General
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(Circular No. 5/2009, dated 24 April 2009)
The Registry of Trade Marks has added six new chapters to the existing Trade Marks Work Manual. The six new chapters cover the following topics:
(1) Marks contrary to public policy or morality;
(2) Names and representation of famous people, building, etc;
(3) Other grounds of refusal;
(4) Deceptive marks;
(5) Licences; and
(6) Slogans
You may access the Trade Marks Work Manual online at:
http://www.ipos.gov.sg/leftNav/tra/IP+Resources.htm
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(Circular No. 8/2009, dated 3 July 2009)
The following types of publication in the Trade Marks Journal are subjected to opposition:
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Notice of Opposition via |
Form |
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1) |
Application published before registration; |
TM11 |
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2) |
Collective or certification marks published before registration; |
TM11 |
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3) |
Alteration to registered marks; |
TM11 |
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4) |
Amendment to regulations governing use of collective or certification marks; |
TM11 |
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5) |
Application amended after publication |
TM11 |
With respect to items 3)-5), the ground(s) stated in the Notice of Opposition must be confined strictly to the alteration or amendment. The Notice of Opposition must be lodged within 2 months from the date the alteration or amendment is published in the Trade Marks journal. If an extension of time to file the notice of opposition is required, the request must be filed using Form TM 48 within 2 months from the date of publication of the alteration or amendment. The maximum extension of time for filing Notice of Opposition is 4 months from the date of publication of the alteration or amendment. Rules 29(2) to (8) and 31 to 40 apply to these oppositions with the necessary modifications.
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(Circular No. 10/2009, dated 28 August 2009)
In opposition, invalidation and revocation proceedings for trade mark applications or registrations, the Registrar has, as a matter of course, directed parties to attend case management conferences and pre-hearing reviews at the appropriate time for the purpose of achieving a just, expeditious and economical disposal of the matter pursuant to the power conferred on the Registrar in the Trade Marks Rules. The Registrar will treat the costs for attending such case management conferences and pre-hearing reviews in the same vein as for attending interlocutory hearings, which costs may be included as party and party costs under rule 73 of the Trade Marks Rules to be awarded to the successful party at the end of the proceedings.
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(Circular No. 11/2008, dated 4 July 2008)
IPOS has encountered certain electronic trade mark applications which have images of marks that have jagged and blurred edges in our database and the images of the mark will not appear as clear as intended by the applicants in the trade mark journal and certificate of registration. The reason for the blurred image of marks is that applicants attach images of the marks with a lot of background or blank space. To ensure that such images are not too small for viewing purposes, IPOS has to make adjustment to the marks which then result in blurred images.
In order to ensure that the image of mark is accurately captured by IPOS, applicants should crop the mark with little background or blank space and save the image as approximately 480 x 480 pixel. This will remove the need for IPOS to make adjustment to the image in the publication and the registration certificate and the applicant can then obtain clear and accurate image of the mark.
Top (Circular No. 14/2008, dated 26 September 2008)The Registry will stop its practice of returning deeds of assignment and other documents lodged in support of applications for transfer of ownership and recordal of other registrable transactions.
However, should the applicant wish for the return of such documents, he may make his request known at the time of lodgement of the recordal application on a covering letter accompanying the application to that effect. The letter shall provide contact details so that the Registry may make the necessary arrangements for the return of the documents. This practice will affect all applications lodged on or after 1 October 2008.(Circular No. 17/2008, dated 28 November 2008)IPOS will launch the e-Communications Portal on 1 December 2008. The e-Communications Portal is an electronic online system developed by IPOS for the main purpose of facilitating the sending, receipt and exchange of all correspondence, relating to trademark applications and prosecutions, between IPOS and registered account holders. The following firms and companies will be taking part in the pilot scheme that is scheduled for the initial period of 6 months.
DREW AND NAPIER LLC
DONALDSON & BURKINSHAW
ELLA CHEONG SPRUSON & FERGUSON (SINGAPORE) PTE LTD
ALLEN & GLEDHILL LLP
RODYK & DAVIDSON LLP
WONG & LEOW LLC
AMICA LAW LLC
LLOYD WISE
ALBAN TAY MAHTANI & DE SILVA
ONE LEGAL LLC
PATRICK MIRANDAH CO. (S) PTE LTD
HAQ & SELVAM
NAMAZIE & CO
TITO ISAAC & CO LLP
PHILIPS ELECTRONICS SINGAPORE PTE LTD
SAMUEL SEOW LAW CORPORATION
The Trade Marks Rules have been amended to give effect to the sending, receipt and exchange of correspondence via the e-Communications Portal. In particular, the changes in the Rules will:-
(a) provide for service of documents by the Registrar as well as by applicants by electronic communication through the e-Communications Portal;
(b) provide for the sending of a true and complete image of the original paper document by electronic communication through the e-Communications Portal for documents that are required to be signed, made on oath or affirmed or are required to be attested;
(c) provide for the extension of deadlines that fall on excluded days in spite of the availability of the e-Communications Portal;
(d) treat the date of receipt of documents received by IPOS as the day on which the documents are received by IPOS as long as the time of receipt is before the midnight of the day.
It is to be noted that applicants must still comply with the requirement to provide an address for service under rule 9. The electronic address of these persons, if they are using the eCommunications Portal to send documents to and receive documents from the Registrar, is not intended to be part of their address for service. However, service of documents by electronic communication through the eCommunications Portal is intended to be valid service notwithstanding that there is an address for service filed in accordance with rule 9.
The Trade Marks (International Registration) Rules have also been amended to permit the use of one Form for multiple classes of goods or services for Forms for use in opposition, namely Form TM 11 and Form TM 12.
A copy of the Trade Marks (Amendment) Rules 2008 and the Trade Marks (International Registration) (Amendments) Rules 2008 are available for sale at SNP Corporation Ltd. (http://www.snpcorp.com/webshop/).
(Circular No. 18/2008, dated 12 December 2008)
With effect from 1st January 2009, the Registrar will not be issuing renewal certificates confirming that a mark has been renewed. This is applicable to all applications for renewal of registration (Form TM 19) lodged on or after 1st January 2009.
For applications for renewal made online, the renewal will be processed instantaneously and an acknowledgement of the renewal showing the extended expiry date will be displayed for printing. These acknowledgements of renewal will remain available for printing for a period of one month from the renewal application date. In very limited circumstances, such as where there are pending applications affecting the validity of the trade mark, instant renewal will not be possible and the applicant will be notified that the acknowledgement of renewal will be posted in due course.
Where the application for renewal is posted or submitted over the counter, the applicant will not be receiving any acknowledgement from the Registry. The onus will be on the applicant to check the expiry date of the mark at www.etrademarks.gov.sg within 2 weeks of lodgement of the application for renewal of registration (From TM 19) to confirm that the expiry date has been extended by the Registry. If the expiry date has not been extended, applicants are advised to contact our Renewal Officer at 63302 707 immediately for assistance.
This change in practice does not apply to Late Application for Renewal of Registration (Form TM 24) and Application for Restoration and Renewal of Registration Removed from the Register (Form TM 21).
To reflect the change in practice in Form TM 19, an information note has been incorporated into the form. This revised form should be used from 1st January 2009.
A copy of the revised Form TM 19 will be available for downloading by end of December 2008 at www.ipos.gov.sg.
(Circular No. 3/2007, dated 14 February 2007)
The Trade Marks (Amendment) Act 2007 has been passed by Parliament on 22 January 2007 and has received Presidential assent on 1 February 2007.
Some of the Key Amendments Include:
Provision for Multiple Class Registration
Registration for trademarks is presently based on single classes. The amendments will now allow for a multi-class registration. A multi-class registration allows for one single application in multiple classes of goods and services to lead to one registration. Upon registration, the registration is maintained as one, resulting in the need to renew only once for the renewal to be effective for all the classes of goods and services registered.
Division of an Application for Registration
To complement a multiple-class system, it is now possible to divide a trademark application into two or more applications. A trademark applicant may divide up his application into two or more applications so that those classes of goods or services that do not face opposition or objection can proceed to registration first. Division will therefore expedite trademark registration where appropriate.
Relief Measures for Procedural Oversight
The Act also provides for relief measures to alleviate procedural mistakes by trademark applicants, notably missed time limits. The relief measures provide the avenue for a trademark applicant to maintain the rights in an application that has been filed, even when time limits have been missed.
Registration of Licence of Pending Trademarks
The amendments will now allow for registration of licences relating to pending trademarks. Prior to the amendments, only licences relating to registered trademarks can be recorded on the register.
The Trade Marks (Amendment) Act 2007 will come into operation on a date to be notified.
A copy of the Trade Marks (Amendment) Act 2007 can be purchased at SNP Corporation Ltd (www.snpcorp.com/webshop/).
(Circular No. 13/2007, dated 11 April 2007)
It has been brought to our attention that trade mark proprietors and/or agents whose trade marks have been published in recent IPOS Trade Marks eJournals are receiving letters from companies for payments for unofficial registration services.
These companies use names, abbreviations or emblems that appear to be “official” and send out letters which resemble invoices to trade mark proprietors and/or agents with details of the proprietor, the trade mark, class(es) of goods or services, etc. These companies will offer to register marks in registers or publications for a fee, and in return, claim they will send the respondent a copy of the publication.
Please treat such letters as unsolicited mails. These companies are neither related to nor connected with IPOS. There is no obligation to pay for such services as they are not official services.
The only office constituted under Singapore laws that provides registration services for trade marks in Singapore is our office, the Intellectual Property Office of Singapore (IPOS).
Upon receiving such letter or invoice, if you are in any doubt, please consult your trade mark agent, your lawyer, or email us for clarification.
(Circular No. 17/2007, dated 7 May 2007)
For purposes of Rule 20(2), where the mark consists of non-English words, it is not necessary to file with the Registrar a certified translation by a qualified translator. A copy of relevant extracts from relevant dictionaries showing the meaning of each word and the words as a whole in English will be sufficient. However, it will be necessary to indicate on the application form that the mark consists of non-English word/words. A failure to include such an indication on the application form will have to be rectified by the filing of amendment via Form TM 27 with the requisite fee. The applicant should forward to the Registrar the requisite translation and/or the transliteration together with a copy of relevant extracts from dictionaries or relevant certification as soon as possible.
As regards the indication on the application form, it is necessary to submit an accurate and complete translation and/or transliteration of the non-English words in the mark.
Two examples are provided below as illustration.
Example 1:
An application was filed for the mark consisting of three Chinese Characters which is the phonetic equivalent of the Applicant’s company name.
The transliteration of the Chinese characters of which the mark consists is "Fei Li Shi" which has no meaning and it is the phonetic equivalent of the Applicant’s company name "Philips".An appropriate indication in the Application form may read as:
Example 2:
An application was filed for the mark consisting of two Chinese Characters and the word “SINGER” (which is part of the Company name).
 Company : THE SINGER COMPANY LIMITED
The transliteration of the Chinese characters appearing in the mark is "Sheng Jia" which has no meaning.
An appropriate indication in the application form may read as:
(Circular No. 24 /2007, dated 29 June 2007)
- Processing Of An Application To Register A Licensee (TM 37)
An application to register a licence (Form TM 37) filed on or after 2 July 2007, will be processed by the Registry even though the status of the mark is still pending registration. However where the application to register a licence (Form TM 37) was filed before 2 July 2007, it will be processed only after the mark has been registered.
- Licence Commencement Date
The licence commencement date (i.e. the date entered in Part 5 of TM 37) should not predate the date from which the proprietor’s rights in the mark accrue. For a trade mark application filed before 1 July 2004, the earliest licence commencement date is the trade mark application date or the priority date, if any. For a trade mark application filed on or after 1 July 2004, the earliest licence commencement date is the trade mark application date.
- Exclusive Licence Periods Do Not Overlap
Where there are two exclusive licences or more, the licence periods involving the same goods or services should not overlap.
- Licensed Goods/Services Should Not Be Wider Than Trade Mark Application/Registration
The list of licensed goods or services (Annex of TM 37) should not be wider than those under the trade mark application/registration.
(Circular No. 17/2007, dated 7 May 2007)
The Trade Marks (Amendment) Act 2007, the Trade Marks (Amendment) Rules 2007 and the Trade Marks (International Registration) (Amendment) Rules 2007 have been gazetted and will come into force on 2 July 2007.
The (Amendment) Act and (Amendment) Rules can be purchased at SNP Corporation Ltd (www.snpcorp.com/webshop/).
Trade Marks (Amendment) Rules 2007
The following is a summary of some of the amendments in Trade Marks (Amendment) Rules 2007:
- Rule 17 : Division of applications for registration
An application for registration may be divided, at the request of the applicant, into 2 or more separate applications for registration. The request for division is to be made on Form TM 8 and a fee of $280 is chargeable for each new divisional application created.
- Rule 22 : Amendment of application
Form TM 27 (Request to change the details of an application for registration) will no longer be used. In its place are Forms TM 27A and TM 27B. Form TM 27A is chargeable on a per class basis while Form TM 27 B is chargeable on a per trade mark basis.
Form TM 27A is to be used for amendments pertaining to the class number, the specification of goods or services to which the application for registration relates, or the particulars of any claim to a right of priority included in the application for registration.
Form TM 27B is to be used for any other amendment not involving the above.
- Rule 56 : Application to alter registered trade mark
The proprietor of a registered trade mark may apply to the Registrar on Form TM 27B for alteration of the registered mark. Form TM 35, the form which is currently used, will no longer be used as from 2 July 2007.
- Rule 57 : Rectification of an error or omission in the register
An application to the Registrar for the rectification of an error or omission in the register may be made by the proprietor of a registered trade mark or by any other person.Where the application is made by the proprietor of a registered trade mark, the amendment shall be made on –
- Form TM 27A, where the amendment pertains to the class number, the specification of goods or services to which the registration relates, or the particulars of any claim to a right of priority;
- Form TM 27B, for any other amendment not involving the above.
Where the application for rectification is made by any other person, the application shall be made on Form TM 28.
- Rule 77B : Reinstatement of application, right or thing
Subject to certain exceptions, an applicant, proprietor or other interested person who has missed a time limit for action before the Registry, may apply on Form TM 40 to have his rights reinstated, if:
- the request for reinstatement is made within 6 months from the date of expiration of the time limit;
- the omitted act is completed together with the request; and
- the failure to comply with the time limit is unintentional.
Trade Marks (International Registration) (Amendment) Rules 2005
The Trade Marks (International Registration) (Amendment) Rules 2007 has been amended to make it clear that division does not apply to international registrations designating Singapore.
Amendment of Trade Mark Forms
Some trade mark forms have been revised and the revised forms are to be used from 2 July 2007. A separate edition of the Trade Marks Journal containing a consolidation of all Trade Mark forms will be available for sale from 29 June 2007.
The changes made to the forms are as follows:
- All forms have been amended to indicate whether the fee for that particular form is payable on a per class, per trade mark or per form basis. The fee structure is as shown in the table below.
TM 26
MP 3
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TM 1
TM 7
TM 10
TM 20
TM 22
TM 27 B
TM 29
TM 30
TM 31
TM 33
TM 34
TM 37
TM 38
TM 39
TM 40
TM 42
TM 46
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TM 4
TM 11
TM 12
TM 13
TM 19
TM 21
TM 24
TM 27 A
TM 28
TM 32
TM 44
TM 45
TM 50
MP 1
MP 2
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- Where fees are payable on a per class basis, such as renewal forms and opposition forms, the class numbers affected by the request, are to be indicated on the form. Amendments have been made to all forms, with the exception of Form TM 23.
- Forms TM 18 and TM 35 have been removed.
- Forms TM 8, TM 27A and TM 27B are new.
(Circular No. 28/2007, dated 27 July 2007)
The Registrar has been conducting formalities check on all applications for registration to ensure that they contain all formal requirements under the Trade Marks Act.
Where the application does not comply with the requirements which are essential for a filing date to be accorded, the filing date will not be accorded until all the deficiencies have been rectified. In such cases, the application will be accorded the earliest date on which all essential requirements for filing date are complied with. There is no need for the correction to be accompanied by the relevant amendment form. The essential requirements for filing date are spelt out in section 5(2) and (3) of the Trade Marks Act.
In respect of other deficiencies or irregularities that do not affect the filing date, amendments must be effected through the lodgement of the relevant trade mark forms, such as Form TM 27A, Form TM 27B and Form TM 26.
This practice pertains only to new applications filed with effect from 01 August 2007.
(Circular No. 40/2007, dated 5 December 2007)
The Geneva Conventions (Amendment) Act was passed in Parliament on 12 November 2007. Under the Act, the following emblems may not be used in Singapore, unless approval is given by the Ministry of Health:
- Red Cross emblem
- Red Crescent emblem
- Red Crystal emblem
- Red Lion and Sun emblem
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Red Cross
emblem |
Red Crescent
emblem |
Red Lion and Sun
emblem |
Red Crystal
emblem |
With the commencement of the Act, the Registrar will object to trade mark applications consisting of or containing these emblems or emblems closely resembling them, under Section 7(5) of the Trade Marks Act, unless consent from the Ministry of Health is furnished. This is so even for applications lodged before the effective date of the Act.
Proprietors of registered trade marks containing or consisting of such emblems, or emblems closely resembling them, should note that in spite of their registration, they have one year from 12 November 2007 to cease using the emblems.
(Circular No. 30/2006, dated 27 October 2006)Please note with respect to companies incorporated in the United States of America, the state of incorporation must be indicated on all trade marks forms. This is because companies incorporated in different states of America are separate and distinct legal entities. If the state of incorporation of a United States of America company is not indicated on Form TM 4, a Form TM 26 will be required for the insertion of the state of incorporation.
(Circular No. 21/2005, dated 21 October 2005)
An amendment of the class number in Form TM 4 may be amended by lodging Form TM 27 and paying the fee of S$40.00 for each amended class of goods / services, but only if
- a re-search in the new amended class revealed no prior conflicting marks;
- all of the items in the specification did not fall under the class as filed but in one other class; and
- that mistake was obvious to a third party inspecting the Register.
Three examples have been provided for illustrative purposes.
Example 1:
An application was filed in Class 5 in respect of "clothing, hats and shoes". An amendment of the class number from "5" to "25" would be allowed.
Example 2:
An application was filed in Class 5 in respect of "all goods in this class". An amendment of the class number from "5" to "25" would not be allowed because it would not be obvious to a third party inspecting the Register that the correct class intended to be claimed was Class 25 and not Class 5. It was possible that the applicant intended to claim all goods in Class 5.
Example 3:
An application was filed in Class 5 in respect of "clothing, hats and pesticides". An amendment of the class number from "5" to "25" would not be allowed, even with the deletion of the item, "pesticides" because it would not be obvious to a third party inspecting the Register that the correct class intended to be claimed was Class 25 and not Class 5. Since "pesticides" was correctly claimed in Class 5, it was possible that the applicant intended to claim "pesticides" in Class 5 but had incorrectly classified "clothing and hats" in Class 5 as well. It would be necessary for the applicant to file a fresh application in Class 25 in respect of "clothing and hats". |
(Circular No. 27/2005, dated 30 December 2005)
(Circular No. 27/2005, dated 30 December 2005)The above Notifications were gazetted on 28 December 2005 and it declared that the Trade Marks (Amendment) Rules 2005 and Trade Marks (International Registration) (Amendment) Rules 2005 would come into operation on 1 January 2006. Trade Marks (Amendment) Rules 2005 The following is a summary of some of the amendments in Trade Marks (Amendment) Rules 2005 which will come into force on 1 January 2006:
- Rule 7 : Service of documents
Non-fee bearing documents (except documents pertaining to hearings) may be sent to the Registry by facsimile transmission. However, each facsimile transmitted document must be legible and the responsibility for ensuring legibility rests with the sender.
- Rule 9 : Address for service
An address for service indicated on Form TM 19 and Form TM 24 is effective only for renewal maters and does not become the proprietor’s address for service for all other matters pertaining to that trade mark.
- Rule 21 : Deficiencies in application
The amendment clarifies the actions that will be taken by the Registry if minimum filing requirements are not met.
- Rules 32, 33, 34 : Extension of time to file evidence by way of a statutory declaration in opposition/revocation/invalidation/rectification proceedings
The second and subsequent requests for extension of time to file evidence by way of a statutory declaration in opposition/revocation/invalidation/rectification proceedings have to be made on Form TM 50, for which a fee will be imposed.
- Rule 50 : Notice of renewal
The Registrar’s notice to the proprietor informing him of the date of expiry of the trade mark registration will be sent to the proprietor’s address for service for renewal purposes, that is, the address for service indicated on Form TM 19 or Form TM 24, if one has been lodged, or if none, to the proprietor’s address for service.
- Rule 77B : Restoration of applications treated as withdrawn
Applications which are treated as withdrawn under the Act or Rules by reason that the applicant has failed to do any act on time may be restored by filing Form TM 40 with fee within three months from the date of the Registrar’s notice informing the applicant of that fact.
- Removal of Forms TM 9, TM 14, TM 15 and TM 16
Forms TM 9, TM 14, TM 15 and TM 16 have been removed and Forms TM 4, TM 11, TM 12 and TM 13 respectively will be used in their place.
Trade Marks (International Registration) (Amendment) Rules 2005
The following is a summary of some of the amendments in the Trade Marks (International Registration) (Amendment) Rules 2005 which will come into force on 1 January 2006:
- Rule 5 : Specification of Goods/Services
The amendment clarifies that the Registrar is entitled to raise an objection against vague terms in the specification of goods / services of an International Registration designating Singapore.
- Rule 28 : Notification to International Bureau
The amendment clarifies that in relation to an international application, the Registry will notify the International Bureau where the basic application is treated as withdrawn and is not restored in accordance with the Trade Marks Rules.
Amendment of Trade Mark Forms
Some trade mark forms have been revised and the revised forms are to be used from 1 January 2006. A separate edition of the Trade Marks Journal containing a consolidation of forms to be used in proceedings before the Registrar will be available online at www.ipos.gov.sg from 30 December 2005.
The changes made to the forms are as follows:
- All forms have been amended to incorporate information on the estimated time needed to complete the form.
- Amendments have also been made to Forms TM 1, TM 4, TM 11, TM 12, TM 13, TM 19, TM 22, TM 24, TM 37 and MP 1.
- Form TM 4, TM 11, TM 12 and TM 13 will now be used in place of Forms TM 9, TM 14, TM 15 and TM 16 respectively.
- The Trade Marks (Amendment) Rules 2005 also introduce:
- Form TM 40 for restoration of an application treated as withdrawn. The fee for this form is $130.00; and
- Form TM 50 for second and subsequent requests for extension of time to file evidence
by way of a statutory declaration in opposition/revocation/invalidation/rectification
proceedings. The fee for this form is $100.00 in respect of each trade mark.
(Circular No. 25/2004, dated 17 December 2004)
To assist the Registrar in the examination of applications for registration of sound marks, the Registrar may request the applicant to submit 2 copies of a CD-ROM recording of the sound mark sought for registration.
Presently, whenever the Registrar raises an objection to the specification of goods or services, the agent representing the applicant would write to the Registrar with a proposed amendment to the specification. Only if the Registrar agrees to the proposed amendment will the agent file Form TM 27 to effect the amendment. The processing of such letters by the Registrar slows down the registration process considerably.
To shorten the registration process, agents should file Form TM 27 to effect the amendment straightaway instead of writing to the Registrar for her confirmation. If agents are relying on precedents in support of the amendment, they should enclose such precedents with the Form TM 27.
The Trade Marks Act 1998 was revised on 30 December 1999 and accorded the same chapter number as the repealed Trade Marks Act, that is, Chapter 332. To facilitate the Registry’s operations, for both applications made under the repealed Trade Marks Act and applications made under the Trade Marks Act 1998 which have been accepted for registration and are not subject to opposition proceedings, the Registrar will issue certificates of registration which are headed:
Singapore
Trade Marks Act
(Chapter 332)
Certificate Issued Under Section 15(5)
The purpose of the description of device on Form TM 4 is to assist the Registrar in conducting a search for conflicting marks. The description need not be too detailed; a general description is sufficient.
A disclaimer relating to Chinese characters is published in the Journal as follows:
Registration of this mark shall give no right to the exclusive use of the Chinese character(s) of which the hanyu pinyin is "_________".
For characters other than Chinese characters (for example, Japanese characters), the disclaimer reads:
Registration of this mark shall give no right to the exclusive use of the ___________ character(s) of which the transliteration is "__________".
To avoid any confusion, this notice documents the Registrar's practice in relation to the examination of :
- trade marks consisting solely of colours; and
- trade marks consisting of colours as a component or as an element in combination with other elements or components.
Such examination practice has been effected by the Registrar in relation to both national applications and international registrations designating Singapore.
- Trade Marks Consisting Solely of Colours
Where the trade mark consists solely of colours, the Registrar will need to be satisfied that the colours per se are capable of distinguishing the applicant's goods or services from those dealt with by others. As it will be necessary to determine the precise scope of such a claim, it will be necessary for the applicant to provide a description of the claim in the application form. For the purpose of an illustration, if the trade mark sought for registration is the colour "neon pink" and the colour is applied to the packaging of the goods, an appropriate description would be: "The trade mark is the colour neon pink as applied to an aspect of packaging of the goods as claimed as shown in the representation of the mark on the application form". Such a description will enable the Registrar to examine the mark as filed.
- Trade Marks Consisting of Colours As a Component of the Mark
Where the trade mark consists of colours in combination with other elements such as a letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, aspect of packaging, the trade mark will be examined as a whole. If the trade mark as a whole is capable of distinguishing the applicant's goods or services from those dealt with by others, the trade mark will be registered as filed, that is, in the colours as filed. The Registrar does not require a colour limitation in such a case. The Registrar will also not seek to clarify whether the colour(s) as an element of the mark constitute a distinctive feature of the mark or not as the mark will be examined as a whole and registration rights will be conferred on the mark as a whole.
Search reports obtained from the Registry and examination letters issued by the Registrar may contain references to marks with numbers preceded by the letter "L" instead of the letter "T". These are marks which have been recorded with the Registrar for purposes of Rule 13. The prefix "T" refers to marks which are the subject matter of trade mark applications or registrations.
Marks published in the Journal and reflected on the certificates of registration appear exactly as represented on the application forms. Applicants and agents are reminded to provide clear representations of marks on the application forms. The marks should also be of reasonably large size (but not larger than A4) to ensure that all the features are clearly shown.
For applications for registration published in the Gazette on or after 15 January 1999 for opposition purposes, the series clause should read as follows:
"Application for a series of _____ (number) marks."
When filing notices of opposition, counter-statements and applications for revocation, invalidation or rectification with the Registrar, a copy of the same must be served on the relevant party or parties concerned. Please refer to Rules 29, 30, 31, 32, 56, 57, 58, 65, 66 and 66A of the Trade Marks Rules as amended by the Trade Marks (Amendment) Rules 2000.
The requirement of service of evidence on the relevant party or parties concerned remains unchanged. Please refer to Rules 32, 33, 34, 56, 59 and 66A.
It would be greatly appreciated if trade marks agents filing the aforesaid documents with the Registrar could indicate in their covering letters that they have served the necessary on the relevant party or parties concerned in compliance with the Rules.
Under Section 10 of the Trade Marks Act 1999, a person may claim a right of priority for the registration of a trade mark from the date on which a corresponding application was filed in a "Convention country" ("Convention application") if the application for the registration of the trade mark is filed within 6 months after the date on which the Convention application is made. A "Convention country" refers to a country or territory, other than Singapore, which is a party to the Paris Convention or a member of the World Trade Organisation. For the purpose of assessing the validity of a priority claim, IPOS will assess whether the "Convention application" was filed in a relevant country which has already become a Convention country as at the date of the filing of the Convention application in the Convention country.
For example,
Trademark application filed in country A on 3 Oct 2001.
Country A became a member of the Paris Convention or WTO on 2 Jan 2002.
Trademark application filed in SG = 3 Feb 2002 (claims priority of earlier application in country A).
Question: Is the claim to priority (application filed in country A) in the Singapore application valid?
Answer: No | |
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