Just received Madrid Protocol refusals issued by IPOS (Intellectual Property Office of Singapore)?

The applicant has four months (extendable) from the date of the refusal to file a response with the Singapore Registrar.  We can assist you to file a suitable response with the Registrar.

Below are some commonly raised grounds of refusal against Madrid Protocol applications designating Singapore and the way to address such refusals. If you have any questions, please feel free to contact us by email.  We offer a review of your grounds of refusal free of charge, which enables you to obtain some good basic guidance about the nature of the refusal you are facing and what course of action is open to you without the fear of incurring a fee.

While class headings are acceptable claims under Singapore practice (for example “Clothing, headwear, footgear” in Class 25 are acceptable), all goods and services described in an application must be sufficiently clear.  In cases where the Examiner is able to propose alternative wordings, such proposals will be stated in the grounds of refusal.  If the applicant accepts the proposed alternative wording, a response can be filed indicating such acceptance and the application will proceed to advertisement if there are no other outstanding objections. However, if the applicant wishes to counter propose an alternative for the Examiner’s consideration, we can file such a counter proposal as a response.  You can search the Registry’s online database of acceptable descriptions here.

Non-English words and/or non-Roman character marks (e.g. Arabic, Thai text etc) require an English certified translation/transliteration of the characters to be filed with the Registry. We can provide you with a sample verification statement for use by your translator.

The Singapore Examiner checks the Madrid Protocol application for conflicts with earlier registered or pending marks on the Singapore Trade Mark Register.  There are a number of ways to seek to overcome a ground of refusal based on the existence of an earlier identical/similar trade mark. We set out below some possible routes for consideration: –

• Filing arguments to distinguish the earlier similar marks(s);
• Removing conflicting goods/services from your Madrid Protocol application designating Singapore;
• Obtaining consent from the proprietor of the cited mark(s);
• Filing evidence to indicate honest concurrent use;
• Take over ownership of the earlier identical/similar cited mark(s);
• Seek revocation of the cited mark(s) for non-use; and
• Await expiry of the cited mark(s).

The Examiner will request for a letter of consent from the person whose name or image (e.g. photo) is the subject of the trade mark. We are able to provide you with a simple sample for your use should your application meet with such a ground of refusal.  The letter of consent only requires a simple signature and does not require notarisation or legalisation.