Unlike patents or registered designs, trade marks that are already in use may still be registered. There is no time limit as to when the owner may apply for a registration. Although there is no time limit for filing, it should be noted that a suit for an infringement of a registered trade mark is only possible if the trade mark is registered. A trade mark registration takes effect from the date of filing.
Singapore, like many countries, allows priority claims in trade mark applications. If an applicant has a corresponding application filed earlier in a Paris Convention country or a World Trade Organization member country (other than Singapore), he may claim priority from this first-filed application, provided the Singapore registration is filed within six months from the date of the first filing. When a priority is claimed, the filing date in Singapore dates back to the date of the first filing.
Similarly, an application which is first filed in Singapore can be used to claim priority in a corresponding application filed in a Paris Convention country or a World Trade Organization member country, provided that the corresponding application is filed within six months from the date of the first-filed Singapore application.
>> The corresponding application is a separate application filed outside Singapore for the same trade mark.
The applicant may file the application form and pay the prescribed fee electronically via eTradeMark or directly to the Intellectual Property Office of Singapore.
The applicant needs to furnish the following information to obtain a filing date: (1) a statement that a request for registration is sought, (2) name and address of the applicant, (3) a clear graphical representation of the mark, (4) a list of goods and services sought for registration, classified according to the International Classification of Goods and Services, (5) a declaration of use/intent to use the trade mark, and (6) the prescribed fee. From 2nd July 2007, the applicant may file for registration in one application in respect of several classes of goods or services. When several classes of goods or services are filed in one application, the application leads to only one registration.
The application will be processed when the above particulars are furnished in the prescribed form.
- For marks comprising of a three-dimensional shape of the goods or packaging, the representation may be represented by line drawings. If a single-view line drawing is insufficient, multiple aspect views but up to a maximum of six views should be provided.
- For marks with non-English words and/or non-Roman characters, the English translation and/or transliteration (i.e. pronunciation) must be given in the application
>> Before filing an application for the registration of a trade mark in Singapore, it is advisable to first conduct a search of the existing trade marks in the records maintained by the Registry of Trade Marks. This is to ensure that there is no prior trade mark that is identical or similar to the one you intend to use, particularly in the area of your business. The search can be conducted at the IPOS Public Search Area or via eTradeMarks.
>> In Singapore, the application process for the registration of collective marks and certification marks is similar to the trade mark process. However, the applications must be accompanied by a set of Regulations governing the use of the collective and certification marks within nine months from the date of filing the application.
Please refer to the First and Second Schedules of the Trade Marks Act (Cap. 332, 2005 Ed.) for the requirements for the registration of collective marks and certification marks. The marks are published in the Trade Marks Journal in a separate section titled "Collective and Certification Marks Applications Published for Opposition Purposes" for opposition purposes before protection is granted.
If the applicant wishes to claim priority, the claim has to be made at the point of filing the application. It is possible to claim priority from more than one priority application, or for some but not all the goods or services in the priority application. Priority documents and translations (if applicable) will only need to be furnished if it is requested for by the Registry of Trade Marks.
An address for service in Singapore must be provided in all trade mark applications. This is the address to which all correspondences from the Registry of Trade Marks will be sent. Where there is a change in the address for service, the applicant has to notify the Registry of Trade Marks by filing the relevant form with the prescribed fee.
The application should be processed and examined within one to two months of the filing date, and we will inform the Applicant in writing if the application is in order for acceptance and publication, or if there are objections affecting the application.
All forms are available at the Registry of Trade Marks and are downloadable here.
The application may be sent to the Registry of Trade Marks by hand, mailed to the address below or electronically filed using eTradeMarks.
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Address:
Registrar of Trade Marks, Registry of Trade Marks
Intellectual Property Office of Singapore
51 Bras Basah Road, #04-01 Plaza By The Park, Singapore 189554
Registry's operating hours :
Monday to Friday: 8:30am to 5:30pm
Saturday, Sunday and Public Holiday: CLOSED
Cashier's operating hours :
Monday to Friday: 8:30am to 5:00pm
Payment can be made by NETS, cashcard, GIRO, cheque (crossed), money order and bank draft (in Singapore dollars) made out to Intellectual Property Office of Singapore. For submission by mail, the application form must be completed and duly signed together with all the required documents and a cheque/money order/bank draft/request for GIRO payment.
Customer Enquiry Hotline : (65) 6339 8616
Fax : (65) 6339 0252
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Flowchart of a Trade Mark Application
The Registry of Trade Marks would conduct a formalities examination upon receipt of the application and fees. This entails a check that the application contains the minimum required information and the fee paid, whereupon a trade mark number and a filing date will be allocated. The application is also checked if it is made in the prescribed form and that the classification of goods and services has been indicated.
After the application has passed the formalities examination, the Trade Mark Examiners in the Registry of Trade Marks will conduct a search to see if the mark applied for looks or sounds the same as any other trade mark which is already registered or has already been applied for by someone else for the same or similar goods or services. The examiners will also search to see if the mark consists of or contains a geographical name. In the case of pharmaceutical products, the Registry of Trade Marks will also need to check whether the mark consists of a protected International Non-Proprietary Name (INN). The INNs, furnished by the World Health Organization, are generic names for specific pharmaceutical substances. All of the above may give rise to grounds for objections raised against the trade mark application.
In addition, the specification of goods or services will be checked to ensure that it conforms to the International Classification of Goods and Services. A wrong classification will result in the application being rejected by the Registrar and a fresh application may have to be filed. From the applicant's perspective, a wrong classification may result in the applicant's mark not being asserted in priority vis-à-vis later applications.
After the searches have been conducted, the application will be examined to determine whether the mark is registrable in accordance with the law. The examiner will check to ensure that the mark does not fall into the areas not allowed by law, for example, marks that are devoid of any distinctive character.
If the examiners have any objections to the mark, they will inform the applicant of their objections, and grant the applicant a specified period of time in which to overcome the objection. The applicant may also request for an extension of time in which to answer such objections.
Once the objections have been overcome, or if there are no objections, the applicant will be informed of the acceptance of the application for registration and the acceptance will be published for public information in the Trade Marks Journal. Any interested party may oppose the registration of the mark within two months of the publication.
>> The latest Trade Marks Journal may be downloaded from eTradeMarks.
Opposition is the process whereby members of the public, or any interested third party may object to the grant of a trade mark registration if they have valid grounds for doing so. The grounds of opposition may include issues such as the application is similar to a registered or pending mark, and so forth.
Once a notice of objection is received, the applicant must respond with a counter-statement to resolve the objection. Both the applicant and opponent must supply evidence to support their respective case. The parties will then appear before the Registrar or the appointed representative from the Registry of Trade Marks, whereupon a decision on the application will be made after hearing both parties. After the hearing, the Registrar will give the grounds of decision based on the information and evidence presented by both parties.
>> Summaries of the recent hearing decisions are available here.
>> FAQ: How do I oppose the registration of a trade mark?
If the opposition to the registration is resolved in favour of the applicant, or if there are no opposition, the trade mark will be registered and a registration certificate will be issued.
The registration of a trade mark is valid for 10 years from the date of application. Protection can last indefinitely subject to the payment of renewal fees every 10 years, and with proper use of the mark.
Any interested party may apply to rectify or amend an error in the Register.
The registration of a trade mark may be revoked on any of the following grounds:
- without valid reasons, the owner of the registered mark has not commenced use of the mark within a period of five years after the completion of the registration procedure;
- without valid reasons, the use of the mark was suspended for an uninterrupted period of 5 years;
- due to the owner's act or inactivity, the mark has become a common name in the trade for the goods or services which it is registered; and/or
- the manner in which the mark was used would mislead the public, particularly as to the nature, quality or geographical origin of the goods or services applied for.
The registration of a trade mark may be declared invalid on the following grounds that:
- it is in breach of the basic requirements of a trade mark registration as specified in the Trade Marks Act;
- it is in conflict with an earlier mark;
- there is fraud in the registration; and/or
- there is a misrepresentation in the course of the trade mark application.
The Registry of Trade Marks allows for alteration to the name or address of the applicant in the mark if the mark comprises such elements as long as the alteration does not affect the identity of the registered mark substantially. An alteration of the mark in any other respect will not be allowed and a fresh application will have to be lodged.
An application may be submitted to the Registry of Trade Marks to cancel some or all of the goods or services for which the mark is registered.