Guide to International Trademark Registration.

To file an international trademark application under the Madrid Protocol, you must first have a national trademark application or registration in your home country (also known as the country of origin).

Your country of origin must be a member of the Madrid Protocol, and it qualifies if you:

• Are a resident or citizen, or

• Have a real and effective industrial or commercial establishment there

This domestic application or registration becomes your basic mark and forms the foundation of your international filing. Without it, you cannot proceed with a Madrid Protocol application.

Here at Hub, we provide international filing via 2 routes being the Madrid Protocol and National Application filing route:

Madrid Protocol

The Madrid Protocol relating to the Madrid Agreement Concerning the International Registration of Marks is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filling a single application, called an “international application”.

This treaty is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva. As a member of the Madrid System, there are benefits on top of it being convenient, easy and cost effective to apply for International Marks in Singapore. Individuals and organizations need only to file one application in one language and protect your mark in the territories of up to 122 countries.

National Application

The National Application filing route covers international trademark filing in countries that are not presently covered under the Madrid Protocol filing route.

1. Identify class of goods/services.

Goods and services are appropriately classified from classes 1 to 45 under the NICE Classification of Goods and Services. If the applicant deals in a wide range of goods or service, it will be necessary to file applications in more than one class.

2. Self search for possible conflict.

It is recommended that you first conduct a search of the existing trademarks in the record maintained by WIPO as the application fees for trademark registration are not refundable.

3. Application filing.

The goods and services listed in the application must conform to the NICE International Classification of Goods and Services.

4. Application checking for completeness and compliance.

If there is any ground for objection, the Registry will notify the applicant about the corrections required along with a specified period of time granted to overcome the objection. A trademark application number and date of application filing will be provided upon the date of filing.

5. Examination for conflicts with existing trademarks.

The registrar conducts a formal search for conflicting marks, geographical names, and conformance to the international classification of goods and services. The trademark registration application will be rejected if there are any objection in the above research. If the applicant wants to pursue it further, the applicant will have to amend the trademark or goods/services claimed for and submit a new application.

6. Examination for conflicts with law.

The application will be examined to determine whether the mark is registrable in accordance with the relevant countries’ Trademark Laws and does not fall into the areas not allowed by the law.

7. Advertisement for public scrutiny.

The application will be published for opposition purposes in the Trade Marks Journal upon completion of examination. Any interested party may oppose the registration of the mark within a period of two months after publication. If the trademarks office receives an objection from an opponent, the applicant must respond with a counter statement to resolve the objection.

8. Successful registration.

If all the objections were resolved in favour of the applicant, the trademark will be registered and a registration certificate will be issued to the applicant.