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Learn more about Trademark Registration in Singapore

A trademark is an essential intangible asset for a company. It allows you to distinguish yourself from other competitors and can be very valuable. It is therefore strongly advised to register your trademark in order to protect it as well as possible against fraudulent use that could damage your image. A lawyer specialized in intellectual property will be able to facilitate the registration of your trademark by conducting prior art searches and filling out the necessary forms. In addition, a lawyer can be very helpful in negotiating and drafting a contract for the licensing or sale of your trademark, but also to protect you in case of illegal use by a third party.

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Why register your trademark in Singapore?

In Singapore, trademark law was initially governed by the Anglo-Saxon registration system, the UK Trade Marks Act 1938, before adopting its own law, the Singapore Trade Marks Act 1998. A brand is the symbol by which your customers recognize you. It differentiates you from your competitors. In Singapore, as in the Anglo-Saxon law, the rights on a trademark are established by use or registration. This means that the person or company who first and continuously registers or uses a mark obtains exclusive rights to it. However, in practice, it is strongly advised to register the brand in order to strengthen its rights. The competent authority for the trademark registration in Singapore is the Intellectual Property Office of Singapore (OSPI). There are two main categories of trademarks in Singapore, the “Conventional Trade Marks”, which are the most frequent and the most easily registrable, and the “Non-conventional Trade Marks”.
Registering a trademark guarantees the owner a monopoly of exploitation of this sign in Singapore. More precisely, the registration confers mainly 4 advantages:

Facilitate protection against prohibited use of your trademark

If a third party uses your trademark without your authorization, it will be much easier to prevent it since you have proof of ownership. On the other hand, if your brand is not registered, in order to prevent unauthorized use, it will be necessary to prove that you are using your trademark continuously, that it has acquired a certain reputation and goodwill and to justify the damage caused by this use.

Prevent the registration of a similar trademark

When your trademark is registered, it prevents any registration of a brand similar to yours by a third party. On the other hand, if your trademark is not registered, you will have to prove its continuous use and take legal action to oppose the registration of the similar brand name.

Facilitate the licensing or sale of your brand

As an intangible asset, it is entirely possible to assign or franchise the brand you own. While this does not require your trademark to be registered, it is much easier to sell or lease your trademark if it is registered. This assures the third party purchaser that you actually own the mark and that it does not infringe on a pre-existing mark.

The possibility of adding the ® symbol to your trademark

This symbol informs third parties that your brand is registered and that they cannot use it.

What are the requirements to register a trademark?

In order to be registered, a trademark must be:

➤ Graphically representable
➤ Distinctive (allow to distinguish the goods/services of the owner of the mark compared to those of competitors)

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)

What signs can be registered as a trademark?

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.

Conventional Trademarks

➤ Word marks (a set of words or characters)
➤ Figurative marks (images, photos, drawings, logos)
➤ Trademarks that combine verbal and figurative elements

Non-conventional Trademarks

➤ 3D shapes
➤ Colors
➤ Sounds, movements or holograms
➤ The appearance of the packaging

How long is my trademark protected?

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.

What is the classification of goods and services?

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.

What is a Well Known Mark?

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.

What is the trademark registration procedure?

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.

What are the registration deadlines?

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.

How much does it cost to register a trademark?

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.

Do I have to use a symbol to signify the protection of my trademark?

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.

What are the penalties for infringement?

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.

How do I market my trademark?

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.

Can I benefit from international protection?

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.

The procedure for an international registration through the Madrid 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

The period of time to obtain a decision

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.

Registration costs

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.

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