similar to that which you seek to register. This is because the owners of the former marks may still be able to sue you on other bases, g. passing off (in common law countries). To ascertain the existence of such marks, it is advisable to seek the assistance of a local trademark lawyer or agent.

Question 3: Should you take the national route, regional route or international route?

There are several routes through which you may apply for the protection of your trademarks:

  • National route: You may directly apply to the national intellectual property (“IP”) offices of the countries in which you seek protection. If you intend to make several applications across different countries, you may have to translate your applications into the relevant national languages, and will have to pay fees separately to each national IP office. Also, certain countries may require you to engage IP agents to submit trademark applications on your behalf. In addition, when it comes to the renewal of trademarks, you would have to do so separately at each IP office. As seen, seeking protection via the national route may be a costly and inconvenient option should you intend to obtain trademark registrations in several countries.
  • Regional route: You may leverage the regional agreements that certain blocs of countries have entered into so as to gain trademark protection within a region by making just one application. For instance, you may file an application for a European Union (“EU”) trademark at the European Union Intellectual Property Office so as to gain protection in all existing and future Member States of the EU. However, while this route offers greater convenience than the national route to applicants seeking regional protection in Europe or Africa for example, it will be of no relevance to those seeking such protection in Asia given the absence of a regional agreement concerning trademark protection.
  • International route: You may utilise the Madrid System for the International Registration of Marks (“Madrid System”) to apply for trademark protection in any of the Madrid System’s 98 members by filing just one application directly with the Intellectual Property Office of Singapore (“IPOS”). Also, you only have to submit the application in English and have to pay one set of application fees to seek registration in numerous countries. Additionally, you will only be required to hire a foreign trademark lawyer or agent to assist with your application should your application be rejected by a particular IP office. 

Meanwhile, after filing for registration, you can be assured that the national IP offices in which you file applications will inform you of any refusal of the applications within 12 or 18 months (depending on the country in question). Should there be no notification of such refusal, your trademark will be deemed as registered in those countries. Another feature of the Madrid System is that you may, subsequent to your international application, designate other countries to obtain protection in. Finally, any amendments to your application or management of your current trademarks (including renewals of trademarks) can be done via a single request made at IPOS.      

As seen, the Madrid System can offer individuals and businesses great convenience, certainty and flexibility, especially when they seek to obtain registration in numerous countries.

However, you need to be aware of the shortcomings of the Madrid System, which, includes the following:

  • The protection that you receive from registration in several countries hinges on your basic mark (which was registered at IPOS) being valid for a period of five years from the date of the international registration of your trademark. Any successful central attack on the basic mark during this period would undermine your trademarks in other countries to the same extent as your basic mark in Singapore. In such a case, you have to apply to the respective national IP offices to transform your international registration into national applications, which would incur additional costs.
  • While more countries are joining the Madrid System over time, there are still numerous countries within Asia that have yet to do so, e.g. Malaysia, Indonesia, Vietnam, Laos, Myanmar, Thailand, Taiwan, and Hong Kong. Therefore, should you intend to obtain trademark protection in these countries, you have to approach the national IP offices separately.

It remains a complicated process to ensure that you have properly obtained your trademark overseas, so it is best to consult an intellectual property professional. You may consider getting in touch for quotations from our Trade Mark Registration lawyers.

Sources

  • European Union Intellectual Property Office
  • Intellectual Property Office of Singapore
  • World Intellectual Property Organization

Related Articles

Find a Lawyer

View all legal services