Guide To Trademark Registration In Singapore
The Singapore Trade Marks Act was enacted in 1998 to bring the city-state’s laws relating to trade marks into line with its new obligations under the Paris Convention for the Protection of Intellectual Property. All matters relating to registration of trademarks in Singapore is handled by the Intellectual Property Office of Singapore (IPOS), a statutory body established under the Ministry of Law.
The country is currently an active signatory to the following relevant international conventions on protection and registration of trademarks:
- Paris Convention
- Madrid Protocol
- Patent Cooperation Treaty
- WIPO Copyright Treaty
- International Convention for the Protection of New Varieties of Plants otherwise known as the “UPOV Convention”
- Singapore Treaty on the Law of Trademarks
- Berne Convention
- Nice Agreement
- Budapest Treaty
- WIPO Performances and Phonograms Treaty
- The Geneva Act (1999) of the Hague Agreement concerning the International Registration of Industrial Design
This guide has been written to provide an introduction to the Trade Marks Act of Singapore and the procedures relating to trademark registration in Singapore.
Key features of the Trade Marks Act
While it is not mandatory for traders to register a trademark in order to use it under Singaporean law, registration provides significant value for the holder of a trademark. Filing for registration grants the owner a right to ownership and the right to prevent others from using identical or substantially similar marks without the owner’s permission.
Key features of the Act:
- Registration of a trade mark under the Trade Marks Act is only effective within Singapore. Protection of a trade mark is territorial, meaning that obtaining trade mark rights and protection in other countries requires either registering the trade mark in those countries or the pursuit of international trade mark registration under the Madrid Protocol. As Singapore is a signatory of the Madrid Protocol, trade mark holders may file an international application through IPOS after filing the trademark in Singapore. For further details, please refer to Worldwide Trademark Registration through Singapore Trademark Office.
- To qualify as a trade mark, the trade mark must be able to graphically represented. Most forms of representation are accepted, and the sign can be any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging, or any combination of these elements. Singapore does not require that the applicant provide evidence of use prior to registration being granted, unlike jurisdictions such as the United States.
- The Trade Marks Act makes no time limit for filing an application, however entities may only file a suit for infringement of a trademark where the trade mark has been registered. Registration takes effect from the date of filing, and trademarks are registered for an indefinitely-renewable validity period of 10 years.
- The classes have been extended from International Classification 35 to 45 after the introduction of service mark registration. As a result, the search for prior rights has been extended to cover the following: 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.
Registration procedure for trademarks
In Singapore, the duty of examining each trademark application falls to the registrar for trademarks. The examination process determines whether or not the trade mark is permitted to be registered. This process can take anywhere between eight and twelve months, largely determined by whether or not any objections are submitted or other difficulties with the registration process encountered.
While anyone can file a trade mark in their name, it is recommended that individuals contract a professional firm for the application process because of the complexity of the documentation and procedure involved. Trade mark holders benefit in the following ways from hiring a professional firm:
- It minimises the likelihood of rejection due to incorrect paperwork or incomplete filing.
- Professional firms are much more capable of effectively responding to objections made during the examination process and attempts at seeking clarification made by the trademark registrar, increasing the likelihood of success.
- Your personal time and effort is saved for pursuing business relating to the trademark.
The steps involved in registering a trademark in Singapore are outline below – should you hire a professional firm, the majority of the below will be conducted by their staff. This outline is provided for guidance purposes; if you want personal advice, discuss your circumstances with an Ottavia consultant.
Step 1: Identifying the class of goods or services
Prior to filing an application with the trademark office, applicants are required to decide on the type of goods and services for which trade mark registration is sought. The International Classification of Goods and Services classes goods and services from 1 to 45.
It is critical that applicants file under the correct class. Should the applicant deal in a wide range of goods and services it may be necessary to file an application under multiple classes.
Step 2: Self-directed search for possible conflicts with existing trade marks
The application fee for registering a trade mark is not refundable should your application be unsuccessful. Prior to filing an application, applicants are advised to conduct a thorough search of existing trade marks as recorded by the Singapore Registry of Trade Marks. Conducting your own search beforehand can alert you to potential conflicts with existing trade marks that are identical or substantially similar to one you intend to use, especially where you share an industry or area of business with the owner of the similar trade mark.
Step 3: Filing the application
Filing fees are S$341 per class of goods or services via online filing, or S$374 by manual filing. Any goods and services listed in your application are required to conform to the International Classification of Goods and Services.
Step 4: Application is checked for incompliance or missing information
Upon receiving your trade mark application, the trade marks office will review it to ensure that your application is complete, is in compliance with the provisions stipulated in the Trade Marks Act and that the necessary filing fees have been paid. Approximately two weeks after filing, you will receive a trademark application number and a date of application filing.
Should there be any grounds for objection, you will be notified by the Registry about the nature of the corrections required, and given a pre-determined period of time in which to provide the corrections and overcome the objection. Should you fail to respond within the granted period of time, the trade marks office will consider your application to be withdrawn.
Step 5: Examination for conflicts with existing trade marks
Upon completing the above step, the registrar will commence a formal search for conflicts with your requested trade mark and will scrutinise it for conformance with the international classification of goods and services. These could take the form of other trade marks, geographical names or – in the case of pharmaceutical products – protected International Non-Proprietary Names (INN). The list of INNs is maintained by the World Health Organisation and are generic names for specific pharmaceutical substances.
Should the registrar’s search find any objections, your application for trade mark registration will be rejected. Should you wish to pursue your application beyond this point, you will be required to modify or amend the trademark and the application and resubmit an application, paying a new filing fee.
Step 6: Examination for statutory and regulatory compliance
Should the application not be found to conflict with any other previously registered or protected mark, the registrar will examine it to determine if it is in compliance with Singapore Trademark Laws. Applications can be rejected where marks fall into areas prohibited under the law, such as marks that lack a distinctive character.
Should objections be found, the applicant will be notified of the nature of them and provided with time to reach a resolution.
Step 7: Advertisement for public scrutiny
After the examination process has been completed, the applicant will be notified of the application’s acceptance for registration and will be published in the Trade Marks Journal for opposition purposes. Any interested party is permitted to oppose the registration of the trade mark within two months of its publication in the Journal. Reasonable grounds for opposition include the belief that the application is substantially similar to a registered or pending mark held by the other party, etc.
Should an objection be received by the trade marks office, the applicant will be notified of the objection and provided with a summary of it, and is required to respond with a counter-statement to resolve the objection. After hearing summaries from both parties, the trade marks office will make a decision.
Step 8: Successful registration
Should no objections be received or all objections successfully resolved in the applicant’s favour, the trade mark will be successfully registered and a certificate of registration issued to the applicant.
Trademark Registration FAQs
How long is the validity period of a registered trademark in Singapore?
Trademark registration is considered to be valid for a period of 10 years starting from the date of application, but can be renewed indefinitely for 10 years at a time near the conclusion of each period by paying a renewal fee.
What are some common reasons that a trademark registration application would be rejected?
Typically, trademark registration applications are rejected by the trade mark office for:
- Being substantially similar to a pre-registered trademark
- Not being capable of uniquely distinguishing the goods or services for which the applicant seeks registration from those goods or services provided by another trader.
How long does it take to register a trademark?
Depending on objections faced and the completeness of information provided by the applicant, the registration process can take between eight and twelve months.
Do multiple applications need to be made for each class of good or service?
To simplify the process of registering a trade mark, all known goods and services have been placed into one of 45 classes. Only goods and services that your business is engaged in producing or providing are eligible for trade mark registration. From July 2, 2007, multi-class registration has been made available, allowing owners of trade marks to submit a single application for all the classes that their provided goods or services cover. This streamlines the process for both applicant and trade mark agent, as registrations are now handled in bundles of similar applications rather than individually. Only a single registration is necessary for all classes of goods and services claimed for the same trademark. Registration can be assigned, renewed or licensed as bundles as well.
Can I register a trademark internationally prior to registering in Singapore?
No. Filing for an international trade mark application under the Madrid Protocol requires that the trade mark is first registered in its country of origin.
How does licensing a registered trademark to a third-party work?
Licensees to a registered trademark can be recorded by the owner in the Trade Marks Register. Please see our guide to trademark licence registration in Singapore for further information.