Singapore Trademark Registration Guide
The modern Singapore Trade Marks Act was passed in 1998 to meet the city-state’s obligations under the Paris Convention for the Protection of Intellectual Property. Trademark registration in Singapore is handled by the Intellectual Property Office of Singapore (IPOS), a statutory board under the Ministry of Law.
Singapore is currently a signatory to the following relevant international conventions:
- Paris Convention
- Berne Convention
- Madrid Protocol
- Nice Agreement
- Patent Cooperation Treaty
- Budapest Treaty
- WIPO Copyright Treaty
- WIPO Performances and Phonograms Treaty
- International Convention for the Protection of New Varieties of Plants otherwise known as the “UPOV Convention”
- The Geneva Act (1999) of the Hague Agreement concerning the International Registration of Industrial DesignSingapore Treaty on the Law of Trademarks
The purpose of this guide is to provide an introduction to Singapore’s Trade Marks Act and the trademark registration procedure in Singapore.
Singapore Trademark Act – Key Features
Although it is not mandatory to register a trademark in order to use it under Singapore law, a trade mark registration adds great value to a business. By filing for trade mark registration, the trade mark owner obtains a right to ownership and the right to prevent others from using a similar or identical mark without the owner’s permission.
Key features of Singapore’s Trade Marks Act include:
- Trade mark registration under the Trade Marks Act is only effective in Singapore. Trade mark protection is territorial and therefore, to obtain trade mark rights and protection in other countries, it is necessary to register the trade mark in those countries or pursue international trade mark registration through the Madrid Protocol. As Singapore is a contracting country under the Madrid Protocol, an international application may be filed through IPOS in Singapore after the trademark has been filed in Singapore. For more details, see Worldwide Trademark Registration through Singapore Trademark Office.
- A trade mark must be capable of being represented graphically. This sign can be any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or a combination of these. Unlike jurisdictions like the United States, the Singapore trademarks regime does not require evidence of use to be filed before a trade mark registration is granted.
- There is no time limit for filing according to the Trade Marks Act. However it should be noted that a suit for an infringement of a registered trademark is only possible if the trade mark is registered. A trademark registration takes effect from the date of filing. The validity period of a registered trademark in Singapore is 10 years, and can be renewed indefinitely at the end of each 10-year period.
- With the introduction of service mark registration, the classes have been extended from International Classification 35 to 45. As a result of the inclusion of service marks, the search for prior rights will now extend to cover: with respect to trade marks applied on goods, those services which are closely related to the goods for which registration is sought, and, with respect to service marks, the examination will include marks for goods which are closely related to those services.
Trademark registration procedure
The registrar of trademarks in Singapore has the duty of examining each trademark application to see if the trade mark is registrable. The registration process can take anywhere between 8 – 12 months, depending on whether there are objections or any other difficulties encountered.
Although, the owner can file a trade mark application directly, it is highly recommended that you engage the services of a professional firm to register your trade mark due to the complexity of paperwork and the procedure involved. Benefits of hiring a professional firm include:
- You will be able to minimize the likelihood of your application being rejected due to incomplete or incorrect filing.
- A professional firm would be able to respond competently to any clarifications sought by the trademark registrar or to any objections made during the trademark examination process, which can assist to increase chances of a successful registration.
- You will save a tremendous amount of personal time and effort required.
For guidance purposes, the steps involved in Singapore trademark registration are outlined below. If you have hired a professional firm, most of this work will be coordinated by the professionals.
Step 1: Identify class of goods/services
Before an application can be filed with the trademark office, an applicant has to decide on the types of goods/services for which trade mark registration is sought. Goods and services are appropriately classified from classes 1 to 45 under the International Classification of Goods and Services generally referred to as the “ICGS”.
Due care should be taken to ensure that the application is filed under the correct class. It will be necessary to file applications in more than one class, if the applicant deals in a wide range of goods or services.
Step 2: Self-search for possible conflicts
Application fees for trade mark registration are not refundable. Therefore, before filing an application, it is recommended that you first conduct a search of the existing trade marks in the records maintained by the Singapore Registry of Trade Marks. This is to ensure that there is no prior trade mark that is identical or similar to the one you intend to use, particularly in the area of your business.
Step 3: Application filing
The official filing fee for registration of a trade mark on a per mark per class basis is S$341. The goods and services listed in the application must conform to the International Classification of Goods and Services.
Step 4: Application checking for completeness and compliance
Once the trade mark application has been received, the trade marks office will review it to ensure that (a) the application is complete; (b) it complies with the provisions of the Trade Marks Act; and (c) the necessary fees have been paid. A trademark application number is allocated and will be provided once the application is filed.
If there is any ground for objection, the Registry will notify the applicant about the corrections required along with a specified period of time granted to overcome the objection. If the applicant fails to respond to objections within the granted period, the application would be considered withdrawn.
Step 5: Examination for conflicts with existing trademarks
Once the above step is complete, the registrar will conduct a formal search for conflicting marks, geographical names and conformance to the international classification of goods and services. In the case of pharmaceutical products, the Registry of Trade Marks will also need to check whether the mark consists of a protected International Non-Proprietary Name (INN). The INNs, furnished by the World Health Organization, are generic names for specific pharmaceutical substances.
If there are any objections found as a result of the above search, the trade mark registration application will be rejected. If the applicant wants to pursue it further, the applicant will have to modify/amend the trademark and submit a new application.
Step 6: Examination for conflicts with law
After the previous step is complete and successful, the application will be examined to determine whether the mark is registrable in accordance with Singapore Trademark Laws. The examiner will check to ensure that the mark does not fall into the areas not allowed by law, for example, marks that are devoid of any distinctive character.
The applicant will be notified of any objections found and a specified period of time will be granted to resolve the objections.
Step 7: Advertisement for public scrutiny
Upon completion of examination, the applicant will be informed of the acceptance of the application for registration and the application will be published for opposition purposes in the Trade Marks Journal. Any interested party may oppose the registration of the mark within two months of the publication. The grounds of opposition may include issues such as the application is similar to a registered or pending mark, etc.
If the trade marks office receives an objection from an opponent, the applicant will be notified and must respond with a counter-statement to resolve the objection. A decision on the application will be made after hearing both parties.
Step 8: Successful registration
If there were no objections from any party or if all the objections were resolved in favor of the applicant, the trade mark will be registered and a registration certificate will be issued to the applicant.
Singapore Trademark Registration FAQs
|Q. What is the validity period of a trademark registration in Singapore?|
|A. The registration of a trademark is valid for 10 years from the date of application. It can be renewed indefinitely for 10 years at a time by paying the applicable renewal fee.|
|Q. What are the typical causes of rejection?|
|A. Typical reasons for refusal of a trademark registration in Singapore include:
|Q. How long does it take to register a trademark in Singapore?|
|A. The registration process can take anywhere between 8 to 12 months.|
|Q.Do I need to register a trademark for each class of goods/services seperately?|
|A. For the purposes of trade mark registration, all of the known goods and services in the world have been classified into 45 classes. Trade mark registration should only be sought for goods and services that you are in the business of producing or providing. In Singapore, multi-class registration is now possible starting July 2, 2007. With a multiple-class system, the owners only need to submit one single application for all the applicable classes. This makes it more convenient for trademark owners and their agents, as they will be able to manage their trademark registrations in appropriate bundles instead of handling each registration individually. For example, only one registration will be necessary for all classes of goods and services claimed for the same trademark. These bundles of registrations can be assigned, renewed or licensed as bundles as well. The downside is that if one class faces an objection or encounters difficulty during the examination process, this immediately impacts the remaining classes in the application, thus delaying examination.|
|Q. Must I apply for a trade mark in Singapore before international registration?|
|A. To file for an international application under the Madrid Protocol, the trade mark must be registered first in the country of origin.|
|Q. What should I do if I wish to license my registered trademark to a third party?|
|A. As the owner of a registered trademark you may record the licencees in the Trade Marks Register. For more details, see Guide to Trademark Licence Registration in Singapore.|