I Am Expanding To Singapore and Want to Register My Trade Mark. How Do I Do This?

George Raptis

• 14 February 2023
• 17 February 2023
• 5 min read

Expanding your business into Singapore can be both a stressful and exciting venture. Indeed, protecting your intellectual property is one of the many considerations you will have to make when undergoing the expansion. If you registered a business trade mark in Australia, your trade mark protection does not extend to overseas territories. For this reason, you will have to register your trademark with the Intellectual Property Office of Singapore (IPOS) or use a Madrid Protocol application. This article explains both processes of registration and where one process might be more beneficial than the other.

Registering A Trade Mark With IPOS

The process of registering a trade mark with the IPOS is similar to registering a trade mark with IP Australia.

Check Registration Criteria

Before you apply with IPOS, there are a few criteria your trade mark must meet. Namely, your trade mark must be:

• capable of graphic representation (written or printed);
• capable of distinguishing your business’s goods or services from other traders;
• not merely descriptive of your goods and services (for example, describing your services as ‘quick’ and ‘cheap’);
• not something customary in a language or established practice of trade (for example, the word “escalator” is a well-accepted term business use to describe power-driven staircases); and
• not identical or confusingly similar to an existing trade mark.

To ensure you meet these criteria, you should:

• conduct a Similar Mark Search to ensure that there are no identical or similar existing marks on Singapore’s Register;
• classify your trade mark correctly according to the Nice Classification; and
• consider getting legal advice to help determine whether your trade mark is registrable.

File Your Application

Once you have satisfied the pre-filing criteria, you can submit an application form called TM4. In the application, you must include:

• your name and address;
• a graphical representation of your trade mark such as a picture;
• the class of products or services you wish your trade mark to protect;
• a declaration that explains how you will use your trade mark.

A TM4 application with a class or classes found in the pre-approved database will cost S$240 per number of classes.

Once you file your application and pay the relevant fee, it may take about 12 months for IPOS to review your application. If IPOS accept your application, your trademark will be listed in the Trade Marks Journal. However, if IPOS rejects your application because of a deficiency, IPOS will provide a report with more details. If rejected, you have a period of four months to correct your application.

As in Australia, your application is susceptible to opposition. If a person or business opposes your application, you will receive a copy of the notice of opposition. Consequently, IPOS will suspend their review process pending the outcome of the opposition proceeding.

Registering A Trade Mark via the Madrid Protocol

If you only want trade mark protection in Singapore, it is more cost-effective to file a direct application with IPOS. However, if you want to register your trade mark in at least three different countries, consider filing a Madrid Protocol application. When applying, you must designate the countries where you want trade mark protection, with fees applying on a per-country basis.

The Madrid system allows you to use a single application to register your trade mark in multiple countries. However, these countries are limited to Madrid Protocol Member Countries. Luckily, Singapore became a member on October 31, 2000.

Process of International Registration

The process follows these steps:

1. File a trade mark application with IP Australia (your ‘basic’ application).
2. File your international application for your trade mark through IP Australia (your likely Office or Origin) and designate the countries where you seek trade mark protection.
3. The World Intellectual Property Organisation (WIPO) will review your application. You will receive an international registration number if your application satisfies WIPO’s formality check.
4. WIPO will pass your application to your designated countries’ offices, including IPOS for Singapore. Each of these offices will then assess your trade mark application under their respective laws and issue a certificate of registration if your trade mark complies with its national law.

Benefits of Each Process

Whether you apply for trade mark registration directly with IPOS or via the Madrid Protocol will depend on your business’ circumstances. For example, if you only seek trade mark protection in Singapore, it is more cost-effective to file a direct application with IPOS. However, if you want to register your trade mark in at least three different countries, consider filing a Madrid Protocol application.

However, the Madrid Protocol does have some draw-backs such as:

• your international application is constrained to the same trade mark and goods and services as your ‘basic’ application;
• you must be a citizen, resident of, or have a company registered in the originating jurisdiction; and
• the cost of engaging local practitioners to resolve any issues with the application in any of the designated countries can undermine the cost savings obtained by using the Madrid system.

Key Takeaways

If your business is expanding into Singapore, you can apply for a trade mark by filing a:

• direct trade mark application with the Intellectual Property Office of Singapore (IPOS); or
• Madrid Protocol application. 

If you only seek trade mark protection in Singapore, it is likely more cost-effective to file a direct application with IPOS. However, if you want to register your trade mark in at least three different countries, consider filing a Madrid Protocol application. 

To find out more about international trade mark registration, our experienced trade mark lawyers would be happy to assist. Call us on 1300 657 423 or complete the form on this page. 

Frequently Asked Questions