registration is about to take a dramatic turn in Singapore when we accede to the
Madrid Protocol in May this year. M Ravindran explains how this convention will
enable international trademark rights to be obtained with a single application
the years, many lawyers and lay clients have asked me whether it would be
possible to register a trademark around the world with one application. I have
had to inform them that that was not possible and that trademark rights were
territorial and a separate application was needed for each jurisdiction. Such a
system added to the cost, time and effort needed to register worldwide rights
and often local trademark holders would turn away disappointed and seek
registration only in Singapore.
Coming of the Protocol
change. In May this year, Singapore will accede to an international trademark
convention known as the Madrid Protocol; it is expected that the convention will
be operational in August. Despite its name, the Protocol (as it is commonly
known by trademark practitioners) will be administered out of Geneva by the
World Intellectual Property Organisation (WIPO).
the Protocol, it will be possible to obtain trademark rights in all countries
which are members of the Protocol with only one application. As Mr Alan Drewsen,
Executive Director of the International Trademark Association said in a recent
conference in Singapore, the benefit of the Protocol is that you have ‘one
application in one place with one set of documents in one language with one fee
in one currency resulting in one registration with one number and one renewal
date covering more than one country’.
this the trademark owner’s nirvana then? Not quite. At this point in time,
only 44 countries have acceded to the Protocol. The notable omissions, at least
as far as the Singaporean trademark owners are concerned, are the United States
of America, the Asean countries, Australia and New Zealand. This means that we
have to file separate national applications in these countries. However, this
state of affairs is not expected to last for long as it is believed that the
United States will join the Protocol by the end of next year, which would in
effect, make it more attractive for the rest of the ‘non-protocoled’ world
to join. Just to complete the picture, at the moment, the important trading
partners of Singapore that are part of the Protocol are most of Europe,
including the UK, China and Japan.
the Protocol, an international application may only be filed by a person who has
a real and effective industrial or commercial establishment in, is domiciled in,
or is a national of one of the countries which is a party to the Protocol.
Therefore, once Singapore joins, Singaporean nationals or corporations can file
under the Protocol.
order to make an international application, one would have to file or already
have a basic application at the Intellectual Property Office of Singapore (IPOS).
This basic application should correspond with the international application in
respect of the name of the proprietor, the specification of goods or services
and the mark itself. The international application is then filed at IPOS. The
question of the fees payable as well as the procedure of payment has yet to be
worked out but one possibility being bandied about is that there will be a fee
which is in Swiss francs payable to the International Bureau together with an
administrative charge in Singapore dollars payable to IPOS. The fee would depend
on the number of countries designated in the international application. IPOS
then relays the international application to the International Bureau in Geneva.
International Bureau has a very limited role. It merely checks whether all the
formalities are in order and then transmits the application to the registries of
the countries which have been designated in the application. The Bureau does not
decide whether a mark qualifies for registration. This role is performed by the
registries of the various designated countries. Therefore, depending on the laws
of the various countries and the prior rights existing there, the different
countries designated may come to different conclusions as to whether or not to
accord registration rights to a particular mark.
of the Protocol
are three main advantages of an international application through the Protocol.
The first advantage is the elimination of the costs involved and formalities
needed when filing through foreign associates. In fact, one may not need a
foreign associate at all if the registries of the designated countries do not
raise any objections to the registration of the mark. If an objection is raised,
the applicant or his agent in the home country will be informed and only if one
wishes to contest the objection would a trademark practitioner in the country
concerned have to be instructed.
second advantage is that under the terms of the Protocol, registries of the
designated countries in an international application have, generally, 12 months
to respond on whether they intend to object to an application. If no objection
is issued, the mark is deemed registered. This is a great step forward as in
certain countries, it may take several years before a response to an application
is received, which causes a great deal of frustration and dissatisfaction. In
some cases, the time for filing a renewal had come and gone and the mark had yet
to be registered. The 12-month period mentioned above may be extended to 18
months by the individual registries, and for oppositions, that period may be
further extended. Nonetheless, the time limits imposed under the Protocol afford
some degree of certainty over the rights to be granted.
third advantage is that post-registration procedures are considerably
simplified. In this day and age of mergers and acquisitions, assignments and
changes of names are common. Currently, one would have to find out the
formalities needed and information required as well as instruct a local agent to
file the application to assign or change a name in the individual countries. The
costs involved and the effort required can be considerable given that the task
is essentially a simple one. Further, renewal of trademarks under the Protocol
will be a one-act procedure rather than the multi-jurisdictional nightmare that
it is now. Registrations are valid for ten years, after which renewals have to
of the Basic Application under the Protocol
main point of concern in using the Protocol as a strategy for international
filing would be the enhanced significance of the basic application or
registration in the home country. For a period of five years, the international
application is dependent on the basic application or registration. If, for
example, the basic application or registration is refused or revoked during this
period for any reason, this would extinguish the rights granted in the other
designated countries. It is for this reason that the basic application has to be
treated carefully to ensure that it will obtain registration with the least
amount of difficulty. However, in the worst case scenario, it would still be
possible to convert the international application to individual country
applications whilst preserving the original filing date.
law eventually catches up with reality. On the back of goods and services,
trademarks have become instantly recognisable all over the world; this has been
true for many years already. The Madrid Protocol simply acknowledges this fact
and provides a simplified procedure for legitimate interests to be registered
and subsequently protected.