How Can Singaporean Companies Register for a Trademark Abroad?
You’ve just built a promising brand in Singapore and now eye growth into Malaysia, Indonesia, perhaps Europe or the U.S. You wonder: how do I protect my brand overseas? Well, if you’ve already registered with the trademark registry in Singapore, you have options. In this article, we guide you through the process of registering a trademark abroad for a Singapore-based company. We also discuss the ‘strategic traps’ you might miss.
Trademark Protection Abroad: What It Depends On
Before filing overseas, you need to understand the factors that influence international trademark protection. These determine how easy, how risky, and how expensive things will get.
Jurisdictions & Treaty Memberships
Not all countries work the same way. Some are part of the Madrid Protocol (Madrid System); others are not. The Madrid System lets you file one international application to seek protection in many member countries.
Direct Route
If a country is not a Madrid member, you’ll have to file a “direct route” (i.e. local national application). That’s more paperwork, more local counsel, more cost.
Your “Basic Mark” & Dependency
To use the Madrid route, you typically need to have either:
- A registered trademark in Singapore (your “basic” mark), or
- At least a pending application in Singapore.
Your international registration depends on that basic mark for a specific period (usually 5 years). If your Singapore mark is cancelled or revoked within that dependency period, it could “knock out” your international registration (a concept known as central attack).
Because of that risk, you should ensure your Singapore application is robust (i.e., fewer vulnerabilities to opposition, proper classification, strong distinctiveness).
What You Want Protected (Classes, Goods & Services)
Your trademark is only valid for certain classes of goods and services. If you expand into new product lines later, you may need to designate additional classes in each jurisdiction (if allowed or needed). So, it’ll help if you choose wisely upfront.
Also, consider local usage requirements. Some jurisdictions require proof of usage within specific time periods, while others are more liberal.
Costs, Renewal & Administrative Maintenance
Even when you file via Madrid, you must pay both the base fee (to WIPO) and designation fees for each country in which you want protection.
Once registered, you’ll need to renew every 10 years in most countries. Some may also require “use declarations” or face challenges of non-use revocation.
Additionally, in some countries, after you register, rival parties might file oppositions or attacks. In such cases, local counsel and monitoring become crucial.
The Exact Process of Applying for an International Trademark from Singapore
Here’s how the procedure typically goes, especially via Madrid. We’ll also note what changes if you go the direct route.
Prepare / File Your Singapore (Basic) Application
If you haven’t already, you must file (or have filed) your trademark in Singapore with the Intellectual Property Office of Singapore (IPOS). That local filing becomes your base.
Make sure the mark is carefully drafted (distinctiveness, avoid overly descriptive elements). Conduct a thorough search to find prior similar marks in Singapore and in key markets you plan to enter.
File an International Application via Singapore (MM2 Form)
Once your base application or registration is in place, you file an international application (Form MM2) via IPOS’s digital hub.
You’ll pay a local “processing fee” (e.g., SGD 250) plus the WIPO base and designation fees for each country you select. When you fill out Form MM2, it calculates the fees for each country you’ve designated. The international application is sent to WIPO’s International Bureau, and IPOS certifies it as your Office of Origin.
WIPO Examination & Transmission to Designated Offices
WIPO checks formalities (completeness, fees, etc.). If okay, it publishes the mark and forwards it to each designated country’s trademark office for substantive examination.
Each jurisdiction evaluates whether the mark meets its local criteria (distinctiveness, conflicts, public policy). Some may raise objections or opposition. You’ll need local counsel to respond when required.
Local Registration & Effect
If the designated country approves your application, it grants registration. At that moment, the international registration is effective in that country as if it were filed directly. If a country refuses or opposes, only that specific designation is affected—not your entire international application (unless a “central attack” is triggered by invalidation of the basic mark).
Maintenance, Renewal & Portfolio Management
You must renew your international registration (and local designations) over time. Most countries operate with 10-year cycles. If you need to change your name, address, owner, or classification, or expand to additional jurisdictions, you can submit administrative requests via WIPO.
Suppose your basic mark is cancelled within the first 5 years. In that case, you’ll need to “transform” the international registration into national applications in each designated country within 3 months (to preserve rights)—that’s the defence against a central attack.
Some Essential Tips Regarding Registering International Trademarks from Singapore
Here are strategic insights from a trademark registration service on how to manage trademarks when expanding globally.
Choose Your Jurisdictions Wisely, Not Everything Everywhere
Just because you can designate 100 countries doesn’t mean you should. Each designation adds risk, cost, and administrative burden (responding to local office actions, oppositions, translations). Optimise: start with your key markets (customers, manufacturing, trade corridors), then expand via subsequent designations.
Use Staged Expansion or “Madrid + Local” Strategies
In markets where you anticipate intense competition or operate in sensitive industries, consider filing a local national application first, followed by a Madrid designation later. This gives you more control and flexibility for significant markets.
Watch the Dependency Period Danger Window
Be cautious during the first 5 years. If your base mark in Singapore is attacked or invalidated, it takes down your entire international registration (central attack). To counter this, some companies file parallel national applications in key countries so that the transformation is smoother.
Use Local Counsel with Deep Expertise Early
When designations raise office objections (distinctiveness, descriptiveness, similarity to prior marks), you’ll need to engage experienced local IP counsel. Waiting until trouble arises is risky.
Monitor Use & Be Ready for Non-Use Challenges
Some countries cancel registrations if not used within a specific period (often 3–5 years). Keep evidence of use (invoices, marketing, packaging) ready. Also, monitor for infringing/imitating marks and be prepared to oppose.
Budget for Translations, Renewal, and Administration Overhead
Over time, costs for renewals, translations, lawyer responses, and portfolio management add up. Treat trademark protection as a long-term asset, not a one-off cost.
Revisit & Consolidate
Every few years, review which jurisdictions are still relevant. Drop designations where business has ceased; reallocate resources to markets with growth. This helps you avoid bloated costs.
In Conclusion
Registering a trademark abroad from Singapore isn’t mysterious. Of course, it might seem complicated, but it is mostly simply layered and procedural. The Madrid System gives you a powerful “one-stop” route when jurisdictions are members, while direct national filings provide you with flexibility when they’re not. But the real art is in strategy: picking markets, protecting your base mark, engaging savvy counsel, and managing costs over time.
