Registering Trade Marks Internationally via Madrid Protocol in Singapore

In order to differentiate one’s business from competitors and reach the global market, many business owners now wish to protect their ideas through filing trade mark applications overseas, in various jurisdictions.

If you are in Singapore and wish to register a trade mark overseas, you may either file a trade mark application directly with the relevant countries’ Intellectual Property (IP) offices, or you can file a trade mark application via the Madrid Protocol.

This article will discuss the process of registering your trade mark internationally via the Madrid Protocol.

What is the Madrid Protocol?

The Madrid Protocol is a centralised international trade mark protection system administered by the World Intellectual Property Organisation (WIPO). The Madrid Protocol allows you to file a single trade mark application in one language and pay one set of fees (see below) to apply for trade mark protection in multiple countries.

There are approximately 120 countries covered under the Madrid Protocol. Some examples of member countries include Singapore, the United States of America, Australia, China, Japan, and many more.

There is no limit on the number of countries you are allowed to designate under the Madrid Protocol, but the costs will increase accordingly with the more countries you choose to designate.

Why File via the Madrid Protocol?

It is beneficial to file a trade mark application via the Madrid Protocol, as opposed to filing separate national filings in each jurisdiction, for the following reasons:

• You enjoy the convenience and cost savings of filing one application to one office instead of filing separate applications to trade mark offices in different countries.
• You do not have to wait for each country’s trade mark office to give you a positive response that the trade mark is protected before it is considered protected in that country. As long as you are not notified of any refusal to protect by the office within the applicable time limit, your trade mark is considered protected. You may even receive a statement of grant of protection before the expiry of this time limit (see below).
• If you need to make changes to the registration such as recordals of change of name, assignments, and renew trade mark registrations, you may do so through a single administrative process.
• You may add more jurisdictions to the registration at any time (see below), although these designations would be accorded a later filing date.

Eligibility Requirements

If you wish to protect your trade mark via a Madrid Protocol application in Singapore, you will have to meet the following requirements as provided by the Intellectual Property Office of Singapore (IPOS):

• You have filed the trade mark application in Singapore, which your international Madrid Protocol application will be based upon;
• The countries you wish to register your trade mark in are covered under the Madrid Protocol; and
• You must either be a Singapore national, a body corporate organised under Singapore laws, domiciled in Singapore, or have a real and effective industrial or commercial establishment in Singapore.

How to File for International Trade Mark Registration via the Madrid Protocol

Once you have fulfilled the eligibility requirements above, you may start the process of filing for international trade mark registration via the Madrid Protocol. In Singapore, you may file this international application through IPOS.

The estimated duration taken for the whole process will depend on whether there are any oppositions to the registration in each country designated, or if there are any Provisional Refusals issued against the trade mark – which will be discussed further below.

Some information you would need to have on hand would be a high resolution image of the trade mark, and the classes of goods and/or services you would like to protect the trade mark in.

Stage 1: Submission of application

Your application must be made via Form MM2(E) along with continuation sheet 8 (for the provision of your Singapore address), which may be submitted through the IPOS Digital Hub website, using your SingPass or CorpPass account.

Manual filing is also possible, but service bureau charges will apply. For more details on how to fill in this form, you may refer to IPOS’s user guide here.

There will be 2 sets of fees involved, namely:

1. An administrative fee of S$250 payable to IPOS.
2. An application fee in Swiss Francs payable to WIPO. The amount payable to WIPO depends on the number of countries you have designated in your application, the number of classes of goods and/or services, and whether the mark is in colour or black and white. You may calculate this fee using the WIPO Fee Calculator.

Stage 2: Formalities examination by the IPOS

Once you have submitted your application, IPOS will verify and ensure that your application is complete with all the necessary information and documents.

If your application did not comply with certain requirements, IPOS will send you a letter requesting for you to make the necessary amendments within a certain time frame.

Once everything is in order, IPOS will certify and submit your international application to the International Bureau (IB) of WIPO. If the IB receives the certified application within 2 months of the date of IPOS receiving your application, this date of receipt by IPOS will be recorded as the filing date of your international registration and your trade mark rights will start from this date.

If this 2-month timeframe is missed, the filing date of your international registration will be the date of the IB receiving the application. As a result, your trade mark rights will only start from this later date.

Stage 3: Publication of trade mark

Once your international application is in order, IPOS will certify it and send it to the IB to be further examined.

If the international application fulfils IB’s requirements, your trade mark will be recorded in the International Register and published in the WIPO Gazette. You will also receive an International Registration Number (IR No.).

Otherwise, IB will notify you to address any irregularities by 3 months or your application will be treated as abandoned.

Stage 4: Examination by the designated countries

The IB will then send your international registration to the various trade mark offices of the countries you have designated in your application, where each office will substantively examine the trade mark. This process may take around 12 or 18 months.

If your trade mark conforms to a particular country’s requirements for trade mark registration and there is no opposition by any party in that country, your trade mark will be granted protection in that country and you will be issued a statement of grant of protection.

However, if your trade mark fails to meet a country’s trade mark registration requirements, or if any party in that country opposes the registration, then that country’s trade mark office will send you a Provisional Refusal of Protection. This provisional refusal will state the grounds for refusal with a deadline for you to file a response or make amendments.

After Successfully Registering Your International Trade Mark

5-year dependency period of international trade mark registrations

The protection provided by the international registration is dependent on your base trade mark application in Singapore for a period of 5 years. Meaning, if during this 5-year period:

• Your Singapore trade mark ceases to exist;
• The scope of your Singapore basic trade mark is restricted; or
• An action is commenced to cease the existence of, or restrict, your Singapore trade mark,

the IB may cancel your international registration to the same extent, before notifying you and the designated countries of such cancellation.

However, once this 5-year period expires, your international registration will remain unaffected even if your Singapore trade mark is challenged or withdrawn.

Renewal of international trade mark registrations

An international registration of a trade mark is valid for 10 years, and may be renewed subsequently. The IB will send you a reminder typically 6 months before the registration is due to be renewed.

There are 2 ways of renewing:

1. Via Form MM11 submitted through IP2SG; or
2. Directly with WIPO.

You may wish to renew your registration directly with WIPO, as a handling fee of S$85 is payable if the renewal is done through IPOS.

If the international registration has already expired, you may still apply to renew it within 6 months of the expiry but a surcharge is payable, in addition to the renewal fees.

Designation of more countries to the international registration

As mentioned above, you may subsequently designate more countries to your international trade mark registration if you wish to. You may do so through filing Form MM4 directly with WIPO.

Similarly, the IB will conduct formalities check on this filing, and you will be given 3 months to rectify any irregularities afterwards.

Once the formalities check is complete, this subsequent designation will be registered and published in the WIPO Gazette. Details of the subsequent designation will be sent to the newly designated countries.

The acquired rights in each newly designated country will start only from the date of the subsequent designation.

Hiring an Intellectual Property Lawyer to Assist with Your International Trade Mark Registration via the Madrid Protocol

It is possible to file an international trade mark application via the Madrid Protocol yourself, through IPOS or WIPO websites. However, the process of doing so can be lengthy and complex, and may require a significant amount of time and effort to complete.

Hence, you may wish to get in touch with one of our experienced intellectual property lawyers to assist you in this process. These lawyers may aid in your application by:

• Suggesting the classes of goods and/or services to apply for;
• Liaising with the relevant authorities; and
• Managing your application, among other things.

Typically, the lawyers will charge professional fees for their services, in addition to the official fees payable to IPOS and/or WIPO, with the amount depending on the scope and complexity of your application.