Registration Management

Requests to be presented to IPOS

The following requests may be presented to IPOS for an international registration designated to Singapore.

Withdraw your international registration designated to Singapore

Form CM9 may be filed with IPOS to withdraw an international registration designated to Singapore, provided that the entire international registration and/or the relevant class(es) are the subject of an objection in the Provisional Refusal of Protection issued by IPOS. Otherwise, the holder should present the relevant form to the International Bureau of WIPO to request the limitation, cancellation or renunciation (as the case may be) of the international registration.

After the withdrawal of an international registration designated to Singapore, the mark and/or class statuses (as the case may be) will be updated as “Withdrawn”. A mark or class that has been withdrawn cannot be requested for continued processing, reinstatement or restoration.

Register, amend or terminate licence

Licences may be recorded against an international registration. However, as Singapore has declared that the recording of licences in the International Register has no effect in Singapore, a holder of an international registration wishing to record a licence of an international registration designating Singapore has to file Form CM6 with IPOS, instead of Form MM13 to the World Intellectual Property Organization (WIPO).

Transform an international registration into a national application

Where the international registration (IR) designating Singapore is cancelled whether for all or some of the goods and/or services at the request of the Office of Origin, the IR holder is given the possibility to obtain protection of his mark in Singapore by transforming it into a national application within 3 months from the date of cancellation of the IR. This procedure may be useful to a holder as the filing date of the IR will be preserved, and the transformed national application will be treated as though it had been filed on the date of the IR or the date of the subsequent designation (SD). The transformed national application will also enjoy the priority which was enjoyed by the IR.

A holder of an IR designating Singapore may file Form MP1 with IPOS to request for a transformation.

For a successful transformation, the following conditions must be fulfilled:

1. Form MP1 is filed within 3 months from the date on which the IR was cancelled.

2. Goods and/or services requested to be transformed must be identical or narrower in scope than the cancelled goods and/or services.

3. The cancellation request is at the request of the holder’s Office of Origin (and not at the request of the holder).

Replacement of National Registrations by Protected International Trade Marks (Singapore)

What is replacement?

Replacement is a feature of the Madrid Protocol that allows holders of international trade mark registrations who have an earlier national registration in designated Contracting Parties, to benefit from the latter’s earlier date of protection and to reduce costs of renewal by consolidating the rights of a national registration and an international registration into a single international registration.

In other words, where the scope of goods and/or services in the earlier national registration in Singapore is deemed replaced by the protected international trade mark (Singapore), the holder would only need to renew the protected international trade mark (Singapore). The protected international trade mark (Singapore) will continue to benefit from the earlier date of the national registration, enabling the holder to save on renewal costs.

Conditions for replacement

1. The mark must be the same for both the earlier national registration and the later international trade mark that has become protected in Singapore;

2. The national registration must be in the name of the same holder of the protected international trade mark (Singapore)

3. The date of the protected international trade mark (Singapore) is later than the date of the national registration; and

4.  At least some of the goods and/or services in the national registration are found in the protected international trade mark (Singapore)

When the conditions for replacement are met, the protected international trade mark (Singapore) is deemed to automatically replace the relevant national registration. However, replacement will only be recorded upon request.

Replacement does not occur for the goods and services claimed in the national registration that are not covered in the protected international trade mark (Singapore). The holder may wish to continue to renew the national registration in respect of these goods and services to retain their protection.

Recording a replacement with IPOS

A replacement is recorded on IPOS’ Trade Marks Register after the holder of the protected international trade mark (Singapore) has lodged Form MP2 and IPOS has approved the same.

IPOS will notify the International Bureau of the World Intellectual Property Organization (WIPO) regarding the replacement thereafter. Once notified, the International Bureau will record the replacement details in the International Register and publish them in the WIPO Gazette of International Marks.

Requests to be presented to WIPO

Apart from the requests to be presented to IPOS listed above, all other requests for recordals in relation to international registrations designating Singapore filed under the Madrid Protocol, should be presented to WIPO.

Please refer to WIPO’s website on How to Manage Your International Registration for the possible IR transactions, as well as the Forms Required for the International Registration of a Mark.