How Singapore companies can apply for international trade mark registrations internationally via the Madrid Protocol – and why.
A trade mark is a property right that is obtained through registration under the Trade Marks Act (“TMA”) in Singapore. Registration of a trade mark confers onto the proprietor rights and remedies provided by the TMA. Some examples of a trade mark are “signs” which include the famous McDonald’s “Golden Arches”, Nike’s slogan “Just Do It”; and even the word “SUBMARINER” for one of Rolex’s famous watches. If you don’t already have a trade mark for your brand, here are 3 reasons why you should register your sign or logo today.
A key feature of trade marks is that they are territorial/jurisdictional in nature. If a trade mark is registered in Singapore, it only enjoys protection locally (unless also registered in other countries). In other words, having a registered trade mark in Singapore would not automatically grant it the same protections in, say, China. This is clearly illustrated in the unfortunate story of Mr Wang Lei’s “Fish Selling Bro” logo which serves as a cautionary reminder.
Mr Wang Lei is in the business of live streaming on Facebook to sell, among other things, seafood. His success landed him lucrative endorsement deals and he sought to expand his business overseas, in particular China. However, when Mr Wang eventually got around to registering his trade mark in China, he was shocked to find that his trade mark registration failed because the logo that he designed had already been registered by someone else. He was then forced to recall the goods he had shipped to China or risk them being confiscated as counterfeits. This shows the importance of having a strong business plan which leverages IP to expand beyond the confines of the Singapore borders. Click here if you want to find out more about Mr Wang Lei’s story.
How do I Protect My Brand Overseas?
For your sign, brand or logo to be protected as a trade mark in a particular jurisdiction, it needs to be registered first. This can be done in one of the following ways:
A direct national application (“DA”) to register a trade mark in a particular country; or
An international application (“IA”) made under the Madrid Protocol, which is administered by the World Intellectual Property Organisation (“WIPO”).
What is the difference between a direct national application and an international application?
Direct National Applications (“DAs”)
A DA entails filing a trade mark application directly in the country you wish to have your trade mark protected. To make a DA, you may instruct us as a single point of contact and we will in turn instruct our local counsel to have the trade mark(s) filed for you. This process requires two (2) sets of legal costs to be incurred, and is therefore more costly than designating the country through an IA, where only one (1) set of legal costs are involved.
That said, a DA does have its advantages – sometimes.
For example, unlike an IA (which we will cover below), a DA need not be based on a trade mark registration in your home country (commonly known as the basic mark). This means that you can file a DA in a foreign country without first having a Singaporean trade mark application. This option arises sometimes when the mark that you file overseas is different from what you’re filing in Singapore (e.g. Chinese words as a trade mark in Chinese-speaking countries).
The most common reason to file DAs instead of IAs is that simply not all countries are signatories to the Madrid Protocol (the international treaty which makes international applications possible). If a country is not a signatory, then a DA is the only possible avenue for trade mark registration in that jurisdiction. Jurisdictions that are commonly filed, that are not on the Madrid Protocol, include Hong Kong, Taiwan, Myanmar and a number of Middle Eastern countries.
Another reason why DAs are used is that there are insufficient overseas countries in the scope for the IA to achieve sufficient economies of scale. For example, if your company wishes only to file in one (1) overseas jurisdiction (e.g. in Malaysia), then it would probably be cheaper to file directly via a DA than to incur the set-up costs of an IA. The break-even point is typically 2 to 3 countries. Where there are more than 2 to 3 overseas jurisdictions to file in, then an IA is usually the way to go – from a cost perspective.
The above is not an exhaustive list of all the trade mark filing strategies there are – the most appropriate strategy would depend on the unique circumstances of your case.
International applications (“IAs”)
Briefly, the Madrid Protocol is a treaty that provides for the international application and registration of trade marks. Singapore acceded to the Protocol on 31 July 2000 and the Madrid Protocol came into operation in Singapore on 31 October 2000. Some other jurisdictions that are part of the Madrid Protocol, that Singapore typically trades with, include Malaysia, Indonesia, Thailand, Vietnam, Philippines, China, Japan, the Koreas (both South and North), India, the United States of America, Canada, Australia, New Zealand, the European Union, Switzerland, United Kingdom and Norway.
Unlike a DA, an IA under the Madrid Protocol allows a trade mark owner to obtain an international registration in multiple countries with the filing of only a single application, in one language, with one set of fees. This is contingent on the selected countries being party to the Madrid Protocol. This one-stop-shop style application facilitates a more expedient way of filing and managing a trade mark owner’s portfolio as registration is done centrally through WIPO.
Aside from being more convenient, an IA can also save a lot of money. If you wish to register your trade mark in, say, 5 to 10 countries, doing it via an IA could be up to 50% cheaper than proceeding with a DA. The simple reason for this is that you would only need to engage your primary trade mark counsel in Singapore (preferably us) to help you handle the entire application. Also, it obviates the need for a lot of translation and notarisation costs, which, depending on the country that you wish to file in, can add up.
Further, an IA allows the trade mark owner to make changes to the registration and to renew the registration across all applicable jurisdictions through a single, consolidated, administrative process. This helps future-proof the management of your trade mark portfolio if, for example, at a later stage, you wish to sell your trade mark portfolio, or simply transfer it to another entity, change your registered address, and even renew your trade mark after 10 years.
How do I apply for an international application?
We help clients to file their IAs through the Intellectual Property Office of Singapore (“IPOS”). You have a trade mark lawyer on record, you do not need to worry about all the idiosyncrasies of trade mark practice as this is deep knowledge that we already have, and maintain, to provide this service to our local clients.
That being said, there are 2 main requirements that you (the applicant) must satisfy before such an application may be granted.
First, the applicant (could be a person or a business) must have a connecting nexus to Singapore. This could mean one of the following:
The applicant or applicants must be:
a citizen of Singapore;
have a business in Singapore;
be domiciled in Singapore; or
have a real and effective industrial or commercial establishment in Singapore.
Second, the applicant must have an existing trade mark application or a registration in Singapore (the “basic mark”) for the mark that is sought to be protected in the international application.
In addition to the abovementioned requirements:
the name of the proprietor of the international application must be the same as the proprietor that filed the basic mark;
the mark that is being applied for in the international application must be identical to the basic mark (unless the basic mark is a series mark, then you must choose one representation – another reason why sometimes clients choose to go with Das); and
the list of goods/services for the international application must be the same or narrower than that of the basic mark.
Are there limitations to applying through the Madrid Protocol?
An international registration is, as with all good things, subject to some limitations.
Many clients come to us with their concerns about “central attack”. To be honest, unless special circumstances are present, this is not something to be overly worried about.
For the first 5 years following the date of the IA, the IA is dependent on the basic mark. What this means is that if the basic mark ceases to have effect or no longer remains valid, so will the international registration – a process colloquially known as the “central attack”. Trade marks applied for via DAs do not have this same vulnerability.
That being said, even if a basic mark is successfully centrally attacked, the IA can be “transformed” (under Article 9quinquies of the Protocol) to DAs – at a cost, of course. The cost of “transformation” is not much more than the marginal cost of filing DAs instead of IAs, so in a way, one could argue that there is “no loss” to filing IAs first from this cost perspective.
After 5 years, an international registration is independent of the basic mark and is thereafter no longer vulnerable to “central attack”.
Are there any subsidies or grants to apply for an international application?
For a limited period only, Enterprise Singapore is providing up to 50% support for local companies to apply for international IP and this support extends not just to the official fees that need to be paid to the government agencies, but also to our professional fees for advising you, and handling the applications. This is the Market Readiness Assistance (MRA) Grant.
The MRA grant covers both IAs and DAs. We have assisted our clients in making over 500 international trade marks in 69 unique countries, through over 120 grant applications, saving our clients more than SGD 2 million in costs – in just the last 2 years alone.
Conclusion
Any Singaporean company that wants to make it big in the new economy must look to the global stage.
Homegrown brands like Secretlab, Hegen and Razer spring to mind when we think of local businesses that were able to commercialise their products globally had done so with the support of strong and appropriate IP protection.
“If you represent a Startup or SME that intends to sell your made-in-Singapore products or services internationally, I highly recommend that you talk to them first”
50% Support from EnterpriseSG for your Intellectual Property
If you are a business owner that has plans to sell your products in an overseas market, book us for a complimentary consultation, and get a quotation from us for your IP needs.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of That.Legal LLC accepts or assumes responsibility, or has any liability, to any person in respect of this article.