Like patents, a registered trademark can only be granted protection in the country where they are registered in. In short, if your trademark is registered in Singapore, it is not a guarantee that a similar trademark may be registered in another country.
Several famous brand names have had this problem in other countries. For example, Burger King was not registered in Australia and had to compete with another similar brand. Dunkin’ Donuts in Spain was forced to use a different name because “donuts” was already registered.
If that is the case, how can protection be granted in other countries besides the country of origin? The solution is the Madrid System that offers a convenient solution to register trademarks worldwide with only a single application and set of fees.
What is Madrid Protocol?
The Madrid Protocol refers to the Madrid Agreement Concerning the International Registration of Marks which was adopted by 120 countries on June 27, 1989. It is governed by two treaties such as the Agreement which existed since 1891 and the Protocol which became effective on April 1, 1996. Singapore acceded on July 31, 2000 to the Protocol and it became operational in the country on October 31 of the same year. The Madrid Agreement was revised and amended seven times since its conclusion in 1891, while the Protocol was put in place to make the Madrid System compatible with the domestic legislation of several countries.
The Madrid Protocol will allow trademark owners to obtain international registration by filing a single international application with one set of fees. There is no longer a need to file separately for each country individually. All the states in the Madrid System are called contracting parties.
It is administered by the International Bureau of the World Intellectual Property Organization (IB-WIPO). All applicants can submit and process their application through the Intellectual Property Office of Singapore (IPOS).
Benefits of International Trademark Registration
The foremost benefit of an international trademark registration process is the simpler process and paying of fees. There is also one office that is in charge of the process from notifications to renewals and everything in between. The applicant can also use one language and can pay in a single currency to avoid delays and confusion. Renewal also is done with a single language and single currency.
Business owners who are operating outside Singapore or is planning to expand abroad should consider international trademark registration. It will prevent others from copying logos, words, images, mottoes, sounds, and other devices that is used to identify your business, services and/or goods from the competitors. Trademark owners in Singapore will enjoy the same rights, protection, and benefits from intellectual property and civil laws in designated countries such as the following: exclusive use of the mark in respect to the goods and/or services it covers; remedies for unauthorized use of the trademark; use of the trademark as security or hypothecation similar to property; creation of a trademark as an intangible property; licensing of trademarks; assignment or transfer of trademarks; trademark registration as a deterrent to unauthorized use; and the right to use the registered or ® symbol.
Pre-requisites of International Trademark Registration
The application is presented to IB through IPOS. The applicant must meet the following criteria before filing: must be a citizen in Singapore and has a business in Singapore or must be domiciled in Singapore and has a real and effective commercial or industrial establishment in the country.
A trademark owner may file an international registration if that person or party who has a connection with a contracting party to the Agreement or Protocol. It means that a trademark should be registered first nationally before it can apply for international registration. For example, if you own a local brand in Singapore, its trademark must be registered first in Singapore or its country of origin.
Moreover, the international registration must designate one or more countries that are part of the contracting parties, or countries that have adopted the Madrid Protocol. The designation is based depending on which treaty is common with the contracting parties.
Are trademark laws valid on an international level?
Registering a trademark in one country will give it protection only in that specific territory, hence the need for an international registration. To enjoy the same protection and benefits of a domestic trademark, you need to own identical trademarks in different countries. With the Madrid Protocol, however, you can file for several countries at once.
The effect of the international registration will be on the date of the registration, unless there is a refusal and the date is changed. An international registration is effective for 10 years and may be renewed by the owner. Protection, however, may be limited to certain goods and/or services depending on some of the contracting parties.
Do you have to buy trademark in all countries?
If you have already registered your trademark in Singapore where you operate your business, there is no need to file for an international application. However, if you wish to operate outside Singapore, you must go through the international application so your trademark can be protected. For example, if your business involves selling goods online, it is possible that you will have customers outside Singapore who may want to purchase your products. If you ship products internationally, it is a good investment to apply for trademark protection in several countries where you distribute your goods. You should also apply for trademark registration in countries where you manufacture your goods and where you plan to license or expand your business in the future.
To avoid having to file individually for each country, you can simplify the process through the Madrid Protocol. If you wish to extend protection to other contracting parties, all you need to do is designate in the same registration process. You can add more designations easily once your initial international registration is successful.
How to get an international copyright or trademark?
All international applications must be submitted to IPOS, the office in charge of handling the trademark applications. IPOS will then hand the application to WIPO once the requirements are met.
If the prerequisites for international application is satisfied, WIPO performs a formalities check to determine if the trademark can be registered. The trademark is then translated into three languages (Spanish, English, and French). The details of the registration are published in the Gazette of International Marks. Next, IB will notify the trademark offices of the contracting parties listed in the application. The trademark offices will then examine the trademark according to their respective national systems. The contracting parties are responsible for informing WIPO whether the trademark can be registered in their country or not. If there are provisional refusals, they will be published in the Gazette and the applicants will be notified. Examinations under the domestic law can take 12 to 18 months.
Is there a website for global registering of trademark online?
For trademark owners who want to apply for international registration, the application form must be obtained from the WIPO website in this address: https://www.wipo.int/madrid/en/forms/ The site details the forms required for the international trademark registration. MM2 is required for applications exclusively under the Madrid Protocol. It is accompanied by CS8 or continuation sheet 8 for address for service in Singapore. The MM2 and CS8 forms can be downloaded through the WIPO website. There are also other forms in the website, but for most applications only the MM2 is required.
The MM2 forms must be in typescript, not handwritten, and then submitted either through IPOS as printed form or electronically through this site.
If the applicant wants to designate USA, an additional form called MM18 or declaration of intent to use trademark is required. On the other hand, if European Union is designated, a second language must be chosen in case there is a need for hearings. The four languages to choose from are Spanish, German, French, and Italian.
What is the filing period under Madrid protocol?
IPOS is responsible for the certifying process of the international applications as well as the other processes. If the application certification is forwarded to the IB within two months, the date registered on the application by IPOS will be the date for the international application. If the certification is not submitted within two months, the date will be when the IB will receive the application.
If there are any deficiencies, a later filing date may be considered. But the priority claim might be lost if the filing date is six months after the designated priority date. Deficiencies in the MM2 form can cause delays, but the applicant must be able to fulfill the requirements within the specified time so they will not lose the priority claim.
What is the total cost for filing a Trademark in WIPO?
IPOS will charge a handling fee per MM2 form that is submitted by the applicant. Moreover, if the MM2 form is submitted in printed form, there will be an additional charge to digitize the submitted form.
The additional fees required for an international trademark registration are the following: basic fee; complementary fee for designated countries that do not need individual fees or complementary fee for countries that require the fee; supplementary fee for the class of goods and/or services. The basic fee will depend whether the logo or trademark is colored or black and white.
Each applicant will have different charges depending on the designated countries and number and class of goods and/or services. If you have any difficulties with the computation, you can use the international registration of marks fee calculation on the WIPO website in this address: https://www.wipo.int/madrid/en/fees/calculator.jsp
The fees are paid in Swiss francs which can be paid via band transfer, postal transfer, and deduction from a WIPO account. If there are irregularity letters and other fees, there is an E-payment system via credit card or WIPO account.