- Singapore is a party to the Madrid Protocol and the Paris Convention.
- The Madrid system allows one international application, filed through IPOS, covering many countries.
- Each country you designate still decides whether to grant protection.
- For five years, the international registration depends on your Singapore mark.
Two routes
Broadly, there are two ways to protect a brand abroad. You can file a separate application in each country, usually through local lawyers or agents. Or you can use the Madrid system, an international filing system run by the World Intellectual Property Organization (WIPO), of which Singapore is a member.
How the Madrid route works from Singapore
To file through IPOS, the applicant needs:
- An existing Singapore trade mark application or registration (the 'basic mark').
- A connection with Singapore: being a Singapore citizen, being domiciled here, or having a real and effective industrial or commercial establishment here.
- The same mark, in the same owner's name, with goods or services the same as or narrower than those in the basic mark.
IPOS forwards the international application to WIPO in Geneva, which passes it to each country you have chosen (designated). Each designated country examines it under its own law and has a set period, typically 12 to 18 months depending on the country, to refuse protection. If it does not refuse within that time, protection is granted there.
Advantages
The system has several practical benefits:
- One application in one language, with one set of fees.
- Over 100 member countries, including the United States, China, Japan, Australia, much of Europe and most of ASEAN.
- One renewal and simpler recording of changes, such as a new owner or address.
The main drawback: dependency
For five years from the date of the international registration, it depends on the Singapore basic mark. If the Singapore application is refused or withdrawn, or the Singapore registration lapses or is cancelled in that period, the international registration falls with it, in every country. This is often called 'central attack'.
There is a limited safety net: a cancelled international registration can be transformed into national applications, which must be done within three months of the cancellation. Even so, it is better to start with a strong Singapore filing.
Choosing between the routes
The Madrid system suits many businesses expanding into several markets. Filing directly in each country may suit others, for example where the Singapore mark may still be open to challenge during the five-year dependency period. Either way, each country can raise its own objections.
A lawyer can help you weigh the routes against your expansion plans and budget.
This article is general information on Singapore law and is not legal advice. Rules and agency policies change, and every situation is different. For advice on your own circumstances, speak with one of our lawyers.
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