【View】Matters needing attention when Madrid International Registration enters the national stage in Singapore
When Madrid International Registration enters the national stage in Singapore, it may be provisionally refused for various reasons, one of which is that the items of the "goods and/or services" are vague.
At this time, IPOS (Intellectual Property Office of Singapore) will suggest the holder to amend the items of the "goods and/or services" to be registered. The amendment proposals will be specific and no fee is required for such an amendment.
The amendment proposals given by IPOS may not meet the needs of the holder, so the holder needs to amend the items according to the specific situation, and then file a request for a review of this refusal with IPOS. However, the request for a review of this refusal must comply with the following rules; otherwise it will be treated as not made.
(a) quote the International Registration number, relevant trade mark number(s), corresponding class number(s) and Singapore reference number(s).
(b) furnish an address for service in Singapore. The holder may appoint an agent by filing Form CM1.
In general, IPOS will judge whether the goods and/or services applied for international trademark registration comply with the provisions of Singapore law according to the following provisions.
Provisions of Trade Mark Rules in Singapore
Rule 19 Specification
(2) Every application form shall contain, for each class of goods and/or services to which the application relates
(a) the class number as set out in the Nice Classification as in force on the date of that application; and
(2) a specification of those goods and/or services which
(i) is appropriate to that class;
(ii) is described in such a manner as to
(A) indicate clearly the nature of those goods and/or services; and
(B) allow those goods and/or services to be classified in accordance with Nice Classification as in force on the data of that application; and
(iii) complies with any other requirement of the Registrar.
The holder may amend the items of the goods and/or services with reference to the Nice Classification in accordance with this provision.
If the holder fails to submit the review request in time, he may seek an extension of time to request for a review of this refusal by filing Form CM5. However, if the holder does not file a request for review or apply for an extension of time before the deadline notified in the refusal, the application for the refused goods and/or services will be treated as withdrawn (reinstatable).
If the holder misses the deadline for filing the request for review or applying for an extension of time, the application for the refused goods and/or services will be treated as withdrawn, and IPOS will also provide relief channels. After the application is treated as withdrawn, the holder may request to reinstate the application by filing Form CM13 together with the request for review within six months from the deadline.
The reinstatement is not automatic. Reinstatement will be allowed only after a new conflicting mark search. Only when the mark to be reinstated does not conflict with any trade mark applications filed with IPOS prior to the filing of the required documents can the reinstatement be allowed.
The forms referred to in this passage can be downloaded from https://www.ip2.sg/.