Trademark Registration in Singapore
According to the law of the land, a trademark includes any letter, name, word, signature, brand, numeral, device, ticket, label, heading, colour, shape, aspect of packaging or any combination of that, that is used in the course of trade to distinguish one’s services and goods from others. A trademark that is registered with the Intellectual Property Office of Singapore (IPOS) gives the right holder the legal right to use, license and sell the trademark within Singapore for the services and goods for which it is registered.
Types of trademarks in Singapore
Broadly there are three types of trademarks that can be registered in Singapore. They are as follows:
- Conventional Trade Marks
- Word Mark: It comprises words or any type of characters that can be typed
- Figurative mark: It comprises pictures, graphics or images
- Composite mark: These marks are a combination of the characteristics of the word mark and figurative mark, i.e. they are a combination of images/graphics and words/characters.
- Collective/ Certification Marks
- Collective Mark: These marks act as a badge of origin to distinguish the services or goods of members of a particular association from the non-members.
- Certification Mark: These marks act as a badge of quality guaranteeing that the services or goods have been certified to have a certain standard or characteristics or quality.
- Non-conventional Trade Marks
- The aspect of Packaging: The packaging and containers in which the goods are sold can also be registered as a trademark.
- Sound, Movement, Hologram or Others: The sound, movement, hologram and others can be registered as a trademark provided they can be represented graphically.
- Colour: Colours with no pictures or words can also be trademarked in Singapore.
- 3D Shape: The 3D Shapes of goods/packaging that are represented by line drawings or actual photos showing different views can also be registered as a trademark in Singapore.
Competent authority for trademark registration in Singapore
The Intellectual Property Office of Singapore (IPOS) is the regulatory authority for the registration of trade mark in Singapore. For the registration of a trademark, the applicant is required to make an online application to the IPOS Digital Hub, which is the e-services portal for filing IP applications and related transactions in Singapore.
Benefits of trade mark registration in Singapore
Having a trademark can add great value to your business. It allows your customers to easily identify your products and services and helps in building customer loyalty.
Having a trademark gives the trademark holder the monopoly over the use of the trademark. Following are the benefits of trademark registration in Singapore:
- It gives you the right to use the symbol ‘®’ next to your trademark.
- It also protects the market share of the company preventing others from using your trademark.
- It authorises you to license the use of your trademark to third parties.
- You can also sell this symbol for a certain sum, thereby allowing you to monetise your IP.
- You can also outrightly sell the trademark for some value.
- You can also use the IP to raise equity for your business undertaking.
- Prevents a later trademark that is identical or similar to your registered trademark from being registered in Singapore.
Eligibility to Register Trademark in Singapore
In Singapore, any natural-born person or any legal entity is capable of filing a trademark application to get a trademark registered.
What cannot be trademarked in Singapore
According to the Singapore Trade Marks Act, the following marks cannot be registered as a trademark:
- Descriptive marks: Marks that describe the goods and/or services of the business cannot be trademarked in Singapore. For example, marks that describe the quality (“best” or “super”), quantity (“one pound” or “2 litres”), value (“expensive” or “economical”), geographical origin or intended purpose (“Cleaner”);
- Marks that are ‘common to trade’: the marks that are signs or indications that have become customary in a particular trade. These are marks that have become so acceptable that the term is used to describe the goods and services and no longer serves to distinguish the products offered. One of the examples of a trademark that has become so customary in the industry is ‘escalator’;
- Marks that are contrary to public morality and public policy: Those marks that are against public morality and public policy cannot become a trademark. For example, a mark that is depicting immoral activity cannot be registered as a trademark;
- Deceptive marks: Those marks that are capable of deceiving the public cannot be trademarked. For example the marks that misrepresent the quality, nature and geographical origin of the goods or services;
- Marks identical or similar to earlier marks: If a mark is identical or similar to an earlier registered trademark and the services or goods for which the mark is sought is identical to the goods or services for which the earlier trademark is protected, then the Office will not grant the trade mark;
- Marks that can create confusion: A mark if capable of causing confusion in the minds of the public in the following circumstances cannot be considered for trademark registration
- The mark is identical with an earlier mark that is supposed to be registered for services and goods similar to those for which an earlier mark is protected;
- The mark is similar to an earlier mark that is supposed to be registered for services and goods identical with those for which an earlier mark is protected
- The mark is identical with an earlier Trade mark that is supposed to be registered for services and goods similar to those for which an earlier mark is protected; and
- Marks that are identical or similar to well-known marks: If a mark is similar or identical to an earlier trade mark that is well known in Singapore, then it cannot be registered.
Procedure of filling out the Trade Mark registration applicationin Singapore
Trademark registration in Singapore is a straightforward process which can be done in the following simple steps:
- Check whether the trademark meets the registration criteria
- Conduct a trademark search on the IPOS Digital Hub or IPOS Go Mobile App
- Proper Classification of the trademark
- Make an application for trademark registration
- Examination of trademark by the IPOS
- Publication of the mark
- Opposition proceedings
- Registration of the trademark
- Renewal of trademark
- Check whether the trademark meets the registration criteria -
Before making an application form for the registration of a trademark in Singapore, the applicant should first check the registration criteria for a trademark. The following criteria can help in determining whether a trademark can be registered in Singapore or not:
- The trademark should be capable of being represented graphically
- The mark should be distinctive and capable of distinguishing your services or goods from those of other traders
- The mark shouldNOT consist entirely of signs that are descriptive of the applicant’s goods or services. For example: best, cheapetc.
- The mark should NOT consist entirely of signs that are used customarily in the current language or in established practices of trade. For example escalator has become synonymous with the electric power staircases.
- The mark should not be confusingly similar to existing trade mark(s).
- Conduct a prior trademark search on the IPOS Digital Hub or IPOS Go Mobile App-
It is always advised to the applicant to conduct a prior trademark search before filing the application to check whether a similar or identical trademark exists for the same or similar kinds of goods or services that the applicant wants his trademark for. The applicant is required to conduct a trademark search on the IPOS Digital Hub or IPOS Go Mobile App.
If a similar or an identical trademark is found which protects the similar or identical goods or services specified in the trademark application, there is a good chance that objections will be raised against the application. In order to avoid such a situation, one of the ways is providing the IPOS a letter of consent from the other party.
- Proper Classification of the trade mark -
The protection of trade mark is provided by law with respect to the goods or services that have been mentioned in the application. While making an application for trademark registration, the applicant is required to provide the exact class number and the appropriate description of the goods or services for which the application has been made. This classification is based on the NICE classification where there are a total of 45 classes of goods and services to choose from.
It is advised by Enterslice to use the IPOS Classification Database to look for appropriate description for the goods or services to reduce the chances objections being raised against the application. Where a class contains entirely of the descriptions from IPOS classification database, a discounted application fee of $280 SGD shall be charged per class if the application is filed online via IPOS Digital Hub.
The law does not make it mandatory to engage professional services in filing the trade mark application. However, you may benefit from the trademark assistance services offered by Enterslice to offer advisory on whether the proposed trademark is registrable or not, to check the correct classification of the proposed class of goods and services and assistance in trademark searches.
- Make an application for trade mark registration -
Following is the pre-filing checklist that every applicant must follow before making an application to the IPOS for trademark registration in Singapore:
- Check whether the proposed mark fulfils the trademark registration criteria mentioned upwards
- Check whether the pre-requisites of filing an application have been taken into consideration
- Find out the appropriate form and pay the prescribed statutory fee to register a trademark in Singapore.
The whole procedure of trademark registration in Singapore takes a period of 12 months to be registered provided the application does not contain any deficiency or face any major opposition/objection.
- Processing/ Examination of the trade mark application by the IPOS-
After making the application, the application goes to the next process of examination/ processing to check whether all the particulars in the application have been properly filed by the applicant. If all the essential filings have been made by the applicant, then a filing date is accorded to the applicant. If the office finds that the mark is registrable, then it proceeds to the publication stage.
If the essential requirements of the application have not been met by the applicant, then such a person receives an examination report. The report mentions the grounds for objection and also mentions the goods and/or services that are being objected to. The applicant is given a window of 4 months (which can further be extended by filing Form CM5) to respond to the objections in either of the following ways:
- Make a representation in writing or provide any necessary evidence/information;
- Make amendments to the application by filing Form TM27 where relevant;
- Make an application to the Registrar for a hearing by filing Form HC4.
- Publication of the mark -
Once the application has been accepted by the IPOS, the application is published in the Trade Marks Journal for inspection by the public. The publication is done for a period of 2 months and any interested party can oppose this mark during this period of 2 months.
If no objections are raised from the public, the application is sent for registration purposes.
- Opposition proceedings -
In case the trademark receives any opposition from any interested party, the applicant is provided with a copy of the notice of the opposition from the opponent. Till the time the opposition proceedings remain pending, the application process is suspended for that period.
If after the opposition proceedings, the outcome comes in favour of the opponent, the application is refused. On the other hand, if the outcome of the hearing comes in favour of the applicant, the trademark application proceeds for registration.
- Registration of the trademark -
At the time of registration of the trademark, the applicant is provided with a certificate of registration from the IPOS. The protection of the trademark is granted for a period of 10 years from the date making of the application and not on the date when the certificate of registration has been made.
- Renewal of trademark registration in Singapore -
The trademark can be renewed in Singapore for another term of 10 years. An application is required to be made within a period of 6 months from the date of expiry of the registration.
Documents required for Trade Mark registration in Singapore
Where the filing of a trademark is being done in Singapore, Form TM4 is required to be submitted to the IPOS via IPOS Go Mobile App or via IPOS Digital Hub. The following documents are required to be attached at the time of filing of Form TM4 for trademark registration in Singapore:
- The name and address of the person making the application
- Clear graphical representation of the trademark
- The list of services and/or goods in relation to which the trademark is proposed to be registered
- A declaration to the effect indicating your intention to use the said mark
- The prescribed application fee for trademark registration in Singapore
Fee for Trade Mark registration in Singapore
Following are the prescribed fee for online filing of the Form TM4 for trademark registration in Singapore
- $280 SGD per class in case of those classes whose specification items have been adopted from the pre-approved database of goods/services description.
- $380 SGD per class in case of those classes whose specification items have not been fully adopted from the pre-approved database of services/goods description.
Consequences of infringement of TradeMark in Singapore
According to the Singapore trademark law, it is a criminal offence to falsely represent a trademark being registered when in reality it has not been registered or in case where the mark is pending registration. It is also an offence if someone makes false representations about the goods or services for which a trademark has been registered.