Singapore Treaty on the Law of Trademarks

The Singapore Treaty on the Law of Trademarks, adopted on 27 March 2006 under the auspices of WIPO and in force since 2009, harmonises and simplifies the administrative procedures for registering trade marks before the offices of the contracting States. It builds on the 1994 Trademark Law Treaty by extending it to all types of signs, accepting electronic communications and introducing relief measures where time limits are missed. It does not touch substantive trade mark law, which remains defined by national legislation and, in Europe, by Directive (EU) 2015/2436 and Regulation (EU) 2017/1001.

Purpose and scope of the treaty

The treaty lays down a maximum list of requirements that an office may impose for the application, representation of the mark, filing date, division of the application, renewal, recordal of changes in ownership and correction of mistakes. An office may not require more than the treaty allows, for instance legalisation of a signature or a certificate of incorporation, except in case of reasonable doubt. Unlike the 1994 treaty, it applies to all trade marks, including non-traditional marks such as sound, colour, position or motion marks, for which the Regulations specify the accepted means of representation. It does not cover collective, certification and guarantee marks.

Procedural contributions

The treaty leaves each office free to choose between paper and electronic communications, but regulates the formalities attached to each. It requires offices to provide relief measures where an applicant or proprietor has failed to meet a time limit, by way of extension, continued processing or reinstatement of rights, subject to a request made within a reasonable period. Finally, it harmonises the recordal of trade mark licences, limiting the documents that may be required and prohibiting the validity of the licence or the licensee’s right to sue from being made conditional on its entry in the register, a point that fuelled debate during the negotiations.

Effects for applicants

For businesses, the treaty reduces the cost and uncertainty of formalities in the countries that have acceded to it, by standardising forms and guaranteeing a remedy against unintentional loss of rights. As European rules already largely comply, its main effect is felt in filings outside Europe. It works alongside the Madrid Protocol, which organises international filing, without being the same thing: the former governs the formalities before each office, the latter the mechanism of centralised international registration.

Key points

The Singapore Treaty caps the formalities a trade mark office may require, extends these safeguards to all types of signs, accepts electronic filing and obliges offices to provide a remedy where a time limit is missed. It does not alter the conditions for the validity of trade marks. Before filing in a third country, it should be checked whether that State is party to the treaty, which makes it possible to anticipate the documents required and the available means of recovery.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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