The Intellectual Property Office of Singapore (“IPOS“) has issued the Registry of Trade Marks Circular No. 1/2025: Partial replacement of national registrations by protected international trade marks (“Circular“).
The Circular states that Rule 26 of the Trade Marks (International Registration) Rules will be amended to cater for the partial replacement of national registrations by protected international trade marks (Singapore). This is pursuant to the amendment of Rule 21(3)(d) of the Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol“).
From 1 February 2025, holders of protected international trade marks (Singapore) who request to record the replacement of their national registration via IPOS’ Form MP2, will no longer be required to cancel the goods and/or services in the national registration that are not covered in the protected international trade mark (Singapore). There will be no replacement for the goods and services in the national registration that are not covered in the protected international trade mark (Singapore).
The Madrid Protocol provides for the concept of replacement, under which holders of international trade mark registrations who have an earlier national registration in designated Contracting Parties can consolidate the rights of a national registration and an international registration into a single international registration.
The conditions for replacement before 1 February 2025 are as follows:
- The mark must be the same for both the earlier national registration and the later international trade mark that has become protected in Singapore;
- The national registration must be in the name of the same holder of the protected international trade mark (Singapore);
- The date of the protected international trade mark (Singapore) is later than the date of the national registration; and
- All of the goods and/or services in the national registration are found in the protected international trade mark (Singapore).
From 1 February 2025, condition 4 will be amended to: 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. IPOS will notify the International Bureau of the World Intellectual Property Organization (WIPO) regarding the replacement thereafter.
Click on the following link for more information:
- Registry of Trade Marks Circular No. 1/2025: Partial replacement of national registrations by protected international trade marks (available on the IPOS website at ipos.gov.sg)
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