A Singapore registration protects your brand only in Singapore. To protect it in other markets, you either file separately with each country’s trade mark office, or file one international application under the Madrid Protocol through IPOS, based on your Singapore application or registration, and choose the member countries you want. Madrid is usually simpler and cheaper to manage for several markets, but for the first five years the international registration depends on your Singapore mark, and each country still examines the mark under its own law.
Raffles Corporate Services works with a panel of experienced Singapore law firms who offer cost-effective and efficient legal service and advice. This article is general information only and is not legal advice.
This guide is for Singapore companies planning to sell, franchise, license or manufacture overseas. It explains how the Madrid route works from Singapore, what it costs in structure (without guessing at amounts), where it can go wrong, and when filing directly in a country is the better choice.
What are the two ways to protect a trade mark abroad?
| Point of comparison | National filings in each country | Madrid Protocol through IPOS |
|---|---|---|
| Where you file | Each foreign trade mark office, usually through a local agent | One application lodged with IPOS, forwarded to WIPO |
| Language and currency | Local language and currency of each office | One language, with WIPO fees in Swiss francs |
| Need a Singapore mark first? | No | Yes, a Singapore application or registration for the same mark |
| Countries covered | Any country with a trade mark system | Only Madrid Protocol members |
| Dependency on the Singapore mark | None | Five years from the international registration date |
| Renewals and ownership changes | Separate filing in every country | One request to WIPO covering all designated countries |
| Tailoring the mark per market | Full flexibility | Mark and goods must match the Singapore basic mark |
Can your company file through IPOS?
IPOS states that, to file an international application with IPOS as the office of origin, you must have filed a Singapore application for the same trade mark, and you must meet at least one entitlement condition: you are a Singapore national (which covers companies and individuals), you are domiciled in Singapore, or you have a real and effective industrial or commercial establishment in Singapore. A Singapore-incorporated operating company will normally qualify.
The international application must match the Singapore “basic mark” closely:
- the applicant must be the same person as the owner of the basic mark, so a mark registered in a founder’s personal name cannot be used for a company’s international application;
- the mark must be the same, including colour: if the basic mark is in black and white, so must the international mark be;
- the goods and services cannot be wider than those in the basic mark; and
- the Madrid system does not register a series of marks, so a Singapore series registration needs one international application for each mark you want protected abroad.
The ownership point catches many owner-managed businesses. If your brand is held by a founder personally, sort out the ownership first. Our guide on founder-owned trade marks explains the options. If you have not yet filed in Singapore, start with our guide to trade mark registration with IPOS.
How does the Madrid process run from Singapore?
- Choose the countries. Check each target country is a Madrid member on WIPO’s member list, and decide which classes you need there.
- File Form MM2(E) through the IPOS Digital Hub. IPOS charges an administrative fee, which its forms and fees page lists as S$250. WIPO’s fees are paid separately in Swiss francs and depend on whether the mark is in colour, the countries designated and the number of classes. Use WIPO’s fee calculator on the date you plan to file.
- IPOS certifies and forwards the application. IPOS checks that the application matches the basic mark. If it reaches WIPO within two months of IPOS receiving it, the IPOS receipt date becomes the international registration date, from which rights run.
- WIPO examines formalities. If the application is in order, WIPO records it, publishes it in the WIPO Gazette and issues a certificate. IPOS points out that this certificate does not confirm that the mark is registered in the designated countries.
- Each designated office examines the mark. IPOS notes that designated countries examine within 12 or 18 months of receiving the designation, then either grant protection or issue a provisional refusal.
- Respond to any refusal locally. A provisional refusal is answered under that country’s procedure and deadlines, and many offices require a local agent or address for service to do so.
| Cost component | Paid to | Currency | Where to confirm the amount |
|---|---|---|---|
| Administrative (handling) fee for Form MM2(E) | IPOS | SGD | IPOS trade mark forms and fees page |
| Basic fee, and individual or complementary fees for each designated country | WIPO | Swiss francs | WIPO fee calculator |
| Local agent fees for responding to refusals or oppositions | Agent in the designated country | Varies | Quote from the agent |
| Renewal every 10 years | WIPO | Swiss francs | WIPO fee calculator |
Why the first five years matter: dependency and central attack
For five years from the international registration date, the international registration depends on the Singapore basic mark. IPOS’s work manual explains that if, during that period, the Singapore application is refused or withdrawn, the Singapore registration is cancelled, revoked, invalidated or not renewed, or its goods and services are narrowed, IPOS notifies WIPO and the international registration is cancelled to the same extent in every designated country. The same applies where the Singapore mark is lost after the five years because of an action that started within them. This is why a successful challenge to the Singapore mark is often called a “central attack”.
There is a safety net. If the international registration is cancelled at the request of IPOS for this reason, the holder can ask each designated country, within three months of the cancellation, to transform the international registration into a national application. That national application keeps the original international registration date. Transformation is not available if you cancelled the international registration yourself.
In practice, this means the Singapore basic mark should be strong before you rely on it. A mark that is likely to face objections or opposition in Singapore, or that you might not use in Singapore for long periods, can put every foreign designation at risk. Our article on revocation for non-use explains how a registered mark can be lost in Singapore. After five years, the international registration becomes independent of the basic mark.
Adding countries, renewing and transferring later
- Subsequent designations. You can add more Madrid countries to an existing international registration using WIPO Form MM4, which IPOS recommends filing directly with WIPO. Protection in the new country runs from the date of the subsequent designation, but expires with the international registration, so a country added in year nine needs renewing in year ten.
- Renewal. The international registration is renewed every 10 years by paying WIPO’s fees, in one request for all designated countries.
- Change of ownership. A transfer is recorded with WIPO on Form MM5. The new owner must itself be entitled to hold an international registration, through nationality, domicile or a real and effective establishment in a Madrid member. Plan this before an intra-group restructuring or the sale of a business.
When is a national filing the better choice?
- The country is not a Madrid member. Check WIPO’s current member list. Some markets important to Singapore businesses may not be covered.
- You need a different version of the mark. A local-language or transliterated version, for example a Chinese-character brand, is a different mark and needs its own basic mark or a direct filing.
- Your Singapore mark is vulnerable. If you expect objections or opposition in Singapore, filing directly avoids the five-year dependency.
- You only need one or two markets. The savings of a single application are smaller, and a direct filing lets a local agent draft the specification to suit local practice from the start.
Whichever route you use, file early. Many countries, including China, register trade marks on a first-to-file basis, so someone else can register your brand before you arrive. Filing before you exhibit at overseas trade fairs, appoint a distributor or announce a franchise launch reduces that risk. Under the Paris Convention, a priority claim generally lets a later foreign filing rely on your Singapore filing date if made within six months, so starting in Singapore and moving quickly can help.
Example: A Singapore bubble tea chain owns a registered word mark and a colour logo in Singapore and plans franchises in Malaysia, Vietnam and China within two years. It could file one international application for the word mark designating all three, using its Singapore registration as the basic mark. Because its Chinese-character brand name is not registered in Singapore, it might file that version directly in China through a local agent. It would diarise the five-year dependency period, keep using the Singapore marks so they stay safe from non-use attack, and check that franchise agreements license the marks from the actual registered owner. This is a hypothetical illustration only.
Documents and information to prepare:
- Singapore application or registration number and certificate for each basic mark;
- confirmation that the company applying is the registered owner, with ACRA business profile;
- clear image of the mark exactly as filed in Singapore, including colour claims;
- list of target countries with planned launch dates;
- goods and services for each country, no wider than the Singapore specification;
- any priority claim details and dates;
- contact details of local agents in countries where refusals are likely.
Expansion planning usually involves more than trade marks. If you are setting up overseas, our guide to the EDGE grant for overseas expansion explains how market entry projects may be supported.
Frequently asked questions
Do I need a Singapore registration before using the Madrid Protocol?
You need at least a Singapore application for the same mark. It does not have to be registered yet, but if the Singapore application is later refused or narrowed within the five-year period, the international registration is affected to the same extent.
Does the WIPO certificate mean my mark is protected overseas?
No. It records the international registration. Protection in each country depends on that country’s office granting it or not refusing it within its examination period.
Can I add countries later?
Yes, by a subsequent designation on WIPO Form MM4. Protection in the added country expires on the same date as the rest of the international registration.
Can a sole proprietorship file through IPOS?
Entitlement depends on the owner. A Singapore citizen or a person domiciled in Singapore who owns the basic mark can qualify. Make sure the name on the Singapore mark and the international application are identical.
What happens if my company is restructured?
Record any change of ownership with WIPO, and check the new owner is entitled to hold a Madrid registration. Also consider transferring the Singapore basic mark at the same time, because during the dependency period the international registration still stands or falls with it.
Need help organising your trade marks before expanding overseas?
If your company is planning to take its brand abroad, contact the Raffles Corporate Services team at [email protected] or on WhatsApp at +65 8501 7133. We can check that the right company owns the brand, prepare board resolutions and assignment paperwork, keep your IP and renewal dates on your compliance calendar, and refer you to the trade mark agents and law firms we work with for searches, filings and responses to overseas refusals.
The Raffles Corporate Services Editorial Team, Raffles Corporate Services