• International Trademark

How to file your international trademark application?


The primary requirement for an international trademark application under the Madrid Protocol is to register first in the country or territory of the origin of operations. This means that if your main office is in Singapore, you need to get the Certificate of Registration first before you can apply international. The Intellectual Property Office of Singapore (IPOS) website provides a list of the countries you can apply to for trademark protection via Madrid Protocol. The Registry will provide you with a list of the details regarding the application if you are filing for a right of priority in another country.

Foreign companies that want to protect their trademark in Singapore will also need to register in their country of origin before they can apply for protection here.

To better understand the process of international trademark application, the two sections below discuss designating Singapore and Singapore as office of origin.


International Registration or Designating Singapore

Any holder of a trademark whose country of origin is among the Protocol members can use their trademark to apply for an international registration designating Singapore. This simply means you can apply to have your trademark protected under the intellectual property and civil laws of Singapore just like any local trademark.

The same steps in the national application are observed for international registration. The applications are filed directly under IPOS. The Registrar will notify International Bureau of World Intellectual Property Organization (IB) in case the application is refused, but this is known as a provisional refusal to allow the proprietor to respond within 18 months. Total refusal rejects the application and all its related goods and/or services. There is also a possibility of receiving a provisional refusal based on opposition in case there is a filing of notice of opposition from another party.

Most of the problems with international applications are the result of misclassification of goods and/or services and vague/incorrect/linguistically incorrect indication of goods and/or services.

The process usually takes about nine months after the receipt of the application from IB. IPOS will then examine the trademark if it is acceptable for registration, then publish it in the Trade Marks Journal. If there are no issues with the application, the proprietor will be granted the Statement of Grant of Protection and will enjoy the same benefits as the national trademarks.


International Application with Singapore as Office of Origin

If you are planning to apply for registration in more than one country, you will need separate applications unless you apply via Madrid Protocol. Under the Protocol, you will only need a single application for several countries.

You should also fulfill the following requirements first:

  • The trademark is registered in Singapore
  • The countries you want to apply to are members of the Protocol
  • You are a citizen or a corporate organized under the laws of the country or you have a home in the country, or you have a real and operating commercial of industrial establishment in Singapore

You will then need to submit the documents at IPOS as well as pay the WIPO fees. The fees are based on the color of the trademark, parties designated, and the number of the classes of goods and/services listed. If there are no corrections, IPOS will submit the application to WIPO. You will be notified and then given a deadline if there are missing requirements.

Next, the trademark is published in the WIPO Gazette and then recorded in the International Register. You should also receive your international registration number for reference. If there are oppositions, you will be notified by IB. If there are no problems, IB will then send your application to the intellectual property offices of the designated countries. The trademark will undergo the examination that is also done nationally before you can receive the trademark protection.

Please note that if you designate USA, you will need to lodge the form MM18, while if European Union (EU) is designated, you need to indicate a secondary working language in case there is opposition or a cancellation. EU also has a policy of seniority claim where one registration gives the same protection in all its member states.