About Trade Marks
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A Trade Mark is a sign used by a person in the course of business or trade to distinguish his goods or services from those of other traders. Registering a trade mark gives the owner rights to enable him to control the use of the sign.
A registered trade mark has to be capable of being represented graphically. This sign can be any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or a combination of these.
A certification mark is a sign used to distinguish goods or services certified by the mark owner from other non-certified goods or services. In relation to the certified goods or services, the certification can relate to a characteristic, such as an indication of the origin, material, mode of manufacture of the goods, or performances of services, quality, accuracy or other characteristics.
Unlike trade marks, certification marks are not applied by those who trade in the goods or services but by the one who certifies the particular characteristics of the goods or services.
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A collective mark is a sign used to distinguish the goods or services offered by members of an association or group of traders from goods or services of those who are non-members of the association. An association can file for the registration of a collective mark. Once registered, members of the association are allowed to use the collective mark.
A collective mark represents membership of the provider of goods or services to a particular association. |
IPOS maintains a separate database for logos and other devices of government bodies, statutory boards or institutions that may not qualify as trade marks either because they are not used or proposed to be used in the course of trade or no goods or services are provided.
When a logo in this database is identical or similar to a trade mark sought to be registered, IPOS will request that the applicant seek the consent of the relevant government body or institution that has an interest in the logo. |
® and ™ are common symbols associated with trade marks. ® indicates that the mark is a registered trade mark and hence protected under the trade mark law. ™ is just a symbol used to indicate that the mark is being used by the company as a trade mark. It does not denote that the mark is registered nor protected under the trade mark law.
Although it is not compulsory to register a trade mark in order to use it, a trade mark registration adds great value to a business. By filing for trade mark registration, the trade mark owner obtains a right to ownership and the right to prevent others from using a similar mark without his permission. (see "Not Registering a Trade Mark" for more information on the common law action of "passing off" for trade mark protection).
The owner of the registered trade mark can exploit his mark in many ways. He may use it to better protect his market share (i.e. his profits) by barring others from copying it; he may license it to third parties for commercial returns (e.g. through a franchise); he may sell the mark outright for a specified value (e.g. in a company acquisition); or he may use the mark to raise equity for his business undertakings.
A trade mark can be letters, words, names, signatures, numerals, devices, brands, labels, tickets, shapes, colours, aspects of packaging or any combination of these. For a trade mark to be registered, it must be distinctive and capable of distinguishing the goods and/or services of the owner from similar goods and/or services of other traders.
The following are some common examples of the marks that cannot be registered under the trade mark law in Singapore:
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Marks that describe the goods and services of the business. For instance, marks that describe the quality ('Super' or 'Best'), quantity ('One dozen'), value ('Cheap'), intended purpose ('Cleaner'), or geographical origin.
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Marks that are signs or indications that are or have become customary in the trade. Some marks have become so well accepted that the term is used to describe the type of the goods or services in general, and no longer serves to distinguish the products offered. An example of a trade mark that has become customary in the industry is "escalator". |
Marks that are generally contrary to public policy or morality. For example, a mark that could promote immoral behaviour cannot be registered. |
Marks that attempt to deceive the public. For example, marks that misrepresent the nature, quality or geographical origin of the goods or services. |
A trade mark will not be registered if it is identical with an earlier mark and the goods or services for which the trade mark is sought to be registered are identical with the goods or services for which the earlier mark is protected.. |
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A trade mark may not be registered if it is likely to cause the public to be confused under these circumstances:
- it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier mark is protected;
- it is similar to an earlier trade mark and is to be registered for goods or services identical with those for which the earlier mark is protected; or
- it is similar to an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected.
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A trade mark may not be registered if it is identical or similar to an earlier mark that is well known in Singapore. (see "Well Known Marks")
>> IPOS provides public access to its records of trade mark applications and trade marks registered in Singapore. Any member of the public may access these records at the Public Search Area at IPOS or via eTradeMarks.
In general, trade marks that do not have a distinctive character cannot be registered. However, there may be exceptions where the company has built up its branding to such an extent that the mark is associated with the company, even though the mark in itself was not distinctive. For such cases, the mark may still be registered on the basis of substantial use resulting in the mark acquiring a distinctive character. "Sharp" (for televisions) and "Digital" (for computers) are examples of such marks. |
The scope of a trade mark registration is determined by the goods or services in relation to which the trade mark is registered. For the purpose of trade mark registration, Singapore uses the International Classification of Goods and Services as prescribed by the Nice Agreement to classify trade mark registrations.
The Nice Agreement is an international agreement on classification of goods and services to which Singapore is a party. This classification sets out the list of goods and services for which the applicant may wish to register for in relation to his trade mark. The list groups these goods and services into classes in which these goods and services belong. There are a total of 34 classes of goods and 11 classes of services.
>> The Nice Classification is a tool for the classification of goods and services for the purposes of the registration of marks. It is used in more than 140 countries worldwide and in international applications for the registration of marks under the Madrid Agreement and Protocol.
It is not compulsory to register a trade mark in Singapore. An individual, firm or company, who owns a trade mark and uses it in connection with his goods or services, acquires common law rights in that mark by virtue of the use and reputation of the mark.
>> Common law generally refers to the law based on past decisions and general principles, serving as precedent or is applied to situations not covered by statutes.
For a mark that is not registered, the owner can only rely on the common law action of "passing off" to protect his mark against imitation or infringement. This remedy, however, requires the owner of the mark to prove his reputation and goodwill. The requirement of proving reputation and goodwill may pose some problems where the business, or the use of the trade mark, has not been established for a substantial period of time.
A registered trade mark, on the other hand, grants the owner of the trade mark a statutory monopoly. If someone else uses the same or a similar mark on the same or similar goods or services in respect of which the mark is registered, the registered trade mark owner can rely on his registration as proof of his right to the mark and sue for infringement.
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