In a two-part series, lawyer Jeremiah Chew shares more about trade marks and trade mark registration in Singapore.
In the first part of this series, Jeremiah answers some common questions regarding trade marks. Interested to find out what a trade mark is and what you can do with a registered trade mark? Read on to find out more.
#1 . What is a trade mark?
A trade mark is a “badge of origin” which distinguishes your goods and services from those of others. A trade mark can take the form of a word, a logo, a combination of both, and even a sound or colour.
For example, some famous trade marks are “Samsung” (a word), the Nike “swoosh”
#2 . Why should I register my trade mark?
If you have registered your trade mark in Singapore, you will have certain legal rights as a registered trade mark owner under the Trade Marks Act. You will be able to take advantage of these statutory rights when enforcing your trade mark against third parties. Based on my experience, in the course of commercial transactions, it is easier to deal with a registered trade mark than an unregistered one. Details of a registered trade mark are publicly available (e.g. scope and duration of protection) and this commercial certainty makes a registered trade mark more valuable as an asset.
#3 . If I do not register my trade mark, am I allowed to use it?
Yes, you can use your trade mark even though you have not registered it. However, it is harder to protect and enforce an unregistered trade mark.
If you have not registered your trade mark, you will have to commence a claim under the tort of passing off to prevent competitors from using your trade mark (or a confusingly similar variant). In order to succeed in a claim for passing off, you will first need to show that there is goodwill in the trade mark – a legal requirement that may not be easy to meet. Goodwill is commonly proven by tendering evidence of sales volumes and advertising expenditure. However, not every trade mark owner may be able to do so.
(Trade mark owners who can show that their trade marks are well known in Singapore also have certain rights to enforce these well known trade marks under the Trade Marks Act, regardless of whether they have been registered or not. But that’s another story for another day!)
In contrast, if you have registered your trade mark, you will have statutory rights under the Trade Marks Act to prevent others from using your trade mark. In addition, you can still commence a claim for passing off – effectively giving you two methods of enforcing your trade mark.
#4 . Ok, you’ve convinced me that I should register my trade mark. Is it difficult to register a trade mark in Singapore?
Trade mark registration in Singapore is a simple process which mainly consists of submitting the relevant form to the Intellectual Property Office of Singapore (IPOS). It is possible to register a trade mark within 6 months if there are no complications. Registration costs will vary depending on how many classes you have chosen to register your trade mark in.
Stay tuned for my next article, where I will provide more details on the trade mark registration process in Singapore!
#5. I have registered my trade mark. Now what?
In order for your trade mark registration to be effective, you have to enforce it against third parties who attempt to copy or imitate your trade mark. Here are some of the most important tips:
- Be consistent in the use of your trade mark. Remember, the function of a trade mark is to tell consumers that a product or service originates from you, the trade mark owner. If you have chosen to register a particular variation of your trade mark (e.g. in a certain font, capitalization, or colour), use what you have registered and try not to deviate from it. Inconsistent use of a trade mark weakens it. Many established brands have internal guidelines on how their trade mark should be used.
- Be on the lookout for copycats. Methods of detection include Internet searches, scanning advertisements in magazines and trade publications, and conducting trade mark searches on IPOS’ public database.
- Take the necessary action against trade mark infringers. Typically, a trade mark owner will send a cease-and-desist letter, and may commence a trade mark infringement action in court if the letter is ignored. However, aggressive enforcement (e.g. litigation) is not necessarily the best option every time – read my earlier article at this link for my thoughts on when you should take a softer approach!
- Remember to renew your trade marks. Trade mark registration is valid for 10 years in Singapore, and can be renewed for 10 years at a time by paying the applicable renewal fee to IPOS. Set a reminder to renew your trade marks before they expire.
#6. I want to expand my business overseas. How do I obtain trade mark protection in other countries?
Trade mark protection is territorial. This means that you have to register your trade mark in another country if you want to obtain protection in that country. There are two ways in which you can register your trade marks in other countries.
- “National Route”: You can take the “national route” and file trade mark applications with the intellectual property offices of each individual country. Different countries will have different registration requirements and these may include having to translate your trade mark application into a particular language, or engaging a trade mark agent to file the application on your behalf. If you are intending to register your trade mark in multiple countries, this may be time consuming and costly.
- “International Route”: Alternatively, you can go by the “international route”. Singapore is a party to an international treaty known as the Madrid Protocol. An owner of a registered trade mark in Singapore can apply to register his trade mark in other Madrid Protocol member states by filing a single application with IPOS, who will submit the application to the World Intellectual Property Organisation after checking to ensure that all formal requirements are complied with. This provides a more streamlined and efficient process compared to the national route. The Madrid Protocol presently covers over 100 countries which represent more than 80% of world trade.
#7. How do I profit from my registered trade mark?
Under the Trade Marks Act, a registered trade mark is considered personal property. This means that you can assign it (i.e. transfer it to another person), license it (i.e. allow another person to use it, for example under a franchise), or even grant a security interest over it, such as a charge. You can charge a one-time payment for an assignment or a licence, or request for payment of royalties as a percentage of the sales made under your trade mark.
Don’t underestimate the value of a trade mark. For companies with a strong brand name, the value of their trade mark could be as much, or even more, than their physical assets!
Preview of the next article…
In the next article, we will explore the exact registration process for trade marks. Do check in for my next article soon!
Have a question on Trade Marks?
If you have any questions about Trade marks, you can request a quote with Jeremiah Chew. You can also get a Quick Consult with lawyers with similar expertise for a transparent, flat fee of S$49. You can expect a call back within 1-2 days on the phone to get legal advice and have your questions answered.
This article is written by Jeremiah Chew from Ascendant Legal LLC and edited by Seah Ern Xu from Asia Law Network.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.
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