Understanding the Madrid System for Trademark Registration
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Understanding the Madrid System for Trademark Registration
One important step to protect your brand in Singapore is by applying for a trademark registration at the Intellectual Property Office of Singapore (IPOS), the Government agency that handles all issues regarding intellectual property rights in the country. A trademark can be protected from copycats and impostors that might try to take advantage of the success of your brand and confuse the consumers with a similar brand or logo. Once the application to register trademark has been approved, the protection is only extended, however, in the territory it was registered in.
Is there a way for companies in Singapore to protect their registered mark outside the country? And can companies outside Singapore apply for trademark registration in the country?
Fortunately, Singapore is a signatory to various treaties and agreements on intellectual property rights, including the Madrid System.
What is the Madrid System?
Simply put, the Madrid System is a centralized trademark registration system that will facilitate an easier filing of trademark owners from different member countries to register TM in several jurisdictions. Because a registered mark is territorial in nature, it would be inconvenient for companies to submit applications individually in several territories.
The Madrid System is composed of two treaties that were concluded in 1891 and 1892; such as the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement.
With the Madrid System, an applicant will only have to pay a single fee for a single application using three common languages, but the examination process still follows the procedure in each territory. Companies outside the country seeking to protect service mark by registering now in Singapore can make use of the Madrid system for filing. In Singapore, all trademark registration applications, including those that wish to take advantage of the Madrid System, are handled by the IPOS.
How Do I Use the Madrid System?
You can only apply for international trademark registration once it is a registered mark in its country of origin. For companies outside Singapore, their application for trademark protection in their respective countries should already have been approved; while for companies in Singapore, the IPOS must have already granted your trademark registration certificate before you can apply internationally. The basic registration will serve as a basis for the international application.
The applicant also must make sure that the company is also operating in the country or he/she is a resident in the country. International trademark applications will go through the same basic application process as the local registration and are published in both the Trade Marks Journal and the International Registrations filed under the Madrid Protocol.
What is its Trademark Registration Process?
Once you have registered your trademark domestically, the application and other requirements must be submitted to the office of origin to certify the application before it is submitted to the World Intellectual Property Organization (WIPO).
The application form is available in three languages and can be submitted electronically to the local office. For residents of Singapore, the application is sent to IPOS. Next, you need to list the goods and/or services and classify them according to the International Classification of Goods and Services. You might have already done this with the domestic trademark registration, so this should be easy.
After this, pay the basic fee and complementary fees for each designated territory, and the fees for each class of products and/or services.
Once the IPOS or the equivalent local office has forwarded your application, you can monitor its status through WIPO. You will be notified of any changes, objections, or other issues in your application and given sufficient time to address such.
What are the Benefits of the Madrid System?
The Madrid System is an easy solution for companies to obtain protection in several markets. Applicants need only a single application in one of the three languages and pay one set of fees to register trademark. Not only is it a time-saving option, but it’s also cost-effective because a single application will not need individual representatives for each country or file translated versions of the requirements. This also means that the portfolio can be managed singly with a centralized system, so that it’s easier to expand the protection in any of the 116 countries worldwide. There is no need to worry about how many countries are members of the system, because it includes up to 80% of the world’s markets.
What are its Advantages?
Trademark owners in their respective countries can easily obtain an international trademark registration in a simplified and centralized process called designation. This means that if a company outside Singapore wishes to register TM in the country, all they must do is to designate Singapore as a new jurisdiction. The inspection, examination, and objection processes are still the same in each respective member country, but the trademark owner can choose to file a single application for one or more territories at the same time by paying only a single set of fees.
If there are changes to the details of the application after the trademark registration has been approved, a single, centralized process for an update is all that is needed across all the jurisdictions the owner has applied to.
What are its Disadvantages?
One thing that registered mark owners should be aware of before filing is that the Madrid System might refuse, cancel or withdraw your application if the basic application is canceled or withdrawn within five years of the date of registration. If your company for example, has registered for several applications, a cancelation of one in your local registrations will also cancel its equivalent international registration. Furthermore, if your entire basic application is rejected, then all international applications are also rejected.
Applicants, however, can use the transformation option to avoid such incidents called the central attack, but it will cost more than the regular process. The transformation application will indicate that the registration date is the date for the international registration instead of the basic registration date.
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