In a two-part series, lawyer Jeremiah Chew shares more about trade marks and trade mark registration in Singapore.
In the second part of this series, Jeremiah breaks down the application process and explains what is required to successfully register your trade mark.
#1. How do I go about applying for trade mark registration?
You will need to fill in the prescribed form (Form TM4) and submit it to the Intellectual Property Office of Singapore (IPOS). The form must contain the following information, among others:
- The particulars of the applicant
- A clear representation of the trade mark – this is normally in .jpeg format
- The specifications of the trade mark (i.e. the goods and services that you will be using the trade mark on)
Furthermore, it is also common to conduct a trade mark availability search before applying for a trade mark. The purpose of the search is to ascertain whether there are any identical or similar trade marks on the register which might prevent you from registering your trade mark.
You can submit the form and have the availability search conducted through IPOS’ online platform.
#2. Can I apply for a trade mark by myself? Or do I need to go through a trade mark agent / lawyer?
It is not compulsory to engage a trade mark agent or lawyer to file an application on your behalf. IPOS has endeavoured to make the trade mark application process user-friendly and has published several guides (such as the Form TM4 user guide) and even a trade mark info pack to help applicants with the application process.
However, a trade mark agent or lawyer will have more experience in registering trade marks and will be able to provide detailed advice on matters such as:
- What classes and specifications you should apply for. This will ensure that the scope of protection provided by your trade mark corresponds to the goods and services that you provide or intend to provide.
- Whether a third party’s registered trade mark is considered identical or similar to the trade mark that you want to register. Laypersons can conduct a trade mark availability search by themselves but may have difficulty interpreting the results.
#3. What are the steps in the application process?
#4. How long does it take to register a trade mark in Singapore?
If there are no complications in the trade mark registration process such as objections from IPOS or an opposition lodged by a third party, a trade mark can be registered as fast as 6 months from the date that the trade mark application is submitted.
#5. How much does it cost to register a trade mark in Singapore?
The official fee payable to IPOS when applying to register a trade mark is S$240 per class of goods and services, assuming that the application is filed electronically and uses only specifications that have been pre-approved by IPOS. The pre-approved list of specifications is searchable on IPOS’ website.
Do note that this fee is per class – if you apply to register your trade mark in three classes, you would have to pay three times as much, which amounts to S$720.
If you engage a trade mark agent or lawyer to assist you in registering your trade mark, there will be professional charges as well. These will vary depending on the number of trade marks and number of classes you apply to register, as well as whether you require a trade mark availability search to be conducted before filing the trade mark application.
#6. What could delay the registration of a trade mark?
If the trade mark examiner is of the view that your trade mark is not registrable, IPOS will notify you of the objection and you will have to overcome the objection before your trade mark can proceed to registration.
Some common grounds for refusal of registration are as follows:
- Descriptive marks – a trade mark which consists exclusively of descriptive signs or indications cannot be registered, as such signs / indications should be free for use by all traders. Examples of such trade marks include “yellow” for bananas or “fast” for cars.
- Specifications are vague – e.g. attempting to register “food” in Class 30 without specifying the types of food.
As mentioned above, if your trade mark is identical or similar to a third party’s registered trade mark, the third party may file an opposition to prevent you from registering your trade mark. The trade mark opposition process, which is set out in the Trade Marks Act and Trade Marks Rules, allows both the trade mark applicant and the opponent to file written statements, evidence and legal arguments explaining why a trade mark should or should not be registered. The legislation also provides for the granting of extensions of time in certain circumstances. It can take over a year to resolve a trade mark opposition, and this is another reason why applicants should conduct availability searches before filing their application.
More information about trade mark oppositions can be found on IPOS’ website.
#7. What are the fees for registering my trade mark in other countries?
As mentioned in my previous article, if you want to register your trade mark in another country, you can file trade mark applications with the intellectual property offices of each individual country (the “national route”), or file an international application via the Madrid Protocol (assuming that the countries in which you wish to register your trade mark are also Madrid Protocol member states). The fees for registering your trade mark in other countries will vary depending on which option you select.
If you take the “national route”, you will have to check with trade mark agents or lawyers in your countries of interest to find out the fees that are payable. For international applications, the World Intellectual Property Organisation (WIPO) has developed a fee calculator which allows applicants to calculate the fees payable to WIPO based on the number of classes protection is sought for, as well as the specific countries in which the trade mark is to be registered.
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 Rishika Pundrik 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.
Continue reading:
- Guide to trade marks and trade mark registration (Part 1 of 2)
- Protecting your Graphical User Interface (GUI)
- Copyright Act: How To Protect Your Work
