What can I register as a trademark?
The trademark symbol figures prominently on many items, yet many of us do not fully understand what types of signs are eligible for protection under trademark law. This article will state the basic requirements for trademark registration before outlining the different types of signs that one can register as a trademark and those that cannot be registered.
Basic Requirements for Trademark Registration
Capable of graphic representation – According to section 2(1) of the Trade Marks Act (Cap 332), the mark in particular will first have to be capable of graphic representation. This means that the sign must be able to be represented in a visual manner for precise identification. Representation of the sign can be done in the form of characters, lines or images. Importantly, the representation has to satisfy the following criteria: precise, clear, self-contained, easily accessible and intelligible on the register, durable over the lifetime of registration and objective in nature.
Distinctiveness – The second requirement would be that of distinctiveness or distinctive character. In order to achieve this, the legal question to be asked is thus: is the mark able to do the job of distinguishing products or services marked with it as coming from the control of the same undertaking? If yes, then the mark is considered to be adequately distinctive. Notably, a sign can also be deemed distinctive through evidence of prior use in a distinctive manner as well.
Services or goods provided in course of trade – The mark will also have to involve services or goods provided in the course of trade. Trade refers to a business or a profession. As for the services or goods specifically, the Nice Agreement’s International Classification of Goods and Services system is used to set out the various classes of goods and services that would apply to the registration of a mark. There are 34 different classes of goods and 11 classes of services listed in total.
Types of Signs that can be registered as trademarks
If the basic requirements are satisfied, certain signs can be considered for registration as trade marks on their own or in various combinations. The signs include letters, words, names, signatures, labels, devices, tickets, shapes and colours. Famous word trade marks include Band-Aid and Ziploc.
A combination of these signs can also be registered as trade marks. Good examples are the Singapore Airlines logo and the Starbucks logo. Both logos involve an arrangement of words with images and their own distinctive colours. Another example is that of Nike which has the famous image of its unique tick together with an invented word.
Some signs are considered unconventional and may not be easily determined as worthy of trade mark registration. These signs include shapes, colours, sounds and scents. I will briefly elaborate on each type of signs and the reasons for difficulty in registering them.
An example of such unconventional signs is that of shapes. Both two-dimensional and three-dimensional shapes can be registered as trade marks. The difficulty with shape marks typically lies with satisfying the distinctiveness requirement. Often enough, the shape is a natural feature of a particular good and thus cannot be deemed as distinctive. For instance, the shape of a banana cannot be registered as a trade mark for a banana as a good. However, if the banana has been genetically modified to look like a star, the star shape may be registrable as a trade mark for the banana.
As for colour marks, there is no limit on the type of colour that can be registered as a trade mark. There is also no limit on the number of colours that can be combined or arranged together to be registered. However, the difficulty lies with the public interest against undue restriction of the availability of colours for the other traders who offers the same goods or services. The use of the colour as a unique feature of the good or service will have to be substantially justified in order for it to satisfy the distinctiveness requirement. It would also be favourable for the registrant if he could make reference to an international coding system for the colour in particular. In addition, any arrangement of colours cannot be done in an ad-hoc manner- it will have to be done in a pre-determined and uniform way.
With regards to sound marks, the graphical representation of it will have to be precise. The Intellectual Property Office of Singapore (IPOS) has clarified that it has to consist of a representation by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals. Mere words that state the sounds such as “the first nine notes of Fur Elise” will not suffice.
Scent marks represent a relatively niche type of marks that have only recently been recognized. For such marks, it can only be registered if it is possible for the public to identify the goods and services of a trader through that particular scent. The standard to be met for graphical representation has however not been defined by courts. In a recent European Court of Justice case which has applicability in Singapore, the judge stated that the requirements of graphic representability are not satisfied by a chemical formula, by description in words, by the deposit of an odour sample or by a combination of those elements. The registrability of scent marks therefore remains ambiguous.
Types of Signs that cannot be registered
Sections 7 and 8 of the Trade Marks Act cover the grounds of refusal for the registration of a sign. If a sign does not meet the basic requirements, is illegal in nature or is made in bad faith, it cannot be registered as a trade mark. If a sign is identical or similar to another earlier trade mark registered in Singapore leading to the possibility of confusion, the registration will likely be refused as well.
A useful example of similarity as a ground for refusal would be a recent IPOS judgment, which involved MMC International’s (MMC) attempt to register a trademark for eyewear related goods being opposed by Abercrombie & Fitch (A & F). A & F was successful as the signs MMC was trying to register as trade marks were identical to those already registered by A & F. There was also a connection between the class of goods indicated in MMC’s application and that of A & F’s trade mark.
In step with the advent of technology, the trade mark protection regime in Singapore has accordingly expanded to account for more signs. Trade mark protection is crucial for many businesses, which rely heavily on their branding. Nonetheless, given the considerable criteria to satisfy and relatively technical application process, it would be prudent to consult with a legal professional before undertaking any trademark application.
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