A trademark (or trade mark) is a company's asset and property that not only represents the company's ideals, goods, services, and image but also ensures that you can be recognised among competitors. In such a competitive market, some copycats and impostors will try to take advantage of a firm's success for their gain.
Many think that only large companies need to trademark their brands, but this isn't the case. If you don't take steps to protect your brand, it could be used without permission by another business.
This article discusses the requirements, procedures, and benefits of registering a trademark and the intellectual property (IP) and trademark laws that govern them. For assistance in registering your trademark in Singapore, check our list of consultant firms and their scope of services.
Trademark registration in Singapore is under the jurisdiction of the Intellectual Property Office of Singapore, a statutory board managed by the Ministry of Law. The current Trade Mark Act was passed in 1998 and is compliant with the Paris Convention for the Protection of Intellectual Property.
The Singapore Treaty on the Law of Trade Marks was established in 2006 and went into effect in 2009. Ten countries ratified or acceded to it, including Singapore. The treaty establishes common standards for the procedural aspects of trade mark registration.
Singapore's history of using registered trademarks began in the 1960s when two intellectual property laws were enacted. When the country joined various regional and bilateral trade pacts that would help develop numerous sectors, many businesses benefited from the protection and allowed for continued development in research and innovation. However, there is a need to talk about IP to understand trademarks' usage.
What is Intellectual Property?
IP refers to creations of the mind that individuals use for financial benefits or personal recognition. These creations can include names, symbols, artworks, sound recordings, films, and literary works. Intellectual property rights (IPR) are laws that designate rights for these creations to protect the creators or inventors and give a monopoly to the designated owners.
The following are the forms of IP:
Trademark and Registered Trademark
Businesses use symbols, names, and phrases called trademarks to distinguish themselves from other companies. This way, consumers will be able to remember them more easily. These trademarks often have special marks next to them, such as ™ and ®, that indicate the company is claiming ownership over this specific phrase or symbol. However, these two symbols mean different things.
The ™ symbol indicates that the trademark is not yet officially recognised by the law, but the company is claiming it as their own. It is not a violation of any law to continue using the symbol, although it does not include the benefits of a registered mark.
The ® indicates that the trademark has been registered in Singapore. This sign is only displayed after a company's application to register a trademark has been accepted. It implies that Singapore's intellectual property laws provide protection for the registered mark. If other parties infringe on these laws, the firm may use the registered mark to seek compensation.
Trademarks aren't the only way that companies distinguish their services, sometimes they also use service marks. Service marks are words, phrases, and designs that set a company's services apart from others. Even though both trademarks and service marks fall under the trademark umbrella, some companies use the "SM" symbol to show that their service mark isn't yet officially registered (similar to how the ™ symbol is used).
Criteria for Trademark Registration in Singapore
You cannot register a trademark in Singapore unless you meet the following criteria:
Trademark Registry Search
Before petitioning to trademark your brand name, ensure that there is no other business with a similar or indistinguishable name by searching the Registry of Trademarks' database. Use the Intellectual Property Office of Singapore resources or IPOS Go Mobile or IPOS Digital Hub to search for possible identical marks.
Identification of Goods or Services Class
You need to determine which of the thirty-four classes of goods and eleven classes of services in the Nice Classification your products and services belong to.
You must list the class(es) and descriptive phrases for goods and/or services. You are strongly advised to utilise TM Goods / Services Search to look up the correct class(es) and description(s) in order to avoid facing opposition against your trademark application. If your company offers several goods and/or services, you can file for a multi-class system instead of filing individually for each product/service.
Forms and Fees
The Form TM4 should be submitted for an application to register a trademark in Singapore. Form TM4 can be filed via IPOS Go Mobile App or IPOS Digital Hub. The form must be supplemented by:
Trademark Registration Outside Singapore
The Form MM2(E) is required to file an international application via the Madrid Protocol. This can be accessed via IPOS Digital Hub.
The form must be accompanied with:
You can calculate the fees you need to pay to the WIPO using their fee calculator, and then refer to the payment methods accepted by WIPO. WIPO's fees depend on: whether the mark applied for is black and white or in colour; the number of classes of goods and/or services applied for; or which contracting party/parties are designated.
To renew a registered trademark in Singapore, the business must submit the requirements and pay the registration fee after the expiration of the last application. You can renew your registered trademark starting 3 months before the expiry date by filing Form TM19 with the relevant fee.
Trademark registration applications are submitted at the IPOS, the statutory board overseeing IP laws.
The applicant must first fulfil the prerequisites for filing and submit all the requirements listed in the previous section.
If the requirements are complete, the trademark is examined to determine if it can be registered. The applicant will receive an examination report if there are any requirements that have not been met. This report will list the reasons for objection as well as which goods/services are being disputed. Within four months (extendable via Form CM5) of receiving the report, the applicant must submit the following that addresses all of the issues raised in the report or provides evidence to explain any apparent discrepancies:
The trademark is then published in the Trade Marks Journal, which allows the public to view it for two months and make an objection. If there are objections, a hearing may be required, and the process may be halted. Finally, if no one objects, the owner will receive a Registration Certificate. Intellectual property laws apply for ten years following registration and can be renewed. The application procedure in Singapore takes anywhere from twelve to twenty-two months.
If the applicant has filed a trademark registration anywhere else in the world in the last 6 months, he/she can apply for priority upon submitting their documents to IPOS. This is important to avoid objections from other registered trademarks that may bear similarity to logos or designs, particularly from applicants who have not yet completed their registration process.
The owner may also consult with professionals to find a similar registered trademark and research the Nice Classification of the goods and/or services that they want their trademark application to cover.
The applicants for a trademark registration outside of Singapore must submit the paperwork to IPOS or to the relevant countries. The application is filed via the Madrid Protocol or Madrid System.
The IPOS will send the application to the IB or International Bureau for examination after certifying it. If approved, the trademark is published in international journals and recorded in the corresponding online database. The owner is given a unique IR number that can be used to track their trademark internationally.
Lastly, the IB will send your trademark registration to additional countries for further examination before you're entitled to protection under that trademark.
Designating a Territory
Businesses based outside of Singapore who want to trademark their name in the country can do so by following the process above. Keep in mind that you'll need to list Singapore as a designated country in your application, and it will take 9 months from when IPOS receives certification from WIPO.
The only way to get a trademark in Singapore is by registering it in the country of origin. This means going through the same agency that will ultimately forward your application to WIPO.
WIPO will examine the registration, record it accordingly, and then publish it in their international marks gazette. At this point, members of the public can file objections if there are any similarities between other trademarks and yours. If there are no objections raised, WIPO will send you a certificate for your international trade mark registration shortly after approval.
After IPOS receives notification from IB/WIPO, examination of the trademark will begin. This time frame allows other applicants and existing registered mark owners to file objections. If there is an objection, the applicant will be given Provisional Refusal of Protection for four months. The owner must respond during this timeframe, or the application will be withdrawn.
If there are no objections, the trademark will be published in the Trade Marks Journal for public examination. Objections can still be filed for two additional months after publication. If no one files an objection within two months of publication, the IPOS will issue the Statement of Grant of Protection to the owner.
After the IPOS has approved a customer's trademark registration, that firm or company will be able to take advantage of the following:
Exclusive rights to the use of a trademark. If someone other than the registered owner uses the mark, the owner can sue them for infringement and may be able to get damages.
Trademark protection from infringement. The company is also protected from any infringement claims from other companies. When a company owns a trademark, they don't need to prove its ownership – this protection prevents others from using your own business's name or branding against you.
Use of trademark as asset and property. A registered trademark not only protects your brand, but it is also treated as a company asset and property that may be sold or transferred to an interested party. You can also give third parties permission to use your trademark through a contract with the aim of developing new revenue streams for your business. If you want to diversify the goods and/or services you offer to the public, you might establish a family of trademarks based on the original mark.
Use of trademark as security or hypothecation. The company can use the registered mark as collateral if it wishes to secure loan facilities. After all, it is considered an immovable property that can be bonded.
Licensing of trademarks. You may also give others the right to use your registered mark through a contract, which would allow you to reach out with reputable manufacturers, franchisees, distributors, and other vendors.
Use of trademark in foreign territories. It will be more convenient for your firm to register the trademark in other countries, so that your rights are safeguarded while you develop.
Dealings with third-party companies. The company will also have an easier time contacting traders, vendors, and other third parties that can help you expand or improve your business.
Use trademark on social media. By registering your company's trademark, you are entitled to the protection that social media platforms extend to all legitimate businesses. These policies can be used to take down imposters and copycats who are trying to misuse your company's trademark for their own personal gain. In addition, registering your trademark will also protect against cybersquatting of domain names that might be confusingly similar to yours.
Trademarks as Intellectual Property
As a form of IP, the trademark's basic principle is to give the company the exclusive right to use that unique mark to indicate where the goods and/or services came from.
The importance that Singapore places in IPR is shown in nothing less than the Singapore Trademark Act, which was passed in 1998 as a response to the Paris Convention for the Protection of Intellectual Property. The country is also a signatory to a number of international conventions.
A trademark registration is intended to hinder competitors from confusing customers with similar or copied trademarks by providing a legal defence against such behaviour. The owner's trademark has been transformed into an active trademark or a service mark that other businesses cannot imitate for their own benefit. It will be easier to sue offenders for infringement and win damages because the burden of proof regarding ownership will be on the other party, not the registered owner.
Protection of a Trademark
Trademarks that can be protected under the Trade Marks Law include word/s, a combination of words, numerals, letters, symbols, drawings, shapes, colours, and even sounds. In some countries, features such as taste and smell can be registered, but these are not yet allowed in Singapore.
After a trademark registration is granted, the owner may benefit from the Singapore Trademarks Act's monopoly enforcement provisions. If similar trademarks wish to seek protection, the IPOS operates under a first-to-file approach, and it's sometimes suggested that you file an application to register your trademark before using it in public. There's also a five-year limit on how long the registered proprietor can abstain from utilising his or her mark; if he or she does not use it within this time period, the right to do so will be revoked.
Trademarks may be protected in a variety of ways. The following are some examples:
What is the Madrid System?
Simply put, the Madrid System is a centralised trademark registration system that will make it easier for trademark owners from various member nations to file trademarks in numerous regions. Because a registered mark is territorial in nature, submitting applications individually in many locations would be time consuming and inconvenient for businesses.
The Madrid System is made up of two treaties: the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement.
The Madrid System streamlines the process of registering a trademark in multiple countries by allowing applicants to use a single application in three common languages (English, French, and Spanish). Although businesses outside of Singapore often take advantage of the system to protect their brand, companies based inside the country can benefit from it as well. All applications are handled by IPOS, including those that wish to register through the Madrid System.
How Do I Use the Madrid System?
Only after a registered mark has been recognised in its country of origin can you apply for international trademark registration. Your application for trademark protection in foreign countries should already be completed; whereas, if you are from Singapore, the IPOS must have previously issued your trademark registration certificate before you may apply internationally. This local registration will serve as a basis for the international application.
Applicants for international trademarks must ensure that the company is operating in the country of interest, or that they are residents of the country. International trademark applications follow the same general process as local registrations, and are published in both the Trade Marks Journal and International Registrations.
What are the Benefits of the Madrid System?
The Madrid System is a solution for companies who want to be protected in multiple markets. All they need is one application written in one of three languages and pay just one set of fees. This not only saves time, but also money because there won’t be a need for different representatives per country or translated requirements.
This also implies that the portfolio can be managed remotely with a centralised system, making it easier to add coverage in different countries across the world. There's no need to be concerned about how many member nations there are because the system comprises up to 80% of the world's markets.
Infringement is the violation of IPR, and trademark infringement occurs when someone uses a registered mark without the company's permission. This happens when another business uses a registered name without the authorisation of the firm that owns it, or if consumers are confused because it resembles the registered brand.
Below are details of what constitutes a trademark infringement:
Confusing or Confusingly Similar Trademarks
Using a confusing trademark that is similar to an existing mark is one of the most frequent causes of trademark infringement. Although most of these are unintentional and were not intended to be misleading, they will be considered by the court in order to see if the name is confusing. These are:
Prior Use of a Trademark
There is a defense of prior use in Singapore's Trade Marks Act (TMA) for Section 28 (2). What this implies is that a company's trademark may be protected for as long as it has been using the unregistered trademark continuously. This rule exists to protect an organisation's trademark before it registers its mark.
If your business is being sued for trademark infringement since it used a trademark before obtaining registration, you can also sue the trademark that has triggered the claim. Your company will have to show that the other party's assertion to the mark is invalid using Trade Marks Act rules. If you've already secured a registered brand, you'll have a stronger case against the other person if he or she uses an unregistered one.
Exclusive Rights and Anti-Dilution
The goal of trademark registration is to give the owner sole rights to all of the trademark's advantages. It becomes an issue, however, if competitors try to capitalise on a company's success by using a similar mark in order to attract consumers.
If your brand is well-known, the scope of protection for your trademark is even greater. This is because the public can tell the difference between a genuine trademark and one that has been counterfeited. The owner of a registered trademark also has the legal right to restrain any other companies from using it on similar or dissimilar goods and services. This prevents other businesses from taking unfair advantage of a popular brand name.
The anti-dilution model protects businesses with registered trademarks from counterfeiters who offer items and/or services that are confusingly similar to the genuine goods and/or services.
Civil Infringement and Other Offences
The anti-dilution right, otherwise known as a form of civil infringement, permits the owner to seek remedies such as damages and profits from the sale of infringing items. This not only protects trademarks registered in Singapore, but also well-known international brands that are not registered in Singapore, so long as they follow the standards set by the Paris Convention and WIPO Joint Recommendations. Other offences on the registered mark include the following:
It is also a violation if another person or entity misrepresents the trademarks of a different firm with the intent to trade. When there is goodwill associated with a business, it is considered passing off a trademark as its own if there is misrepresentation of the origin of goods and/or services; and real or potential damage occurs as a result of the usage of a registered mark.
When looking for trademark registration filing services in Singapore, it is important to consider the following factors:
Experience in mediation
Look for a specialist trademark lawyer who has experience with responding to oppositions and providing additional information if required, as well as dealing with litigation and other methods of resolving disputes such as mediation and arbitration. If you're planning to do business outside Singapore, try finding one that also specialises in foreign trademark law.
If you want to trademark your company's name and logo, it's helpful to have industry-level knowledge. The test for trademark eligibility is whether your mark and another one are likely to be confused. The risk of confusion is great if comparable logos or trademarks are employed by competitors. Moreover, if you own a creative business, such as music, art or design, the regulations for when something is qualified as a unique trademark likely differ.
Trademark name search assistance
Trademark searches can assist you in locating existing trademarks that may put a damper on your mark's protection. Consumers want to know where their purchases originate from. A trademark is required for a product or service to be recognised as originating from you. The use of expert assistance with the appropriate search tools saves time and money.
Assistance in identification of goods and services
If you want to avoid any delays or mistakes in your international classification of goods and services for your proposed trademark, hire a consultant who is more knowledgeable about the process. This will help speed up the application process overall.
Excellent customer service
Check to see whether the firm you're dealing with has good client service. You should be able to contact them if you have any questions or concerns regarding your trademark registration. Make sure the attorney will keep you informed as to the status of your case and that they know how to contact you — by phone or email.
The greatest way to protect your brand in Singapore is through a trademark registration, which is the procedure of legally identifying your business's sign, phrase, or design that will clearly distinguish your products and services.
If you need assistance with the trademark registration process, look through our list of consultants in Singapore.
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