Question 1

What Is a Central Attack Under the Madrid Protocol, and What Is the 5-Year Dependency Period?

Accepted Answer

Under the Madrid Protocol, an international registration (IR) is  dependent on its "basic mark"  &mdash; the underlying trade mark application or registration filed in the holder's Office of Origin &mdash; for a period of  five years from the date of the international registration . This five-year window is called the  dependency period . 
 A  "central attack"  occurs when, within that five-year period, the basic mark is refused, withdrawn, cancelled, revoked, invalidated, or restricted (for example, narrowed in scope). Because the IR leans on the basic mark, the International Bureau (WIPO)  cancels the international registration to the same extent in every designated country  &mdash; including Singapore. 
 After the five-year dependency period expires, the international registration becomes  independent  of the basic mark (Madrid Protocol Article 6), and a later problem with the basic mark can no longer cascade into a central attack. 
  Source: Madrid Protocol Article 6; IPOS Work Manual (International Applications where Singapore is the Office of Origin), para 11.

Question 2

What Happens to My Singapore Trade Mark Designation If My Basic Mark Is Cancelled Within 5 Years?

Accepted Answer

If the basic mark on which your international registration is based is cancelled (or otherwise ceases to have effect)  within the five-year dependency period , the International Bureau (WIPO) will  cancel the international registration &mdash; including your Singapore designation &mdash; to the same extent  that the basic mark was cancelled or restricted. 
 In practice, this means: 
 
 If the basic mark is cancelled  in whole , your Singapore designation is cancelled in whole. 
 If the basic mark is  restricted  to fewer goods/services, your Singapore designation is restricted to match. 
 
 WIPO notifies the holder and the designated Contracting Parties (including IPOS). Once cancelled, the international registration no longer gives you protection in Singapore  through the Madrid route  &mdash; but you may be able to salvage it by  transformation  into a Singapore national application (see the related FAQ on transformation). 
 The dependency clock runs from the  date of the international registration , not from any later subsequent designation. A Singapore designation added after the original filing is still exposed to the same five-year window. 
  Source: Madrid Protocol Article 6(4); IPOS Work Manual (International Applications where Singapore is the Office of Origin), para 11.

Question 3

What Is "Transformation" of a Cancelled International Registration (Madrid Article 9quinquies)?

Accepted Answer

Transformation  is the Madrid Protocol's safeguard against central attack. It is found in  Article 9quinquies  of the Protocol. 
 Where an international registration is cancelled because the basic mark ceased to have effect (within the dependency period), the former holder may  file a national or regional trade mark application  in any designated Contracting Party where the IR had effect &mdash; turning the lost international protection into a local application. 
 For Singapore, transformation lets a holder who has lost their Madrid designation  re-file the same mark as a Singapore national application , covering the cancelled goods and/or services. 
 Key points: 
 
 Transformation is available only where the IR was cancelled due to  ceasing of effect of the basic mark . 
 It is  not available  where the IR was cancelled at the  holder's own request  (voluntary cancellation). 
 The transformed national application keeps the  original international registration date  and any  priority date  the IR enjoyed. 
 
  Source: Madrid Protocol Article 9quinquies; IPOS Work Manual (International Registrations / Subsequent Designations designating Singapore), para 21.

Question 4

How Do I Transform a Cancelled International Registration Into a Singapore National Application?

Accepted Answer

To transform a cancelled international registration into a Singapore national application, follow these steps: 
 
  Act within the deadline.  File the transformation request with IPOS within  three months from the date the international registration was cancelled  (WIPO's cancellation date). IPOS practice gives itself a window to process the cancellation, but the holder's deadline is three months from cancellation. 
  Use the right form.  File it as a trade mark application and indicate it is a  "Transformation Application under Madrid Protocol"  so IPOS records the link to the former IR. 
  Same mark, same or narrower scope.  The transformed application must be for the  same mark  and for the  same or no wider  goods/services than the international registration. 
  Meet national formalities.  Provide all required particulars and pay the Singapore application fee (the normal per-class fee applies &mdash; see "How Much Does Trade Mark Registration Cost in Singapore?"). 
  Preserve your dates.  On acceptance, the application is treated as filed on the  original international registration date  and keeps any  priority date  claimed under the IR. 
  Expect fresh examination.  Transformation is not automatic registration &mdash; the Singapore application is examined afresh on absolute and relative grounds like any national filing. 
 
  Source: Madrid Protocol Article 9quinquies; SG Trade Marks (International Registration) Rules, Rule 18; IPOS Work Manual, para 21.

Question 5

What Is the Deadline to File a Transformation Application in Singapore, and Does It Keep My Priority Date?

Accepted Answer

The deadline is strict: the transformation application must be filed with IPOS  within three months from the date on which the international registration was cancelled  by WIPO. 
 Meeting that deadline brings two important benefits: 
 
  Filing date.  The transformed national application is treated as though it had been filed on the  date of the international registration  (Article 3(4) date), not the later transformation date. 
  Priority.  The transformed application  enjoys the same priority date(s)  that applied to the cancelled goods/services under the international registration. 
 
 In short, transformation protects you against intervening third-party filings made during the gap &mdash; you keep your original place in the queue. Miss the three-month window, however, and you lose the ability to transform; your only route back into Singapore is a completely fresh application at the later date. 
  Source: Madrid Protocol Article 9quinquies; IPOS Work Manual, para 21.

Question 6

When Is Transformation NOT Available (for example, voluntary cancellation)?

Accepted Answer

Transformation under Article 9quinquies is a remedy for  central attack  &mdash; cancellation caused by the  ceasing of effect of the basic mark  (refusal, cancellation, revocation, invalidation or restriction within the five-year dependency period). 
 Transformation is  not available  where the international registration was cancelled  at the holder's own request  (a voluntary cancellation, such as the holder deciding to give up the mark). In that case, there is no basic-mark failure to remedy, and the Madrid safeguard does not apply. 
 Other situations where transformation does not help: 
 
 The cancellation happened  after  the five-year dependency period &mdash; the IR is then independent, so there is no central attack to transform from (though you keep the independent registration). 
 You want  wider  goods/services than the cancelled IR covered &mdash; transformation is limited to the same or narrower scope; anything extra needs a separate new application. 
 
  Source: Madrid Protocol Article 9quinquies; IPOS Work Manual, para 21.

Question 7

What Fees Apply to a Transformed Singapore National Trade Mark Application?

Accepted Answer

A transformation application is a  Singapore national trade mark application , so the normal IPOS official fees apply &mdash; the Madrid cancellation does not carry a discount or a surcharge. 
 Based on current IPOS fees: 
 
  S$280 per class  &mdash; where the specification is fully adopted from IPOS' Classification Database of pre-approved descriptions. 
  S$410 per class  &mdash; where the specification is not fully adopted from the pre-approved database. 
 
 These are  official IPOS statutory fees only . If you engage a trade mark agent or IP lawyer to handle the transformation on your behalf, their  professional fees apply in addition  to the official fees. Renewal, once registered, follows the standard Singapore schedule (S$480 per class on or before expiry). 
  Official fees are subject to change. Verify current rates on the IPOS website before filing. Source: IPOS Forms and Fees; "How Much Does Trade Mark Registration Cost in Singapore?"

AMI-IP

Trade Marks

Copyright

Registered Designs

International Registration (Madrid)

What to Do If Your Singapore Madrid Designation Is Cancelled by a Central Attack: A Practical Guide

Background: Why a Central Attack Happens #

Step 1 — Monitor the Basic Mark Constantly #

Step 2 — Start the Clock the Moment WIPO Cancels #

Step 3 — File a Transformation Application with IPOS #

Step 4 — Keep Your Original Dates #

Step 5 — Pay the National Fee #

Step 6 — Expect Fresh Examination #

When Transformation Is Not Available #

Worked Example #

Related Reading #

Related #

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