Who would have thought that the fine-print terms and conditions you glossed over when you signed up for a courier service could actually constitute a formidable force to your trademark protection? That is right, the devil is in the detail. This article will discuss the importance of trademarks and actual registration of trademarks, and how these will affect your business portfolio. This is in light of Singapore’s previous brand backstab messages correlation. As the saying goes, ‘the early bird catches the worm’. Similarly, a trademark registration is a pretext for the potential owner to use their brand freely. This preserves territorial rights to that owner while others are left to fend for themselves.
In this digital age where almost everything is accessible with online platforms, brand infringement – which refers to situations where an entity uses a brand that is confusingly similar to another brand’s – runs rampant. Online platforms not only offer the benefits of convenience shopping, they also provide a level of anonymity – a treasure trove for those who operate cyber-squatting efforts. With so many parties claiming their stake on one brand or phrase, the only thing that stands between you and what could have been your trademark is whether it is actually registered. This begs the question – why is trademark registration so important? If one brand is already well-established, does it still need to be registered?
Overview of Trademark Registration
Trademark registration, introduced in Singapore by the Trademarks Act of 1998, aims to give exclusivity to a mark owner (such as a company) with goods and services listed, generally for a period of ten years and it can be renewed when it is near expiry. It is done by applying to the Intellectual Property Office of Singapore (IPOS). As a company’s brand develops at the early stages of the business cycle, prior to registrations for incorporation and establishing of locations or offices in Singapore or otherwise, the earliest stage at which the registration for trademarks would occur from a liability management point of view is at a minimum, usually at the beginning of the choice and use of its trademark.
There are a number of reasons why a company should consider trademark registration Singapore. Today, in the cut-throat business environment, protecting your brand grows in importance as the company grows. If a business puts in considerable effort and resources to produce a product or service, it is important to protect their business and their brand from exploitation. One simple measure that can be easily overlooked by companies is trademark registration. It should not, ideally, be looked upon as an added business expense, but rather as an investment – an insurance that for a little outlay will secure the brand identity in the future.
Benefits of Trademark Registration in Singapore
Secondly, trademarks are considered a protected form of intellectual property, similarly to methods of production, artistic works, and inventions. Registration of a mark allows rights in the form of private property to be established and enforced through the court. Owners of registered marks gain an immediate national monopoly, with the added value of being able to extend the protection into other countries via the Madrid Protocol or through agents in those foreign countries. Given that several major economies such as China, India, and Singapore have recently been accepting registrations via the Madrid Protocol, this suggests that there is a stronger incentive for the member states to adopt and faithfully implement the provisions of the Protocol into domestic law. The Protocol provides a framework for affiliated independent member states and their nationals to adhere to certain principles and rights set out by the signature.
The benefits of registering a trademark in Singapore are multiple. First of all, once a mark is registered, the owner gains an exclusive right to use that mark in relation to the goods or services for which the mark is registered. This ensures that the goodwill the mark accumulates gradually is not built up for another person to benefit from in the short term. Additionally, the mark owner can prevent others from using that mark or a confusingly similar mark in relation to those goods or services or any similar goods or services, if the use of the mark is likely to confuse or deceive the public. This provision applies to only marks which are considered distinctive. Even if a mark is not registered, the owner may still have a remedy where a confusingly similar mark is used, but the owner would need to show that the mark has become well known through use or promotion, in relation to the goods or services concerned.
Process of Trademark Registration in Singapore
It may also be noted that in many circumstances, an application for registration of a trademark consists of multiple classes of goods or services that are classified under the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement, commonly known as the Nice Classification. The classification of goods and services starts at class 1 and ends at class 45. Therefore, any person who wishes to register his trademark must first specify the classes that his goods or services fall under. Once the classification has been successfully done, it is essential for the applicant to pay a certain amount of registration fee of S$240 per class. This fee is usually paid when the application has been successfully drafted to avoid any complications that may arise. Finally, when an application is filed at the Registry, it is required to register and publish in the Trademarks Journal.
The process of trademark registration Singapore can be divided into several stages as detailed below. Firstly, the trademark is to be submitted to the Intellectual Property Office of Singapore (IPOS). This can be done either manually or electronically. The applicant of this process can be either the trademark’s owner or his representative. The latter must be a trademark agent who is enrolled with the IPOS. An electronic application may be filed through the Electronic Filing System (EFS) while a manual application may be filed at the counter of the Trade Marks Registry at IPOS. However, it is essential for the applicant to ensure that the trademarks meet the eligibility requirements for registration as stated under the Trade Mark Act. For example, a trademark must be distinctive and is likely to be registered.
Eligibility and Requirements
Subject to Part 7A, the registrar will accept an application for registration of a particular trademark unless: the application does not comply with the requirements laid down in these rules; or where the application complies with those requirements, the registrar considers that particular trademark is not an eligible mark or has decided that the mark should be registered in the name of a person other than the applicant. Where the application for registration of the trademark fails to meet the prescribed prerequisites according to the Act, the registrar will send the applicant an adverse report in which it is specified why the application has been rejected. If the applicant does not reply to the assessment by submitting written submissions greatly for indicating their application within four months from the date of issue of the adverse report, their application will be deemed closed.
To be eligible for trademark protection in Singapore, a mark must consist of a sign capable of being represented graphically and of distinguishing any goods or services of one undertaking from those of other undertakings. An application to register a trademark must be made in the prescribed manner and accompanied by the prescribed fee. The applicant must provide the Registrar of Trademarks with a statement of the goods and services in respect of which the application is intended, and must show proof that they are the bona fide owner of the trademark, or are authorized to use the trademark. The registrar will then search the Trade Marks Register and relevant indexes to determine whether the application is eligible for registration, and will conduct a search for marks that are identical or similar to the mark applied for, where the outcome of the search will be taken into consideration during the examination process.
Application Procedure
Applicants should note that IPOS may still require translation or transliteration of any matter contained in a language that is not Romanized and in respect of countries or territories, which are part of the Paris Convention. If the applicant fails to provide the translation or transliteration of such trademarks within the prescribed period, or within the extended period specified by IPOS, IPOS may treat the application as withdrawn. If the trademark is purely descriptive, applicants may consider whether they have used, or whether a third party has used the trademark with the consent of the registered proprietor before the date of application of their similar trademarks for similar goods or services. If the applicant has used the trademark but has not lodged an IP application, they should do so within the prescribed period or within the extended period specified by IPOS and provide evidence of use of the trademark in the prescribed form which is supported by documents and information to prove that the trademark has the necessary distinctive character or has acquired a distinctive character through use.
Intermediate Procedure applicants who have used their trademarks in Singapore and elsewhere for a certain period of time, or where the trademarks have become known to the public by reason of the use made of them, may file applications under the Intermediate Procedure (IP) to ‘fast-track’ the registration process. As such, the IP route is well-suited for key branding elements which businesses should consider filing first to secure brand integrity. An IP application has to be filed electronically via the Intellectual Property Office of Singapore (IPOS) trademark application system. Applicants under the IP route should be prepared to produce documentation and evidence to back their claims as to why applications can be fast-tracked and are well-known.
Examination and Approval
Should the examination officer believe that the trademark is distinctive and therefore having met this main essential requirement, the guidelines No. 14 of 2011 prescribe that notification of the result would then direct the examination of the application towards compliance with the other formalities – such as a need for other authorizing documents if the application has been filed by a patent agent, completeness of goods and services claimed as within the same class as well as the sufficiency of the specification and description of the mark itself as provided by the applicants. Rectifications and clarifications may be made as prompted, with these adjustments made at the direction of the examiner. The registrar must then grant the application. Appeal of the decision are on the basis of that granted application by way of application to oppose the decision and the appeal must be made within the timeframe as set forth in the notification. Likewise, if the examiner finds that the mark is not distinctive, the applicant has a period to respond, and rectifications adjustments prompted during the examination. If the steps are completed by the applicant, the examiner shall proceed to reconsider the application in light of the applicant’s response.
Upon submission of the application, the registry will firstly examine the trademark application with respect to absolute grounds for refusal. Upon consideration of all the required details and official forms and fulfilling the prescribed fee obligations, the registry will by default proceed to examine the distinctiveness of the trademark. If the application does not meet specific requirements prescribed by the Form CM7A filed, in accordance with the Trade Marks Rules, the application shall be treated as withdrawn. However, practicable rules to be followed under the regulations of the Legal Profession (Professional Conduct and Etiquette) Rules, in its absence are offered by the Trade Marks Regulations as a guide whereby the registry would by default proceed to examine the distinctiveness of a trademark once certain requirements have been met. Once submitted, the application is passed to an examination officer who makes a determination based on the generally fact-specific assessment of distinctiveness, and to an extent the common knowledge and experience of the average consumer.
Enforcement of Trademark Rights in Singapore
Given the comprehensive requirements involved in establishing brand identity in Singapore, it is advisable to seek assistance from experts in registering trademark rights. The expertise of a trademark consultant company will save time and money.
Another interesting development worth noting is the voluntary cooperation by the operators of key transportation infrastructure within Singapore, including Changi Airport, the nation’s harbor authority, and SBS Transit (a major public transport operator), in assisting with IP infringement surveillance.
In addition, the Intellectual Property Office of Singapore (IPOS), an executive agency of the Singapore Government, does a fine job at enforcing trademark rights either through out-of-court settlement, through ACRA (The Accounting and Corporate Regulatory Authority) which can take criminal actions against counterfeit infringers that involve deception of the source or quality of counterfeit goods, or through prosecution under the Trade Marks Act.
Recognizing the dangers and threats posed by the trans-national nature of counterfeit trade, over the years many countries have come together as signatory nations to a number of international treaties designed to protect trademarks and intellectual property, which have been codified and accepted as international best practices. Singapore is part of this international coalition and is a signatory of the TRIP Agreement, which broadly defines and seeks to enforce the intellectual property rights of member countries.
Singapore is a common law jurisdiction, and the acquisition of trademark rights in Singapore is generally based on use. The trademarks of businesses with a reputation in Singapore are not only at risk of counterfeit activity in Singapore, but also internationally through the reputation and goodwill associated with such trademarks.
Trademark Infringement
There are several prerequisites to an infringement action, the first of which is threefold. The first consideration is whether the plaintiff possesses rights that preclude the defendant from using the same mark. The second consideration is whether the plaintiff’s rights have been infringed, while the third consideration is whether the defendant is using the same or a near-identical mark as the plaintiff’s, so as to influence the bargaining process. The second consideration is whether the plaintiff’s trademark has been registered in accordance with the Trademark Act. If the plaintiff’s trademark is not registered beyond the period of application, the plaintiff’s only alternative will be to show that the company has purchased rights pertaining to the trademark and has made extensive use of the same before the date of importation of the defendant’s products.
A trademark is the face of a brand, and it is invested with great commercial value. It functions as a “silent ambassador” for the goods to which it is attached and serves as a symbol of quality in the mind of the consumer. Trademark infringement destroys this value and places the plaintiff in a position of having to account for, and often explain away, fraudulent and substandard goods. More importantly, several of these customers may soon cease to remain loyal to the company, thus damaging the company’s market share and reputation as well. The best method of combating trademark infringement is to file a suit for trademark infringement in court. The theory of trademark infringement is built upon the premise that an ineligible defendant uses the trademark of a business without authorization and deceives a consumer in this manner.
Remedies for Trademark Infringement
In the event that the trademark registration lapses, a third party may apply for registration of the trademark for the identical or similar goods or services. Therefore, if a trademark has been registered but not being used, that is, not properly maintained, an application for revocation for non-use may be filed with the Intellectual Property Office of Singapore. If the trademark is declared invalid or revoked by the Registrar, the trademark registrant’s rights are taken away and the legal protection is lost. A strong trademark can boost the reputation of a business and confer a competitive advantage in its products or services. The more distinctive and unique the trademark, the better the guarantee that the consumers will associate the goods and services with the brand. A registered trademark can act as a deterrent against potential trademark infringers who may adopt a similar trademark or even counterfeit the trademark, thereby preventing them from damaging the value of goodwill and monopoly of the trademark in the market.
As well as securing the trademark applicant’s exclusive right to use the trademark, a registered trademark provides the trademark applicant with certain advantages in terms of protecting its trademark rights, including providing the trademark applicant with a written record of the trademark registration, notice to the public of the trademark applicant’s claim of ownership and an exclusive right to use the trademark for the goods or services covered by the trademark registration. It also reflects the trademark applicant’s ownership of the trademark. Further, the registration of a trademark confers exclusive rights on the trademark registrant, including the right to prevent others from using the trademark without the consent of the trademark registrant, including selling, distributing or importing goods or services bearing that trademark.
Importance of Monitoring and Enforcement
The purpose unfair competition prohibition states that any person is deemed to commit an act of unfair competition who, without the consent of the proprietor of a trademark registered in Singapore, using the same or a confusingly similar sign as trademark but takes into account to any extent, the reputation of the mark and the need for the sign to be available for use. The outcome of the CTM is in most cases given greater influence by foreign courts as compared to decisions by national courts in the European Union. Courts in most member states have the discretion to provide preliminary judgments and only issue their judgments after the CTM court’s judgment is given. Most national laws give the effect of a CTM the same as if it is a national mark within their even territory.
Given that the key workload of trademark protection involves the monitoring and enforcement against unauthorized use, parties that plan on or have already registered trademarks are advised to conduct a monitoring system former or after trademark registration. The excessive use of the Internet to market services and products can result in dilution by tarnishment or blurring. Trademark use does not have to apply for a trademark infringement suit as long as the trademarked using does not represent the plaintiff as intellectual property. Tarnishment does not apply as well. Blurring, by contrast, only applies where customers rely on the trademark identical source. Additionally, the reputation of the parties can also be proven based on source.
Brands who are looking to expand or enter new markets should strongly consider how to best secure their intellectual property, and one strong aspect of this strategic direction is ensuring that their key brands are effectively registered. This article serves as a summary of the key considerations for trademark registration in Singapore. If you require help applying and securing your brand in Singapore, why not have a look at our Singapore trademark registration services? A key aspect of our service is the provision of clarity and certainty through our Fixed Fee Pricing. We hate surprise bills as much as anyone, why not read more about our pricing philosophy at the following link.
The diverse landscape means that more and more companies can conduct their business outside of traditional geographic considerations, allowing them to engage in international business and commerce. As such, creating and maintaining an engaging and memorable brand should be placed at the forefront of business considerations. Considering the vast number of businesses that are popping up even as we speak, having a strong brand is no longer a luxury but a requirement.
