This guide aims to cover the basics of trademark registration in Singapore. The trade marks act 1998 and trademark rules were published to enable Singapore to be aligned with those international conventions on intellectual property. The intellectual property office of Singapore (IPOS) handles all trademark registration within the country.
Relin Consultants can assist you to set up a Singapore company and register for a trademark in Singapore.
WHAT ARE THE TRADEMARKS THAT CAN BE REGISTERED IN SINGAPORE?
Trademark is defined as a sign that can be used in the course of business or trade to distinguish one person’s goods or services apart from others.
Trademarks can be in the form of a letter, word, name, signature, numeral, device, brand, heading, label, form, color, a feature of packaging, or a combination of all of the above. Once a Singapore company successfully registers for the trademark, the trademark will be deemed as the property of the company. Singapore government allows a trademark to be licensed or transferred.
The most common way to identify a trademark symbol on a business is by the symbol of ® and TM.
® indicates that the company’s trademark is registered and protected under the trademark law.
TM symbolizes that the business did not necessarily register its trademark under the trademark law.
To qualify as a trade mark, it must meet the following characteristic:
- The sign must be capable of being represented graphically; and
- The sign must distinguish the goods or services dealt with or provided in the course of trade by a person from those provided by another person.
WHO CAN APPLY FOR SINGAPORE TRADEMARK REGISTRATION?
Any individual or a company that is the trademark owner can file a trademark application directly with the authorities. However, it is advisable to engage a professional firm such as Relin Consultants to assist you with the registration process.
The trademark registration process in Singapore can take from 8 months to 12 months, depending on the type of application and the complexity.
Failure to timely respond to the trademark registrar with an incomplete or incorrect filing might further lengthen the application process. Applicants might have to re-submit the application if there are multiple errors in the application. Hence it is advisable to engage a consultant to assist you through the process.
The trademark application can be completed by filing and submitting the TM4 form either by visiting the IPOS Go Mobile App or via the IPOS Digital Site Hub.
HOW TO APPLY FOR TRADEMARK REGISTRATION IN SINGAPORE?
The trademark registration process might vary depending on the complexity of the application and if there are any objections. Generally, a Singapore company can complete the trademark registration in these few steps.
Step 1: Assess the trademark
Before registering the trademark, the applicant should assess and check whether the trademark fulfills the criteria.
Applicants are encouraged to search for similar existing marks through the Similar Mark Search on the registrar’s website to ensure that there are no existing marks belonging to another party, that are identical or similar to yours.
The applicant should determine the goods and services for which the application is sought. There are 45 classes of goods and services available for classification. The applicant can file for more than one class if required.
The applicant should seek professional advice at this stage if necessary, although it is not mandatory. The Singapore Registry of Trade Marks does not provide any legal advice to applicants on any matters. Hence it is worth consulting a professional if you are registering a trademark.
Step 2: Determine the registration options
Register trademark in Singapore
Applicants can submit the form TM4 via IPOS. The applicant must prepare all the mandatory documents. As per the registrar, the following are required.
- A declaration of your registration.
- Name and address information.
- A distinct and visible visual depiction of your brand. Line drawings must display all of the mark’s dimensions for markings purposes if the mark takes the form of a three-dimensional shape of the product or the product packaging.
- A list of the items and services registered under the trademark (including those classified under the International Classification of Goods and Services).
- An official statement outlining your planned and purposed use of the trademark.
Register trademark outside of Singapore
If the applicant wishes to register a trademark in countries outside of Singapore, the applicant may choose to make separate applications by applying directly with the IP offices in the respective countries or apply as a single international application via the Madrid Protocol.
The Madrid system is a platform that allows applicants from the 128 qualifying countries to register and manage trademarks worldwide. It acts as a convenient and cost-effective solution for applicants worldwide. You just have to file a single application and pay the fees to apply for protection in up to 128 countries.
The platform can also modify, renew or expand your global trademark portfolio through one centralized system. Singapore is one of the 128 countries in the Madrid protocol. You can refer to the following link for a list of countries.
Registering a trademark in Singapore from another country via Madrid Protocol
Applicants applying from another country and wishing to obtain trademark protection in Singapore can also designate Singapore in their international registration via the Madrid Protocol.
Step 3: Assessment process by the registrar
After the trademark application is submitted, IPOS will examine it to ensure it complies with the minimum filing criteria. The filing date will be recorded, and a trademark number will be assigned once the minimal filing conditions have been satisfied. This data is transmitted through the acknowledgment letter.
For an incomplete filing, a deficiency letter will be sent to you for correction of the issue within two months of the letter’s date. This due date is not extendable and is not up for any adjustment.
If the applicant fails to correct the errors or does so after the issuance of the deadline, IPOS will issue a letter informing the applicant that the application will be deemed never to have been made.
Once the above process is completed, the registrar will officially search for competing marks, geographical names, and compliance with the international categorization of products and services.
For pharmaceutical items, the trademarks registry will determine if the mark contains an international non-proprietary name that is protected (INN). The INNs are generic names for particular pharmacological compounds that are provided by the World Health Organization. The application will be assessed at this stage to see if the mark qualifies for registration under Singaporean trademark laws.
IPOS will send a letter outlining the refusals or requirements left out if the conditions are not met. Within 4 months after the issuance date of the IPOS refusal letter (if any), an answer must be filed.
A request for an extension of time must be made if more time is needed to respond to the IPOS letter. The trademark shall be regarded as withdrawn if no response or request for an extension of time is received within the allotted time frame.
Step 4: Publishing the trademark for review
After the assessment is completed, the application will be published and made accessible to the general public. The trademark will be advertised in the Trade Marks Journal. Any interested person or corporate may object to the mark’s registration within two months of the publication period.
The applicant will be informed of any opposition received by the trademark office and will have the opportunity to comment. After hearing from both sides, a decision about the application will be made.
If there is no opposition from any party, or if you win the opposition hearing, the certificate of registration will be issued, signifying that the trademark application is successful. The registered trademark will provide 10 years of validity of protection to the owner.
BENEFITS OF TRADEMARK REGISTRATION FOR YOUR BUSINESS
Although it is not mandatory to register a trademark, opting in to do so greatly increases the value of a company. If someone attempts to pass off their products and services as yours by using a brand that is similar to or identical to your company’s, trademark registration can provide you the advantages in the business field. A few of the other main benefits of trademark registration are as follows.
- The owner has the right to prevent third parties from using that mark or one that is nearly comparable without his consent.
- The owner may appear authentic in public and show genuine product ownership.
- The owner has the legal right to seek and recover damages from businesses that violate the trademark.
- A trademark registration lessens the possibility that someone would assert that your trademark infringes on theirs.
- It serves as a proper warning to interested parties who desire to file a similar or identical trademark.
Registering your business for a trademark poses a lot of benefits. The steps and procedures needed are relatively easy and not as arduous as one would have imagined. If you wish to expand your business to the public, registering for a trademark is a good idea as you can appear distinct and more memorable in the consumer’s eyes.
Can I License My Registered Trademark To A Third Party?
Yes, you can license your trademark to a third party. You may list the licensees in the trademarks register as the owner of a registered brand. This will allow all the third parties who wish to use your trademark can use it legally.
Can I Get My Registered Trademark Protected Other Than In Singapore?
The answer is Yes. The trademark protection is only applicable to the nation to that you apply it. Multiple application for a trademark is needed if you wish to apply it to several other countries. You can use the Madrid protocol to register in multiple countries.
Do I Need A Separate Trademark Registration For Each Class Of Goods/services?
No. Multi-class registration is now available in Singapore as of July 2, 2007. In a system with several classes, applicants must submit one application to cover all the relevant classes. The ability to handle their trademark registrations in appropriate bundles rather than managing each registration separately makes it more convenient for trademark owners and their representatives.
For all classes of products and services that the same trademark is claimed for, only one registration will be required. The only drawback is that if one class experiences opposition or has trouble during the test process, it will instantly affect all other courses in the application, delaying the examination.
How Much Is The Cost Of The Process Of Trademark Registration?
The formal filing fee for registering a trademark is $280 for each trademark in each class. Additional costs may incur depending on your situation and procedure during the registration process.
When Should I File For A Renewal License To The Trademark?
You can apply for a renewal to prolong the protection of your trademark for an additional 10 years, starting 6 months before the expiry of the current registration.
What Are The Typical Causes Of Rejection?
The most common cause for rejection is that there is an existing trademark that is very similar to the trademark being applied for. Other causes include incomplete paperwork or applications with multiple errors.
Must I Apply For A Trademark In Singapore Before International Registration?
No. You can apply for international registration via the Madrid protocol before trademark registration in Singapore.