1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. Registration of a trademark grants the proprietor of the trademark registration exclusive rights to the use of the trademark and to authorize others to use the trademark in relation to the goods and services for which the trademark is registered. The risk of not registering is that it allows others to register an identical or similar mark that could impede the ability to use or register the mark in Singapore. Registration is prima facie evidence of ownership and validity.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. As discussed below, the legal benefits of registration may not be available otherwise. Furthermore, the burden of proof is much greater to enforce rights in an unregistered trademark.
3. What is registrable?
Any distinctive sign capable of being represented graphically that includes a letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, color, aspect of packaging or any combination thereof, may be registered for goods or services.
4. Can a trademark be registered for retail and like services?
Yes.
5. How are domain names protected?
It is possible to register a domain name as a trademark, subject to the domain name satisfying the local trademark registration criteria.
6. Should a trademark be searched before filing?
Applications are officially searched as to prior marks, but this takes several months. If the applicant does not make a prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting a Singapore trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide one specimen of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, and a list of goods/services to be covered. Five specimens are required if the mark is in color.
9. Is local registration the only option, or are there international alternatives?
A Singapore application only has effect in Singapore. Singapore has acceded to the Madrid Protocol.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
It is now possible to file a multiclass application in Singapore, i.e., one application, specifying two or more classes of goods and/or services. However, separate application numbers are issued for each class covered and the application proceeds very much as separate, individual applications.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a Singapore application, the filing date of the home application can be claimed as the filing date in Singapore. Similarly, if an applicant抯 home country is a member of the World Trade Organization it is possible to claim the home filing date.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years following the date of completion of the registration procedure-this usually corresponds with the date of issue of the certificate of registration. If not, the registration will become vulnerable to revocation for nonuse. However, late use after five years may cure nonuse, provided that in the interim no third party has filed an action for revocation of the registration based on nonuse.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not sufficiently affect the identity of the mark, use of the different form would not affect the enforceability of the registration. However, if the difference is significant, a new application may be necessary because it is generally not possible to amend a registration. A Singapore trademark attorney should be consulted on this issue.
14. Is there any advantage to using a trademark before filing an application?
Yes. Use of the mark is always advantageous and the first person to use a mark has the right to such mark, even if another subsequently registers it. Prior use of the mark is, however, not a requirement for filing, although it can help achieve registration of a mark that might otherwise be nondistinctive and, therefore, unregistrable. Where prior use is extensive, it is possible to stop third parties from using an identical or similar mark by bringing an action for passing off.
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone using or having an intention to use the mark, either directly or through a licensee, may apply.
16. What information is first published about an application/ registration and when is it published?
An application is first published for opposition purposes after it has cleared the substantive examination stage of prosecution. Details published include a representation of the mark, the application number, the specification of goods/services covered, the name and address of the applicant and the name and address of the trademark agent handling the application.
17. What kind of examination (if any) will a new application undergo?
The application is examined to determine if the mark complies with local rules as to distinctiveness and deceptiveness. An official search is also conducted for prior conflicting marks that can be cited against the application.
18. What response to official objections is required?
The response time to an office action is usually four months, and an extension of four months is available. Responses to official objections can be made by way of filing arguments with the Registry, and depending upon the nature of the objection, it may be necessary to submit evidence of use or the consent of the proprietor of earlier cited marks.
19. How long is the registration process?
If there are no objections, the registration process takes approximately 3 to 12 months.
20. What rights does an application confer?
The application can be officially cited against, or used to oppose, a subsequent conflicting application.
21. What is the legal effect of a registration?
Registration entitles the registrant to file infringement suits against unauthorized third-party users, to oppose subsequent applications, and to cancel other subsequent registrations. It also enables the registrant to obtain an injunction against unauthorized use and to seize the goods.
22. Can an application be opposed or cancelled by third parties?
Yes. Any person can, within two months from the date of publication of the application, file an opposition. A maximum period of four months from the publication date can be granted to the opponent to file a notice of opposition, but this is subject to consent from the other party.
23. Can an application or registration be assigned?
Yes. The Trade Marks Act provides that applications and registrations are assignable and transmissible in the same way as other personal or movable property.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
It is not compulsory to record an assignment but it is strongly advisable to do so as registration of the assignment is prima facie evidence of the validity of the assignment. Furthermore, until the assignment is recorded, the transaction is ineffective against a person acquiring a conflicting interest in or under the application for registration of the trademark in ignorance of it.
26. Can an application or registration be licensed?
An application or registration may be licensed to a third party by the applicant/registrant. The applicant/registrant should, however, exercise control over the use of the trademark and the quality of the goods and services produced by the licensee. Consult a Singapore trademark attorney.
27. Does a license have to be recorded?
Recordation of licenses is not mandatory although a license is not effective unless it is in writing and signed by or on behalf of the grantor. However, it is strongly advisable to record a license when applying for registration where the only intended use of the mark is by the licensee, to avoid possible loss of rights.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Singapore.
29. How long does a registration last?
The term of registration is ten years from the date of application, and is renewable for periods of ten years each.
30. What is required to renew a registration?
Completion of a renewal application form and payment of the renewal fee before the expiration date are required.
31. Is it necessary to indicate a trademark registration on goods or services?
No. The marking 揜egistered Trademark?is optional.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes. the website address is http://www.ipos.gov.sg/. |
