Trademark Registration in Singapore
Introduction
Trademarks are another way of referring to brands. Think about Apple, Nike, Coca Cola, the unique aspects of each of these brands are protected by trademarks. Consumer purchasing decisions are highly influenced by brands and the reputation they represent. A business can safeguard the unique aspects of its brand and prevent others from using those aspects through trademarks. That’s why it is so important for business leaders to recognize that trademarks are important assets that help grow their business, and to learn what key regulations are applicable for the protection of this type of intellectual property.
Many of our clients, after we help them register a Singapore company, ask us to help them register their trademark in Singapore. Singapore is a very good jurisdiction for trademark registration. The country has been consistently recognized as a global business hub with business-friendly legislation, an attractive tax regime, and political stability. One of the steps Singapore authorities have taken towards creating a business-friendly environment is creating an ecosystem for the creation and protection of Intellectual Property (IP) through favorable regulations. In April 2013, the Government announced a 10-year master plan to guide the country towards becoming a Global IP Hub in Asia. Over the past seven years, Singapore has implemented that plan and built a strong IP protection regime. One aspect of this regime is the development of an infrastructure for fast, clear, and high-quality trademark filings and the protection of trademarks that are granted.
The article includes the following topics:
- Trademark as a Tool to Protect Your Ideas
- Trademark Registration in Singapore
- Registering Trademark Outside Singapore
- Designating Singapore via the Madrid System
- Trademark Registration Assistance Schemes
- Granting Other Companies a Licence to Use Your Trademark
- Estimated Costs
- Recent Trademarks Registered in Singapore
- Summary
Trademark as a Tool to Protect Your Ideas
What is a Trademark?
A trademark is a sign used by a person in the course of business or trade to distinguish their goods or services from those of others. The sign may be any letter, word, numeral, device (drawing or design), name, brand, label, aspect of packaging, shape, colour, sound, or a combination of these elements. A trademark may be located on a package, a label, a voucher, on the product itself, etc. The trademark is a type of property that may be owned by an individual, business organization, or any legal entity. More specifically, trademark is legally recognized as a type of intellectual property.
The following trademark types are registrable in Singapore:
- Trademark is the most common type used to distinguish goods or services;
- Collective mark is used to distinguish the goods or services offered by members of an association or group of traders from goods or services of those who are non-members of the association;
- Certification mark is used to distinguish goods or services certified by the mark owner from other non-certified goods or services. The certification may relate to a characteristic of the certified goods or services, such as an indication of the origin, material, quality, mode of manufacture of the goods, or performance of the services.
Key Benefits
Although it is not compulsory to register your trademark in order to use it, such a registration adds protection and hence value to your product and business. By obtaining a trademark registration, you acquire the rights to:
- Exclusively use and control the use of a trademark;
- Restrict other persons from using the trademark without your consent; or
- Prevent a later trademark, which is similar or identical to an earlier registered one, from being registered in relation to the same or similar goods or services.
The owner can take advantage of the mark in many ways:
- The mark helps to distinguish the owner’s product or service from those of others.
- The mark helps to assure quality for the customers;
- The owner may use it to better protect the business’s market share (i.e. profits) by barring others from copying it;
- The mark may be licensed to third parties for commercial returns (e.g. through a franchise or license);
- The owner may sell it outright for a specified value (e.g. in a company acquisition);
- The mark may be used to raise equity for the owner’s business undertakings.
Trademark and Other Types of Intellectual Property
Trademark is one of several types of intellectual property that can be registered in Singapore. The other types of IP that the Intellectual Property Office of Singapore (IPOS) registers are:
- Patent — protects the owner’s right to an invention, namely the way the object works;
- Design — protects the look of the object;
- Plant variety — protects the breeder's exclusive right to exploit the new plant variety;
- Geographical indication — protects an indication to identify a product as originating from a particular territory.
Trademark Registration in Singapore
Singapore Trade Marks Act and Trade Marks Rules
The legal basis for Singapore trademark regulation is embodied in the Singapore Trade Marks Act of 1998, last amended in 2007, and the Singapore Trade Marks Rules of 1998. These regulations incorporated the IP “common law,” whereby the trademark protection is obtained by registration. They also put into effect certain international conventions on intellectual property. The law covers the criteria for trademark registration, grounds for refusal of registration, the registration procedure itself, the duration and renewal process of registered trademarks, rights and remedies of trademark owners, licensing of marks, offences related to trademark activities, international registration of marks, and other matters.
Registrable Marks
In Singapore, to be registrable a trademark must be a distinctive and graphically representable sign capable of distinguishing between goods or services of the proprietor and those of others, such as words, names, acronyms, letters, numbers, devices, colours, combinations or shades of colours, sounds, signatures, labels, tickets, three-dimensional forms, the three-dimensional form of a good or its packaging, and any combination of these attributes.
Before applying to register your trademark, make sure it meets all the registration criteria. Specifically, a mark must:
- Be capable of being represented graphically;
- Be capable of distinguishing your goods or services from others;
- Not be descriptive of the goods or services, or used customarily in current language or established practices of the trade;
- Not be confusingly similar to an existing trademark on the register.
Unregistrable Marks
The following are some common examples of marks that cannot be registered under the trademark laws in Singapore:
- Descriptive marks. For instance, marks that describe the quality (“Super” or “Best”), quantity (“One dozen”), value (“Cheap”), intended purpose (“Cleaner”), or geographical origin;
- Marks “common to the trade” — those that have become so well accepted that the term is used to describe the type of the goods or services and no longer serves to distinguish the products offered (“Laptop”, “Watch”, “Tweet”);
- Marks contrary to public policy or morality — for example those promoting immoral behaviour (“Cocaine”);
- Deceptive marks — for example marks misrepresenting the nature, quality or geographical origin of the goods or services;
- Marks that could cause confusion — those that are identical or similar to an earlier mark (“Coka Kola”).
Trademark Registration Procedure
Step 1. Initial search and enquiry
Before applying to register a trademark, you (or your agent) should conduct a search of the existing marks in the database maintained by the Registry of Trade Marks. This is to ensure that there is no prior trademark that is identical or similar to the one you intend to file for registration, particularly in the area of your business. The search can be conducted at IP2SG platform, which is an integrated e-services portal for filing IP applications and related transactions in Singapore.
Step 2. Filing the application
The applicant may file the application form for registration of a trademark via online filing on the IP2SG platform or via paper submission. The person will have to furnish the following information in the relevant form:
- The name and address of the applicant;
- A clear graphical representation of the mark;
- A list of goods and services sought for registration, classified according to the International Classification of Goods and Services;
- A declaration of use of, or intent to use, the trademark; and
- The prescribed documentary evidence of the fee paid.
Additional information may be required for certain marks:
- For marks with non-English words or non-Roman characters, the English translation or transliteration must be provided in the application;
- For marks comprising a three-dimensional shape of the goods or packaging, the representation should be represented by line drawings;
- For collective marks and certification marks, the application must be accompanied by a set of regulations governing the use of the collective and certification marks within nine months from the date of filing the application. Please refer to the First and Second Schedules of the Trade Marks Act (Cap. 332, 2005 Ed.) for the detailed requirements.
Step 3. Formalities check
The Registry of Trade Marks will conduct a formalities check upon receipt of the application. This entails checking that the application meets minimum filing requirements. When the minimum filing requirements are met, a filing date will be allocated to the application. Otherwise, the authorities will send a letter asking the applicant to remedy the deficiencies.
Step 4. Search
After the application has passed the formalities check stage, Trade Mark Examiners will conduct a search to check if the mark applied for is similar to any trademark that is already registered or has already been applied for by someone else for the same or similar goods or services.
Step 5. Examination
After the searches have been conducted, the application will be examined to determine whether the mark is registrable in accordance with the law. The examiner will check to ensure that the mark does not fall in areas not allowed by law. If the examiner has any objection to the mark, s/he will inform and grant the applicant time to respond to the objection.
Step 6. Publication
If there is no objection to the application or if all of the objections have been overcome, the applicant will be informed of the acceptance of the application. The application will be published for public inspection in the Trade Marks Journal for a period of two months.
Step 7. Opposition
During the publication period, any interested party may oppose the registration of the trademark by filing a relevant notice of opposition. Within two months after the date of this notice, if the applicant wishes to pursue the registration of the trademark, he or she must file a counter-statement that includes the grounds supporting the application. Parties will be encouraged to use the dispute resolution or mediation options. Within 2 weeks after the end of the dispute resolution or mediation, parties should inform IPOS of the outcome. If there are any remaining issues in the dispute to be heard by the organization, it will give further directions on the conduct of the case. Finally IPOS will resume conduct of the proceedings.
Step 8. Registration
If there is no opposition to the registration of a trademark, or if the opposition is resolved in favour of the applicant, the trademark will be registered and a registration certificate will be issued.
Priority Claim
If an applicant has a corresponding application filed earlier in a Paris Convention country or a World Trade Organization member country (other than Singapore), he or she may claim priority from this first-filed application, provided that the Singapore application is filed within six months from the date of the first filing. When a priority is claimed, the filing date in Singapore dates back to the date of the first filing.
Term of Protection and Renewals
A trademark registration In Singapore is valid for 10 years from the date of application. The registration is renewable for periods of 10 years an unlimited number of times.
Registering Trademark Outside Singapore
Trademark protection is territorial in nature. A separate registration will have to be made in each of the countries where trademark protection is desired. Thus, registering a mark in Singapore will protect it only in this country. To obtain protection outside Singapore, it is necessary to file applications in the countries concerned, either individually to the trademark offices of those countries, or via the Madrid System that is described below.
Single International Application via the Madrid System
The Madrid System is the primary international system for registration of trademarks in multiple jurisdictions around the world. Its legal basis is the multilateral treaty called Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the Madrid Agreement (1989). Singapore is a party to these agreements.
Registration under the Madrid System has the same effect as applying for registration separately in every country designated by the applicant. The Madrid Protocol allows a trademark owner to seek protection for the trademark in many countries simultaneously by filing one application with a single office, in one language, and with one set of fees. So you may protect your mark in all the countries you want to target simply by filing a single application directly with the Intellectual Property Office of Singapore, which will then forward the application to the International Bureau of the World Intellectual Property Organization (WIPO).
International application under the Madrid System involves the following steps:
Step 1. Filing an international application in Singapore
International applications should be filed with IPOS for registration in a Madrid Protocol member country. Before making an international application, the applicant should ensure that:
- An application or a registration in Singapore has been made (“Singapore mark”) and the goods or services claimed are covered by the Singapore mark; and
- The applicant is a resident or national of, or has a real and effective industrial or commercial establishment in Singapore.
Step 2. Recording and publishing
The application will be sent to the WIPO, and the mark will be recorded in the International Register and published in the WIPO Gazette.
Step 3. Designated countries notification
The International Bureau will notify each country designated in your application.
Step 4. Processing by each designated country
Under this step, the mark goes through a similar process as a national application in the designated countries.
Step 5. Registration
If there is no opposition by any of the countries to the registration of a trademark, or if the opposition is resolved in favour of the applicant, the trademark will be registered and an international registration certificate will be issued.
Term of Protection and Renewals
An international registration lasts 10 years. It may be renewed for further periods of 10 years by paying a fee.
Designating Singapore via the Madrid System
Trademark Registration Assistance Schemes
As part of its master plan to make Singapore a Global IP Hub, Singapore has launched several Government-financed programmes to assist business in the field of IP rights registration, and trademarks in particular. Some of these programmes are as follows.
Market Readiness Assistance (MRA) offered by International Enterprise Singapore
MRA aims to help Singapore-based companies defray a portion of costs (including IP costs) when expanding outside Singapore. The programme provides funding of up to 70% of costs for eligible activities (capped at S$20,000 per company per new market from 1 April 2020 to 31 March 2023), including filing of foreign IP applications. Assistance is available only to companies with global headquarters in Singapore. Please find more info at Enterprise Singapore website or contact us if you wish to pursue this grant.
TECS: Technology Enterprise Commercialisation Scheme (by SPRING Singapore)
TECS aims to catalyse the formation and growth of innovative global start-ups based on strong technology Intellectual Property and a scalable business model. Through the TECS, SPRING provides early-stage funding to successful applicants to fund research and development efforts, including IP registration. Under the scheme you may receive:
- Up to 100% support for Proof-Of-Concept (POC) qualifying costs (capped at S$250,000).
- Up to 85% support for Proof-Of-Value (POV) qualifying costs (capped at S$500,000).
You are welcome to see more details on this grant.
Granting Other Companies a Licence to Use Your Trademark
When you have a registered trademark and wish to obtain additional financing, reach new markets, or increase brand recognition, you may licence the use of your trademark.
Trademark licensing is the process by which a registered trademark owner, called a licensor or proprietor, allows another party, called a licensee, to make and distribute specific products or services under the licensor's trademark agreement. Trademark licensing is a type of merchandise agreement. The licensor receives a certain amount of money or royalties, or a percentage of all sales, in exchange for sharing the trademark. Depending on situation, you may opt for one of the following license agreement types:
- Exclusive License: The licensee gains sole commercial rights to the trademark. The licensor has no commercial rights but gains a sum of money for entering the agreement. The licensee also receives future profits or incurs losses that come from commercialization. Exclusive licenses may impose limits on the products and location.
- Sole license: The licensee and licensor may use the trademark together. The licensor cannot license the trademark to a third party.
- Non-exclusive license: The licensee, licensor, and any outside individuals the licensor also assigns a license to can use the trademark.
If you wish to pursue a licensing strategy and need help with developing the licensing agreement, please contact us.
Government Fees for Trademarks Registration in Singapore
Trademark registration expenses will include the official filing fees and professional fees to relevant service providers, if you opt to apply through professionals. The official fee depends on the class of goods and services for which you are registering your trademark. If you pick several classes, you will have to pay for each one.
Fees for online filing are:
- S$280 per class if you choose goods and services from a pre-approved database;
- S$380 per class if you don’t use the pre-approved database and indicate your own specification for goods and services.
You may see all fees with regard to trademarks registration in Singapore.
If you opt for an an international application also, you have to pay the following fees to IPOS and WIPO:
- IPOS fee of S$250 for handling an international application;
- WIPO charges (in Swiss francs) based on whether the mark is produced in black and white or in colours, the countries designated, and the number of classes of goods and services. To calculate the fee payable to WIPO, please use the WIPO electronic calculator.
Summary
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