How businesses operate in the market reflects their essence, and in order to help customers identify their products and services exclusively, businesses ought to register their trademarks. A trademark is a symbol, design, word, or expression that represents products or services of a business and is a unique feature that differentiates the products/services of a business from that of its competitors. Registration of a trademark is an important step for businesses because it helps in protecting the company’s name, brand, and the products/services offered. In order to enhance market accessibility and visibility for businesses, every business owner should register their trademark. Singapore has one of the most efficient and cost-effective systems for the protection of trademarks.
Even though Singapore is small in size, it continues to thrive as an intellectual, commercial, and creative centre by being diligent in acknowledging and respecting IP rights. Many innovations and brands from all over the world have found a competitive, attractive, and commercially beneficial destination in Singapore. Singapore has a legal framework that encourages innovation and provides mechanisms for obtaining exclusive rights over such intellectual products such as copyrights, trademarks, patents, industrial designs, and protection of plant varieties. The legal framework helps the creators of the products to be duly acknowledged and remunerated for their intellectual effort and hard work.
Understanding Trademark Registration in Singapore
Goods and services for which a trademark is registered are classified in Singapore according to the latest version of the Nice International Classification of Goods and Services. Applicants must therefore specify the correct goods and services to which their trademark will apply. If an application contains a long list of totally unrelated goods or services, the examiner can object on the grounds that it lacks clarity and precision. Therefore, it is crucial that the specifications are considered carefully prior to an application’s filing. If the applicant specifies “All goods/services in class X,” it might prevent a competitor from having similar marks registered for those goods and services listed by the applicant. However, one of the key disadvantages of listing all the goods in a class is that the more goods or services that are covered by the registration, the higher the trademark renewal costs, as a separate renewal fee is payable for each class covered by a registration. In addition, the more goods/services covered, the less likely it is that the mark will be considered to be distinctive. This is especially relevant in cases where the mark is graphically straightforward with clear common elements.
The registered trademark is one of the key identifiers of a business and can be its most valuable form of intellectual property. In Singapore, trademark registration is conducted through the Registry of Trade Marks, which falls under the Intellectual Property Office of Singapore. The process of registering a trademark includes two main stages: pre-filing and filing. This article provides a detailed overview of both stages and explains the key documents and information necessary for the registration process.
Importance of Trademark Registration
Registration of a trade mark in a country is the uncontested proof of ownership of the trade marks in such market. It establishes the registrant’s right to the trade mark and such rights are enforceable through court action. Registration is therefore the only effective form of protection that exists. This then serves as a useful instrument against any intent of infringement or passing off by third party users. Research figures reveal that online users are more likely to become loyal to brands. A corporate/brand image has been formed, the influencer-inspirer thereby stimulating brand loyalty and eager patronage of the concerned brand. Social media cues can guide online users to relevant pages, including web pages selling products or services. There also exists a direct link between online activity and the act of purchase, which allows web stores to have an exponential possibility to steer customers to purchase their goods and utilize their services.
In a stable society, where legal rights and order are respected, infringement is still an enraging affair which prompts the trademark owner to display public anger and humiliate the infringer publicly. There may also be legal correspondence demanding payments from the infringer and threatening to enforce the rights through lawsuits. This may also be accompanied by legal equipment being used to enforce the legal rights, such as application for restraining orders to stop the infringer from making any further infringements. On the other side of the coin, while legal wrangles may be a persuasive reason to register a trademark, the importance of protecting market share and profit margins within the context of modern business practices warrants equal consideration.
Eligibility Criteria for Trademark Registration
A trademark need not consist of words, shapes, or even a combination of these. If the mark has any distinct representation that the trademark office can record and print on the register, it passes this unit test. A sound, for example, can be represented graphically on a musical stave. Such other examples have been put forth by court decisions, although they are relatively rare. Examples that have failed the test are smells, tastes; similarly, objects that are not static, amongst others.
Your trademark registration process in Singapore starts with this straightforward but essential question. If you can positively answer all the following four questions, you are well on your way towards your first official procedural milestone: successfully filing a trademark application. Each of these questions unpacks one of the four main eligibility criteria for registering a trademark in Singapore.
Singapore’s steady economic growth has made it an appealing business destination for international investors. From establishing a corporate presence to employing a workforce, international entities looking to operate in Singapore have a number of corporate and legal areas to consider. Negotiating the trademark registration process in Singapore is one such area. Trademark registration Singapore is an involved process, and brand owners should keep a number of factors in mind in order to correctly navigate the landscape. This article discusses how to obtain trademark registration Singapore. It outlines the eligibility criteria for registering a trademark, and it discusses each stage of the registration process in detail. Finally, it tells potential brand owners what to do after their trademarks are registered.
Types of Trademarks Recognized in Singapore
Absence of Capability in Distinguishing function (vital characteristic) is prevented. For example, prohibited signs include: signs which are devoid of any distinctive character; signs that describe the kind, quality, characteristics, values, intended purpose, location or condition of the goods (including geographical indications); signs that contain a sign or indication which has become customary in the current language of trade; and signs that are contrary to public policy and accepted principles of morality. The Act does not confer any rights on unregistered trademarks or marks. Such marks are asserted through the common law tort of ‘passing off’ and equitable principles.
a) Letters
b) Numerals;
c) The shape of goods or their packaging;
d) Logos;
e) Holograms;
f) Slogans;
g) Names;
h) Devices;
i) Brands Equipments;
j) Labels Of Merchandise Or Objects For Advertisement To Goods Or Services;
k) The combination of two or more of the signs asserted in the items (a) to (j).
The Singapore Trade Marks Act (Cap 332 “the Act”) embodies the nationally applicable legal trademark landscape in Singapore. Under the Act, any sign capable of being represented graphically can be registered as a trademark, provided the sign is capable of distinguishing the goods and services relevant to those trademarks (Sections 8(2), 13(1), 7(3)(a) “the Act”). The signs which can be registered as trademarks are:
Essential Steps for Trademark Registration in Singapore
Gone are the days where businesses could merely rely on distinctly unique visual appearances of logos and get away without registering them as trademarks. Amidst the proliferation of competitors, not only do businesses need to convey their identity but they also require legal protection as well. A registered trademark is an effective way to distinguish the goods and/or services of one entity from another in the course of trade, further lowering consumer search and transaction costs, removing uncertainties and enabling buyers to evaluate anticipated qualities. Implementing this is vital when both small and large companies alike are increasingly engaged in cross-border transactions through the use of social media and other online platforms. As such, without the necessary legal protection, one’s reputation and brand equity is placed in concrete jeopardy amounting to loss of loyal customers, while demoralising any future endeavors to position oneself in the global marketplace.
Navigating the trademark landscape: Essential steps for registration in Singapore. Whether you are a start-up founder, a franchise owner or a business consultant, navigating the trademark landscape can be daunting and confusing without a clear map. What are the essential steps to take when registering a trademark in Singapore? These steps are integral in safeguarding the intellectual property of your business, ranging from its core marketing and branding elements such as business names and logos to product and packaging marks, allowing for the identification of goods and services in the market to be enjoyed effectively.
Conducting a Trademark Search
It is important to keep in mind that in Singapore, at the time of registration, the search will be conducted by the Intellectual Property Office of Singapore (IPOS) Trademark Register in Classes 1 – 45. However, it is also important that research be conducted to determine that the business or service idea is novel and that it is likely that if the search was conducted in countries where the enterprise might later apply or register, it would not infringe any existing business or service. In other words, you essentially want to minimize the risk of infringing any rights. It’s always better to be safe than sorry.
Before registering a trademark, you should ascertain whether there is an identical or similar trademark registration for the business services that you wish to offer. The key is to ensure that the mark is not in use, or not in use for those services or products. This search is critical: use of an unregistered trademark that is the same or similar to that of a registered trademark, leading to an action taken by the owner of the registered trademark, can ruin a business.
Filing the Trademark Application
In Singapore, a trademark has to be registered to be legally protected. Before putting in an application, it is important to conduct a search to ensure that the proposed mark does not infringe onto prior existing marks. Once the search is successfully done, a trademark application can then be filed. The law relating to the registration of trademarks in Singapore is the Trade Marks Act (Cap 332), together with the Trade Marks Rules 1999. The Act clearly states that trademarks are generally to be registered by filing a formal application in the prescribed manner. The formal application consists of the appropriate application form together with the necessary prescribed fee, which is inclusive of the official fee for one class of goods or services. A mark contains a representation of the mark, which must be clear, precise, and self-contained. A mark can be filed using the following means: electronic filing via the Intellectual Property Office of Singapore (IPOS) online business filing service or quick filing service, where a practical situation is claimed, which is filed in the same manner. Only one mark is allowed in one filing.
Navigating the trademark landscape: Essential steps for registration in Singapore. A trademark is a sign or a mark that distinguishes an entity’s goods or services from others. Today, these signs can take on various forms, including letters, numbers, words, phrases, logos, pictures, and even sounds or smells. Good examples include the Coca-Cola trade name, the McDonald’s golden arches, and the jingle of an ice-cream truck. These signs help consumers recognize and relate to products or services that they have seen or experienced. Trademarks also play an important role in advertising and marketing, creating value for the entity using the mark. Thus, protecting and registering a mark is a critical business decision.
Examination and Publication of the Trademark
If the examination does not disclose absolute grounds for refusal, the Registrar will advertise his decision in the Trade Marks Journal, and any person may, within two months of the advertisement, give notice of opposition to the registration. Where notice of opposition has been given, the Registrar will notify the applicant who should file a counter statement, and thereafter, the tribunal will fix a date and place for the hearing of the opposition. If the hearing is attended by the parties, the tribunal may grant an extension of time in Wharf Financial Services Limited v Cosmic Insurance Corporation Limited, where the opposition was withdrawn after the three-day hearing. Generally, if no such notice has been given by the expiry of the time prescribed, or if the same is withdrawn or struck out, the trade mark applied for shall be submitted to the registrar for registration. However, opposition proceedings can be reinstated when notice of withdrawal is filed.
Examination and publication of the trademark. If the Registrar is satisfied that the application conforms to the requirements of the Trade Marks Act, he will cause the application to be examined with regard to its registrability and will decide whether the trade mark ought to be accepted or refused; alternatively, the Registrar might consider it necessary to obtain the opinion of experts on some question of foreign law or fact. The accepted trademarks will then be advertised in the Trade Marks Journal, which is published electronically and is available online. During the automatic preliminary search by IPOS, the name of the trademark card holder is given in Notification of Examiners Report if the initial search shows that there is any prior registered trademark that is similar after the preliminary search.
Opposition and Registration
Once registration has taken place, the Registrar will issue your registered trademark certificate. This date is known as the “convention date”. This date will be important in the future, as the protection stemming from that convention date can be back-dated to your original application date; you will have exclusive rights to use the mark, advertising and selling your products/services and enforcing by way of legal proceedings. You may also license or sell your mark to others. However, despite the benefits, there are also important duties incumbent on you as a registered trademark owner. If you are not an entity which is intending on continuing business beyond the two or five year anniversary period after the convention date, it may be dangerous to allow your mark to proceed to registration. Should your mark be vulnerable to attacks based on grounds not taken notice of by the Registrar (e.g. if there was a prior registration to yours or there pending invalidation proceedings against it), your registered trademark registration may provide no commercial or other benefit at all, and the funds associated with your registration may be wasted.
In general, after your application for registration has been accepted and published in the trade marks journal, third parties will have up to two months (extendable) to file a notice of opposition to your application. If no opposition is filed by this deadline or if no valid opposition is unsuccessful, it will proceed to registration. If an inherent or relative grounds opposition has been filed, all issues will have to be satisfactorily resolved before your trademark can proceed to registration. Should the matter not be resolved after the Registrar gives the parties an opportunity to do so, or should you withdraw your application, the result will be that your application will be rejected. Your application may also be rejected in full or in part for other reasons (e.g. if the Registrar has reasonable grounds to believe that the specified goods/services are not within the meaning of the Nice Classification or if you have sought to claim trademark protection which extends beyond the scope of the protection afforded to you pursuant to the Madrid Protocol).
Maintaining and Protecting Your Trademark in Singapore
Simply registering your trademark is not enough. You need to maintain the registered trademark in order to render the registration valid and effective. If you do not take proper maintenance steps, the trademark may become vulnerable to invalidation by third parties. To maintain a trademark in Singapore, you must renew your registration by paying a renewal fee to IPOS at least five years after the filing date of the application, and thereafter every ten years from the filing date of registration. Proper maintenance will keep your trademark registration in place to exercise your exclusive right to use and enjoy the advantages of your trademark.
If an amicable resolution is not possible, you may consider taking legal action in Singapore for infringement. In addition to taking action against the party that is infringing your trademark, you should also consider a border watch action with the Singapore Customs against counterfeit products before they enter the Singapore market. However, in many cases, it is more worth your while to resolve a dispute such as a trademark infringement out of court through alternative dispute resolution options such as mediation or arbitration before escalating the matter to formal court litigation. There are considerable costs involved when engaging lawyers to initiate court proceedings. A mediated or arbitrated settlement would be less taxing and requires fewer resources. If a situation should escalate to formal court proceedings, you should be well-prepared and engage counsel experienced in intellectual property, especially in trademark disputes.
Maintaining and protecting your trademark in Singapore. With a proper defensive strategy, you can ensure that your registered trademark is not infringed by others in Singapore. Regularly conduct trademark searches to uncover any trademarks that are similar to yours and could confuse your customers. In the event that you uncover a potentially infringing trademark, the first step you can take is to send a cease-and-desist letter to the infringing party.
Renewal of Trademark Registration
The renewal process requires you to: – Pay the renewal fees – File an Affidavit of Use in Singapore for the last five years. The required evidence of use is either numbered copies from the register showing the dates of use, where the mark was used, and the number of goods and/or services specified in the registration; or Affidavits, or Oral testimony before the Registrar. Other evidence of use may also be produced. A copy of the advertisement made on the registration of the mark. Please note a surcharge may be claimed in respect of late filings. The renewal application form is the same form as for the registration of a trademark.
Your registered trademark must be renewed once every ten years to keep it on the register. The first ten years renewal is due ten years from the filing date of the application. The trademark registry does not issue any reminders or deadline notifications to you. You are solely responsible for renewing your trademark registrations on time. Late renewals are possible but must be paid within 6 months of the renewal date, upon payment of an additional renewal fee. After 6 months, the trademark will be removed from the register, and a Restoration Application must be filed instead (with an additional late renewal fee). If the mark has not been restored within 3 years of the initial expiration date, the mark is considered abandoned.
Enforcing Trademark Rights
The owner may thus also consider making use of the law of passing off which serves as a tool to combat the unauthorized use of trademarks or trade dress, which could extend to the get-up or layout of a product’s packaging, to deceive the public into believing that the unauthorized user of the mark or trade dress is the owner or related to the owner. Particularly, the nature and extent of the tort of passing off is such that it affords extra protection to unregistered trademarks over and above statutory registration provisions. However, the statutory registration provisions should not be ignored. Where successful, an owner can benefit for a longer period of up to 10 years because they represent the statutory presumption that registered users have exclusive rights to their mark. The statutory presumption operates to facilitate an owner’s rights in applying for injunctions to prevent unauthorized use. With the introduction of the simplified procedures for trademark registration, these rights can be secured by local and foreign owners alike, thus preventing against unauthorized use in Singapore.
The need to remain vigilant in Singapore persists despite the proactive registration of a trademark through these simplified procedures. For instance, owners of trademarks must continue with regular trademark renewals once registration is successful. In addition, the rights of trademark owners are never self-executing, even with successful registration: having registered a trademark, owners remain responsible to enforce their rights against infringement by third parties. There may be occasions where an owner wishes to take action against the unauthorized use of a mark which is systematically applied to items, such as bottles, containers, wrappers, casks, labels, tags or other packaging. The owner must bear in mind that in enforcing trademark rights in relation to packaging, the unauthorized application of a registered trademark as a trademark for the same goods would fall under the scope of infringement.
Trademark Infringement and Remedies
Upon infringement of one of the rights granted under the Trademarks Act, the registered trademark owner may seek injunctive relief, damages, and the delivery-up or destruction of the offending goods. In seeking relief, registered trademark owners would typically ask the Court for an injunction (interlocutory or permanent), to restrain the further use of the registered mark on the infringing goods or services. An injunction may be granted in aid of damages and does not depend on the fact that the defendant persistently infringed the claimant’s right.
The unauthorized use of a mark, similar to a registered mark on similar goods or services, could lead to an infringement action and the original owner may seek an injunction, damages, or account for profits. Trademark infringement typically involves a registered trademark owner being deprived of his rights under the Act to further his commercial interests when a third party uses a similar mark. This may occur regardless of the size of the third party or whether the two parties are competing. Trademark use includes use in a form different from that registered provided that the essentials of the mark, which enable the goods or services protected by the mark to be identified in the form of presentation, are retained. Trademark infringement in the Singapore context refers to where there is the use of a mark, which includes unauthorized use of a mark as a trade mark by a third party for similar goods or services. This could lead to the original mark-owner’s rights under the Act to further his commercial interests being infringed.
