Conversely, in order to be registered, a trademark must NOT be:
|➤ Descriptive (it must not describe the goods/services offered by the owner)|
|➤ Become the common designation of the product (the mark has become a word in common use, used indiscriminately by the public to designate the product or service it covers, e.g.: paper towel, refrigerator)|
|➤ Contrary to public policy or morality|
|➤ Misleading as to the goods/services it offers (whether as to quality, nature or geographical origin)|
|➤ Identical to a pre-existing trademark (the sign is identical and the goods/services offered are also identical)|
|➤ Confusingly similar to a pre-existing trademark (the sign is similar and the goods/services offered are also similar, so that it causes confusion for the public between the two trademarks)|
|➤ Identical or similar to a pre-existing well-known trademark (in the case of a well-known trademark, the mere similarity or identity of the sign is sufficient to prevent registration, regardless of the goods/services offered)|
There are two main categories of trademarks in Singapore, Conventional Trade Mark, which are the most common and most easily registered, and Non-conventional Trade Mark which can be accepted, but whose registration criteria are more difficult to meet.
|➤ Word marks (a set of words or characters)|
|➤ Figurative marks (images, photos, drawings, logos)|
|➤ Trademarks that combine verbal and figurative elements|
|➤ 3D shapes|
|➤ Sounds, movements or holograms|
|➤ The appearance of the packaging|
The registration of a trademark offers a monopoly of exploitation on the sign for a period of 10 years indefinitely renewable.
However, the registration of a brand does not mean that it cannot be revoked. Indeed, if the owner cannot justify a use of the mark for a period of 5 years, the mark can be revoked.
The scope of protection afforded by the registration of a mark is determined by the goods/services for which the mark is registered. Singapore is a member of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and therefore uses this classification. The different types of similar goods/services are grouped into 45 categories (34 for goods and 11 for services). The applicant must choose for which categories of goods/services he wants to register his brand. It should be noted that the more categories registered, the higher the registration costs.
A well-known mark is a mark that is widely known by a significant portion of the public (whether or not it is registered). In the presence of a well-known brand, even if the later trademark offers different products/services, it is possible to argue that the later trademark, without just cause, would take undue advantage of the distinctive character or notoriety of the well-known brand or would be prejudicial to it.
After checking that the previously mentioned registration criteria are met and that the brand name is not already in use, it is possible to proceed to register a trademark either on the IPOS website or on the IPOS Go Mobile app.
In fact, on August 21, 2019, IPOS launched the first mobile app to file trademarks and perform similar brand searches using artificial intelligence. Thus making filing faster and more accessible. The registration process can be divided into 4 steps:
– Firstly, the TM4 form must be filled in, which must include:
|➤ The graphic representation of the trademark|
|➤ The name and address of the applicant|
|➤ The categories of goods/services for which the trademark will be used|
|➤ The payment of the registration fee|
– The IPOS then conducts an examination to verify that the mark complies with the requirements for registration as set forth in the Trade Mark Act.
– The IPOS issues its examination report after 4 months:
|➤ Either it accepts the registration of the mark, in which case the mark is published and a period of 2 months is opened to the third party to file an opposition to this decision.|
|➤ Or it refuses the registration and the applicant has 4 months to respond to this refusal and appeal the decision.|
– If the IPOS accepts the registration and no opposition has been filed or has been successful, the applicant will then receive a registration certificate for his trademark.
For unopposed applications, the total time from filing to delivery of the registration certificate is approximately 12 months. In case of opposition or refusal and appeal, the period can be longer.
The cost of registering a trademark is between S$240 and S$371 per selected class of goods/services. The price to renew a trademark registration after 10 years is S$380 per class of goods/services.
It is possible to add the TM symbol and the ® symbol to your trademark. The TM symbol informs third parties that you are using this sign as a trademark, but does not mean that the trademark is registered or protected by the Trade Mark Act. The ® symbol is only allowed when a certificate of registration has been issued to you by IPOS, it informs third parties that the mark is registered and protected by the Trade Mark Act. The use of these symbols is not compulsory, they are simply informative for third parties.
If a third party uses a similar or identical mark for similar or identical goods/services in such a way as to cause confusion in the public mind, then you should:
|➤ Conduct an investigation to verify that there is indeed an illegal use of your mark|
|➤ Obtain evidence of the illegal use of your trademark|
|➤ Take legal action and/or negotiate a settlement|
In case of legal action, the sanctions for illegal use of a registered trademark are as follows:
Civil sanctions: it is possible to obtain an injunction to cease the illegal use of the trademark and the destruction of the products concerned. To obtain damages resulting from the infringement or to be awarded all profits made by the third party infringer.
Criminal sanctions: a person found guilty of unlawful use of a trademark may be fined up to S$100,000 and/or imprisoned for up to 5 years.
Like anything else that a person owns, it is possible to sell or lease one’s trademark. When the owner rents the use of his trademark, it is called a license and when he sells it, it is called a transfer. It is quite possible to transfer one’s rights only on a specific geographical territory.
In principle, trademark law is territorial, so a national registration with IPOS is only valid in Singapore. However, Singapore is a member of the Madrid Protocol, which offers a convenient solution under the World Intellectual Property Organization (WIPO) office for the registration and management of trademarks worldwide. It allows you, after filing a single application and paying a single set of fees, to seek protection in up to 126 countries. You can also modify, renew or expand your international trademark portfolio through one centralized system.
|➤ To first proceed with a trademark registration at IPOS|
|➤ Request IPOS to proceed with an international filing and designate the countries in which you wish to register your trademark|
|➤ Transmission of the application to WIPO and examination|
|➤ Decision of acceptance or refusal|
It is between 12 and 18 months depending on the complexity of the application and the legislation of the country to which the application is made.
IPOS charges an administration fee of about 250 Singapore dollars for an international application and WIPO charges a basic fee of 653 to 903 Swiss Francs (depending on whether the mark is in color or not) to which additional fees must be added according to the countries applied for and the number of classes of goods/services covered.
Please note that it is also possible to designate Singapore as the country in which you wish to extend your protection when applying for an international trademark registration in a member country of the Madrid Protocol.