You may designate Singapore through the Madrid Protocol (an international registration system of marks administered by the International Bureau of the World Intellectual Property Organization) to which Singapore is a member country. The Madrid Protocol allows a trade mark owner to seek protection of his trade mark in member countries, including Singapore, simultaneously by filing one application with the home office.
This flowchart outlines what happens after the international registration/subsequent designation designating Singapore is received: (Please mouseover for more information)
(2).jpg)
1. Details of the international registrations and subsequent designations designating Singapore
Details of the international registrations and subsequent designations designating Singapore are received electronically from the International Bureau (IB) of the World Intellectual Property Organization (WIPO).
2. Examination
IPOS examines the international registrations and subsequent designations as if they are national applications. The international registrations and subsequent designations are searched for conflicting marks and examined for registrability in accordance to the Trade Marks Act, Trade Marks Rules and IPOS Trade Mark practices.
3a. Trade Mark published in eJournal
If the international registrations and subsequent designations are acceptable, they will be published in Trade Marks Journal which is made available to the public through the eJournal. Within two months of the publication period, any interested party may oppose the registration of the mark. However, any party intending to oppose may request for an extension of time to file the notice of opposition. In general, the total extension of time for which the Registrar may allow shall not exceed four months from the date of publication.
3b. IPOS issues Provisional Refusal of Protection (ex-officio) or Office Action
If the international registrations and subsequent designations are not acceptable, the examiner will issue a Provisional Refusal of Protection (ex-officio) stating the objections. The Provisional Refusal of Protection (ex-officio) shall be sent electronically to the IB. The IB shall notify the holder of the refusal.
The holder is given four months from the date of the refusal to request for a review of the objections. It is IMPORTANT to note that the request for a review MUST BE accompanied by an address for service in Singapore filed on Form TM1. If the holder needs any assistance from any IP service provider, we have provided a list for your use. Please click here. Please contact the service provider directly.
If the holder requires more time, he MUST lodge Form TM49 (no fee is payable) to request for an extension of time before the expiry of the deadline stated in the refusal or in the Registration's office action(s).
If there is neither a response nor a request for an extension of time, then the application will be treated as withdrawn if the international registrations and subsequent designations are refused totally. If the international registrations and subsequent designations are partially refused, the refused goods and / or services will be deleted, and the remaining goods and / or services proceed to publication.
For international registrations and subsequent designations designating Singapore, to overcome the ex-officio objections raised by IPOS, the holder need not file an amendment form. A letter, stating the proposed amendments to the goods and / services, will suffice. If the proposed descriptions are acceptable, we will amend the list of goods and / or services at our end.
4. IPOS issues Notification that Trade Mark is Treated as Withdrawn
To reinstate the applications that have been treated as withdrawn, the holder may lodge Form TM40 (with the requisite fee of S$130 / Trade Mark No.) together with a submission in response to the objections raised, within six months from the date of the notice. For international registrations or subsequent designations that have been partially refused, the holder may lodge Form TM40 (with the requisite fee of S$130/Trade Mark No.) together with a submission in response to the objections raised, within six months from the date of the deadline.
IPOS forms, including Form TM1, TM40 and TM49, are available here.
5. Statement of Grant of Protection issued
If there is no opposition lodged or if the outcome of the opposition hearings is in favour of the holder, IPOS issues a Statement of Grant of Protection. Please note that IPOS does not issue a Certificate of Registration for international registrations or subsequent designations designating Singapore.
6. Confirmation of Refusal issued
If the international registrations and subsequent designations are not protected in Singapore, IPOS shall issue a Confirmation of Refusal.
For more information, please click here.