How Do I Register a Trade Mark in Singapore?

It is no April Fools’ joke. Starting 1 April 2017, the Intellectual Property Office of Singapore (“IPOS”) will reduce fees for those seeking to register a trade mark in Singapore. According to a Straits Times report, owners applying for trademarks using a pre-approved list of goods and services will receive a 30% discount. On the other hand, renewal fees will increase, but IPOS has reassured owners  that the fee adjustment will result in a net cost reduction when the various stages in the life cycle of protecting a trade mark are considered.

To assist owners in taking advantage of this cost reduction, this article will focus on four topics:

1. How long does trade mark protection last for?
2. How do you register a trade mark?
3. How do you renew a trade mark?
4. How do you grant others a licence to use your trade mark?

How Long Does Trade Mark Protection Last?

Registered owners of trademarks enjoy continued  protection of their trade mark in Singapore if they register it with IPOS, and the trade mark is  renewable every 10 years.

However, one must be aware that a registration of a trade mark does not mean that it may not be revoked. A registered trade mark may be revoked if it is subsequently shown that there was no genuine use within 5 years, or non-use for an uninterrupted period of 5 years from the completion of registration and if there is no proper reason for non-use.

This is to prevent ‘trade mark trolls’ from hoarding trademarks to prevent other legitimate owners from using and registering trademarks. Trade mark trolls are people who register trademarks with no intention to use them, and then threaten to sue others who try to use or register those trademarks.

A famous example is that of Philip Morris and the Merit brand of cigarettes. Philip Morris had been unable to register “MERIT” as a trade mark for cigarettes as it was a laudatory term. To prevent others from using the mark “MERIT”, they registered “NERIT” and produced a token amount of NERIT cigarettes for sale every year. The Court held that “NERIT” was not registered with a genuine intention to use it, but merely to prevent others from using “MERIT”.

How Do you Register a Trade Mark?

A brief overview of the registration process is as follows:

• Individual or Company must be the owner and genuinely intends to use mark in course of trade
• File application in Form TM4 (available on ip2.sg) attaching
  • Clear graphical representation of the trade mark;
  • Stating your name;
  • Address; and
  • Goods and services for which it would be used
    • There are a total of 34 goods and 11 services classes
    • These classes are very comprehensive, making it easy to qualify for the April 1 30% discount.
    • The classes may be viewed here
  • Pay S$341 per class if applying online via ip2.sg, or S$374 per class via a paper application
  • IPOS will conduct a formalities check and if all is well, a filing date will be accorded and a mark number will be issued after 15 days
  • IPOS will conduct an examination if the mark is registrable in accordance with the Trade mark Act
    • This examination report will be out after 4 months
    • If the mark is acceptable, it will be published in the Trade Mark Journal where interested parties may oppose registration of the mark within 2 months
      • If there is opposition, an opposition hearing may be conducted if parties are unable to settle
    • If the mark is unacceptable, the examination report will state grounds for non-acceptance and the applicant must respond within 4 months
      • The applicant may apply to extend time via Form CM5 (no cost)
    • If there is no successful opposition, the registration certificate will be issued and the trade mark will be protected for 10 years

How to Renew a Trade Mark

Using ip2.sg, via Form TM19, you may submit an application online to renew the trade mark every 10 years at a cost of S$250 per class.

Registering a Trade Mark Overseas

To register a trade mark overseas, you can either:

• Individually approach the trade mark offices of each country you want to register your trade mark in; or
• File a trade mark application under the Madrid Protocol using your Singapore trade mark registration

The Madrid Protocol option is more convenient and cost-efficient as you can use a single application to register your trade mark in more than one overseas country at the same time. For more information on how to do so, read our article on registering trade marks internationally using the Madrid Protocol.

How Do You Grant Others a Licence to Use Your Trade Mark?

Granting others (the “licensee”) a licence to use your trade mark is useful when you want to promote it but do not have the resources to do it yourself. It may also be useful when parties enter distributorship agreements and require the use of each other’s marks.

Granting a licence to a licensee is done via a licensing agreement, which is like any other contract. The owner may choose to grant the licensee an exclusive licence which only allows the licensee and no one else (other than the owner) to use the trade mark. The exclusive licence is usually limited to a certain country. The owner may also choose to grant a non-exclusive licence, which allows him to grant multiple licences to add as many licensees as he wants. The licence also specifies the royalties due to the owner. For partnership agreements, royalty-free licences to use each other’s’ trademarks are usually granted. The owner may also choose to limit the use of the licence by the licensee to a particular purpose. The owner may also choose to grant a non-transferable licence, which prevents the licensee from entering other contacts to sub-licence the licence to a third party.

There are many other terms unique to a licensing agreement and it is recommended that an experienced intellectual property lawyer be consulted should you wish to draft one.

You may also register a record of your licensing agreement with IPOS on ip2.sg via Form CM6 which costs S$60 for each trade mark. This registration is advantageous as it gives any potential infringers constructive knowledge of such a licensing agreement. This means that these  infringers cannot claim that they were not aware of the licensing agreement when the licensee chooses to take legal action against them.

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It is possible for a layman to register a trade mark for himself. All he needs is a SingPass to log into ip2.sg, or use the IPOS Go mobile app.

However, care must be taken to ensure that formalities are complied with. He must also know how to respond adequately to objections by trade mark examiners in IPOS. Objections occur when the trade mark examiners think that a particular trade mark cannot be registered for a particular class of goods or services because, at first glance, it does not comply with the substantive law.

In addition, one must also be adequately able to respond to opposition by other trade mark owners, who think that your mark may be similar to theirs. For this reason, many owners seeking to register their trade mark often consult experienced intellectual property lawyers who can handle these complications for them.