Trade mark protection is territorial in nature. A separate registration will have to be made in each of the countries where trade mark protection is desired. To obtain protection outside Singapore, it is necessary to file applications in the countries concerned either individually or via the Madrid Protocol.
The
Madrid Protocol provides for a system of international registration of marks. This process produces the same effect as if an application for the registration of the trade mark has been made in each country designated by the applicant. The Madrid Protocol allows a trade mark owner to seek protection for his trade mark in several countries simultaneously by filing one application with a single office, in one language, and with one set of fees in one currency (Swiss francs).
The Madrid Protocol is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
Under the Madrid Protocol, a trade mark must first be registered or applied for in the country of origin before filing for an international application. A country of origin is a country that is a party to the Madrid Protocol where the applicant is a resident or national of, or has a real and effective industrial or commercial establishment.
The Madrid Protocol is open to its members only. An international application must be initiated in a member country seeking trade mark protection in other member country/countries. To apply, an applicant submits a single application to the trade mark office in his home country or the International Bureau of WIPO in Geneva. In his application, he can designate the country or countries in which he wishes to seek protection for his trade mark.
An international registration 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.
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.
>> Singapore is a contracting country under the Madrid Protocol. An international application may be filed with IPOS in Singapore. Singapore may also be designated as a country for trade mark protection in an international application filed through a country that is member of the Madrid Protocol.
- The applicant enjoys the convenience of filing only one application, in one language, and pays one fee to one office, instead of filing separate applications in the trade mark offices of the various contracting parties in different languages, and paying a separate fee to each trade mark office.
- The applicant does not have to wait for a positive response from the office of each contracting party in which protection is sought. If no refusal is notified by the trade mark office in a designated country within the applicable time limit, the mark is protected in the contracting party concerned.
- Should the applicant need to make subsequent changes to his registration, such as a change in the name or address of the owner, a change in ownership or a limitation of the list of goods and services, he can easily effect the change through a simple single step and the payment of a single fee.
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As Singapore is a contracting country under the Madrid Protocol, an international application may be filed with IPOS in Singapore. For the list of members of the Madrid Protocol, please refer to the WIPO website. Before making an international application:
- the applicant must have an application or a registration in Singapore on which to base his International application (“Singapore mark”);
- the goods or services in the applicant's international application must be covered by his Singapore mark; and
- the applicant must be a resident or national of, or have a real and effective industrial or commercial establishment in Singapore.
All forms pertaining to the international registration of a trade mark are available at the WIPO website and the fees for such forms should be made out to WIPO. Some of the WIPO official forms are:
| Application for international registration |
MM2(E) |
| Designation subsequent to the international registration |
MM4(E) |
| Request for the recordal of a change in ownership |
MM5(E) |
| Request for the recordal of a limitation to the list of goods and services |
MM6(E) |
| Request for the recordal of a renunciation |
MM7(E) |
| Request for the recordal of a cancellation of the international registration |
MM8(E) |
| Request for the recordal of a change in name and/or address of the holder |
MM9(E) |
| Request for the recordal of a change in name and/or address of the representative |
MM10(E) |
All forms pertaining to the international registration of a trade mark are available at the WIPO website and the fees for such forms should be made out to WIPO.
Madrid Protocol payment form (182KB)
Guidelines on completing Form MM2(E) (401KB)
These forms (Forms MP1, MP2 and MP3) are available at the Registry of Trade Marks and downloadable here, and the relevant fees are payable to IPOS.
All applications, forms and communications submitted via the Registry of Trade Marks at IPOS must be in English.
International applications designating Singapore under the Madrid Protocol are treated in the same manner as Singapore national applications, and are 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". Unlike Singapore national applications, they are published according to the international registration number instead of the class of goods or services.
>> The latest Trade Marks Journal may be downloaded from eTrademarks