Registration of trademarks in multiple jurisdictions around the world takes place under the Treaty known as The Madrid Protocol - an international system for obtaining trade mark protection for a number of countries and/or regions using a single application. Madrid protocol permits the filing, registration and maintenance of trade mark rights in more than one jurisdiction on a global basis.
Currently there are more than 70 countries that have become members of the Madrid Protocol. Singapore joined the Madrid Protocol in 2000. For a complete list of members refer to the related links at the end of this chapter. The Madrid Protocol is administered by the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland.
International Trademark Registration under Madrid Protocol
Applications for international registration of a trademark may be filed only by natural persons or legal entities within a country which is party to the Protocol. Moreover, under the Protocol, you must first register or file an application (so called basic registration or basic application) for your trademark in your country of origin before filing for the international application. A country of origin is a country that is a member of the Madrid Protocol where the applicant (person or entity filing the application) is a resident or national of, or has a real and effective industrial or commercial establishment. You will need to submit a single international trademark registration application to the trademark office and list the countries in which you are seeking protection for the trademark. There is no limit on the number of countries applied for so long as they are all members of the Protocol and the applicable fees for the trademark registration are paid.
An international application will be presented to the WIPO International Bureau through the Office of origin and must contain at least:
- A reproduction of the mark that must be identical with that in the basic registration or basic application
- A list of the goods and services for which protection is sought, classified in accordance with the International Classification of Goods and Services (called Nice Classification).
Just like trademark registration in Singapore, a worldwide registration through Madrid Protocol lasts 10 years. It may be renewed for further periods of 10 years by paying the prescribed fees to WIPO via the country of origin. Note that for the first five years, the international registration remains dependent on the validity of the mark registered or applied for in the country of origin.
As Singapore is a member under the Madrid Protocol, an application for the worldwide trademark registration may be filed with IPOS in Singapore. Before making such an application:
- the applicant must have an application or a registration in Singapore on which to base his International application
- the goods or services in the applicant's international application must be covered by his Singapore trademark; and
- the applicant must be a resident or national of, or have a real and effective industrial or commercial establishment in Singapore.
All applications, forms and communications submitted via the Registry of Trade Marks at IPOS must be in English.
An international application is treated much in the same manner as Singapore national applications, and is therefore published in the Trade Marks Journal for opposition purposes before protection is granted. They are 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.)". Unlike Singapore national applications, they are published according to the international registration number instead of the class of goods or services.
Key Benefits of Worldwide Trademark Registration through Madrid Protocol
- The cost will almost certainly be less than applying separately for registration for each member country/region.
- Protection for some countries/regions may be obtained more quickly than by using the national route. This is because strict time limits are set under the Protocol.
- Recordal of changes of name and assignments etc. and, for some countries/regions, licenses is carried out centrally via the International Bureau. There is thus a cost saving compared with having to record such changes separately in each member country/region.
- An International Registration can replace a corresponding national/regional registration without loss of rights.
- It is usually possible to add extra countries/regions later though these will not have the same date.
Basic Procedure for International Trademark Registration through Singapore
Once the trademark has been registered or applied for in Singapore, the basic steps for registration of the trademark in other member countries under the Madrid Protocol is as below:
- International application is prepared and submitted through IPOS Singapore.
- WIPO will conduct a limited review of the application for formalities, publish the mark in the WIPO Gazette of International Marks and forward the application to all the countries designated for protection.
- The trademark goes through a similar trademark registration process as the national application in each designated country although each country must comply with strict timeline guidlines under the Protocol. Each country has up to 18 months to notify WIPO of the refusal of the application. If no refusal has been communicated within the 18 months, the trade mark is deemed to be registered in the designated countries.