Copyright / Patent / Trademark
- International Trade Mark Applications
- Registration of Trademarks in Singapore
International Trade Mark Applications
Filing in Singapore for foreign countries
Singapore has acceded to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (also known as “Madrid Protocol”).
The Madrid Protocol is an international trademark treaty to which over 70 countries to-date have signed. The treaty is administered by the International Bureau of the World Intellectual Property Organisation (“WIPO”) in Geneva.
The Madrid Protocol provides an efficient and cost-effective method of seeking trademark protection in numerous countries through filing a single application with the International Bureau. The Protocol came into effect in Singapore on 31 October 2000.
Procedure
A single international application for a mark can be filed with the International Bureau. The application designates the number of countries to which the applicant wishes to seek protection for his mark. This filing is done through the Singapore Trade Marks Registry. Only countries which have signed the Madrid Protocol may be designated in the international application (see below for the list of countries).
Requirements
Before an international application can be filed, the following must be satisfied:-
a) the applicant must
i) be a citizen of Singapore;
ii) be domiciled in Singapore; or
iii) be a body or corporation incorporated or constituted under the law of Singapore; or
iv) be a person who has a real and effective industrial or commercial establishment in Singapore; and
b) must have already filed a national trade mark application or already has a national registered mark in Singapore.
Priority
Where the international application is filed within 6 months from the date of the national trade mark application filed in Singapore, the international application can claim a right of priority from the date of the earlier national application provided that the foreign country designated in the international application is a member of both the Madrid Protocol and the Paris Convention (Convention for the Protection of Industrial Property).
International Bureau
The International Bureau is a central international registry that receives international applications from respective national registries of contracting countries to the Madrid Protocol. It also allows searches to be made by any person for entries in the International Register concerning a specific mark. A search fee is charged.
The International Bureau is a depository of information relating to the international applications Additionally, the International Bureau will be the middleman in notifying certain results or decisions of the national registries of countries designated in the international applications, as well as the submissions of the applicant.
Effect of International Registration
A mark registered through an international registration shall have the same rights in a designated country as if the mark was directly registered in the designated country. In other words, the mark will enjoy trademark protection in the designated country.
Date of Protection of an International Registration
Generally, the mark in an international application is protected as at the date of the international registration.
Duration of Protection
The length of protection is 10 years from the date of registration, with possibility of renewal for further periods of 10 years.
Six months before the expiry of international protection, the International Bureau shall notify the holder of the exact date of expiry.
Fees for international application, registration and renewal are set out in Article 8 of the Madrid Protocol. The Singapore Registry of Trade Marks can accept for transmission the fees payable to the International Bureau in respect of an international application originating in Singapore or a renewal of such an international registration
Interdependence of International Registration and National Application/ Registration
Within 5 years from the date of the international registration, if the national application or registration were to lapse, renounced or revoked, then the international registration lapses as well.
Upon the expiry of 5 years from the date of the international registration, such registration shall become independent of the national application or registration.
Countries who are party to the Protocol
Presently, over 70 countries have acceded to the Protocol.
They include Antigua and Barbuda, Armenia, Austria, Australia, Belgium, Bhutan, Belarus, Bulgaria, China, Cuba, Czech Republic, Democratic People’s Republic of Korea, Denmark, Estonia, Finland, France, Georgia, Germany, Greece, Hungary, Iceland, Italy, Ireland, Japan, Kenya, Latvia, Lesotho, Liechtenstein, Lithuania, Luxembourg, Moldova, Monaco, Morocco, Mozambique, Mongolia, Netherlands, Norway, Poland, Portugal, Republic of Korea, Romania, Russian Federation, Sierre Leone, Singapore, Slovakia, Spain, Swaziland, Sweden, Switzerland, Slovenia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Vietnam, Yugoslavia and Zambia,
Advantages
- Simplified filing and registration
- Faster response by the national trade mark registries
- Streamlined post-registration procedure
Only a single application is filed and paperwork and costs are reduced.
Under the Protocol, the national trade mark registries of the designated countries have to respond with any objection to the trademark application within 12 months of the date of filing. This period may be extended by the respective registry to 18 months, and for oppositions which have been raised, the period may be extended further.
What this means is that the response time is faster and the applicant no longer has to wait for long periods before a first response is received. Further, if an objection is raised within the initial 12 or 18-month period, the Protocol will treat the mark as registered.
Any updates or changes to a international registered mark (for instance, a change in the particulars of the holder, or a change in ownership or a limitation of the goods and services in respect of which the mark is registered) may be implemented through a single procedure and payment of one fee, instead of multiple changes and fees for each of the designated countries.
The Protocol further allows a new country to be designated even after the mark has been registered.
The material in this memorandum is of the nature of the general comment only, and neither purports, nor is intended to be advice or any particular matter. Legal advice should be sought from qualified lawyers on any issues and queries relating to the topic.