How can you protect your IP rights?
Protect your trademarks in Singapore and abroad
There are two routes of protection of marks in Singapore—the national route and the international route or protection via the Madrid Protocol. The national route is excellent if you want to protect your mark only in Singapore, but if you are thinking of protecting your mark abroad, you may consider the Madrid option.
The Intellectual Property Office of Singapore (IPOS) is the national agency in charge of registering trademarks.
The contact details of the office are as follows:
Intellectual Property Office of Singapore
Tel: +65 6339 8616
Fax: +65 6339 0252
- The application must be filed using the prescribed application form available on the website of IPOS.
- The filing language is English.
- The Office accepts paper and online applications.
- IPOS accepts multi-class applications. The Office accepts the Nice classification, the ASEAN List of Goods, and the Common EU-Madrid List of Goods and Services. The terms accepted by IPOS may be accessed at www.asean-tmclass.org.
The following are the minimum requirements for a filing date:
- Name and address of the applicant;
- Clear graphical representation of the mark;
- List of goods and services sought for registration;
- Declaration of use/intent to use the trade mark; and
- Payment of prescribed fee.
The other formality requirements are the following:
- Marks comprising of a three-dimensional shape of the goods or packaging may be represented by line drawings. If a single-view line drawing is insufficient, multiple aspect views up to a maximum of six should be provided.
- The English translation and/or transliteration of non-English words and/or non- Roman characters included in the mark.
- Priority details if the applicant has included a priority claim an earlier application, provided the application is filed in Singapore within six months from the date of the first filing.
- Classification of the goods or services in the application should be in accordance with International Classification of Goods and Services.
Once the minimum and other formality requirements are met, the application will be examined to determine whether the mark can be registered.
The following are absolute grounds for refusal of registration:
The following shall not be registered:
- Any sign that is not capable of being represented graphically and of distinguishing the goods or services used in the course of trade by a person from those of another person;
- Trademarks which are not distinctive;
- Trademarks which consist exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; and
- Trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
However, a trademark falling under the three preceding paragraphs may still be registered if, before the date of application for registration, it had acquired distinctiveness as a result of its use.
A sign shall not be registered if it consists exclusively of—
- the shape which results from the nature of the goods themselves;
- the shape of goods which is necessary to obtain a technical result; or
- the shape which gives substantial value to the goods.
A trademark shall not be registered if it is—
- contrary to public policy or to morality; or
- of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).
- A trade mark shall not be registered if or to the extent that its use is prohibited in Singapore by any written law or rule of law.
- A trade mark shall not be registered if or to the extent that the application is made in bad faith.
- Even if a trademark may have acquired distinctiveness, it will not be registered if it contains or consists of a geographical indication in respect of a wine or spirit and the trade mark is used or intended to be used in relation to a wine or spirit not originating from the place indicated in the geographical indication.
- The preceding paragraph shall apply whether or not the trade mark has, or is accompanied by, an indication of the true geographical origin of the wine or spirit, as the case may be, or an expression such as “kind”, “type”, “style”, “imitation” or the like, and irrespective of the language the geographical indication is expressed in that trade mark.
A trade mark shall not be refused registration even if it contains a geographical indication in respect of a wine or spirit if the application for its registration was made in good faith, or if it had been used continuously in good faith in the course of trade by the applicant for its registration or his predecessor in title, either—
- before 15th January 1999; or
- before the geographical indication in question is protected in its country of origin.
A trade mark shall not be refused registration by virtue of (f) if the geographical indication in question —
- has ceased to be protected; or
- has fallen into disuse, in its country of origin.
- A trademark shall not be registered if it falls within the prohibition concerning the national emblems, etc., of Convention countries, Article 6ter of Paris Convention, etc. and emblems, etc., of certain international organizations.
- Trademarks that are proscribed to be registered or allowed to be registered subject to certain conditions by virtue of a directive by the Minister.
- A trademark shall not be registered if or to the extent that the registration contravenes any rule made under the preceding paragraph.
The following are relative grounds for refusal of registration:
- A trade mark shall not be registered if it is identical with an earlier trade 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 trade mark is protected.
A trade mark shall not be registered if—
- it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or
- it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public.
Where an application for registration of a trade mark is made before 1st July 2004, if the trade mark
- is identical with or similar to an earlier trade mark; and
is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected, the later trade mark shall not be registered if —
- the earlier trademark is well known in Singapore; or
- use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered would indicate a connection between those goods or services and the proprietor of the earlier trade mark; or
- there exists a likelihood of confusion on the part of the public because of such use; and
- the interests of the proprietor of the earlier trade mark are likely to be damaged by such use.
Where an application for registration of a trade mark is made on or after 1st July 2004, if the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark, the later trade mark shall not be registered if —
- the earlier trade mark is well known in Singapore; and
use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered —
- would indicate a connection between those goods or services and the proprietor of the earlier trade mark, and is likely to damage the interests of the proprietor of the earlier trade mark; or
- if the earlier trade mark is well known to the public at large in Singapore—
- would cause dilution in an unfair manner of the distinctive character of the earlier trade mark; or
- would take unfair advantage of the distinctive character of the earlier trade mark.
A trade mark shall not be refused registration by virtue of its being well-known in Singapore if the application for the registration of the trade mark was filed before the earlier trade mark became well known in Singapore, unless it is shown that the application was made in bad faith.
In deciding whether any such application was made in bad faith, it shall be relevant to consider whether the applicant had, at the time the application was made, knowledge of, or reason to know of, the earlier trade mark.
A trade mark shall not be registered if, or to the extent that, its use in Singapore is liable to be prevented—
- by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade; or
- by virtue of an earlier right discussed above, and in in particular by virtue of the law of copyright or any law with regard to the protection of designs.
The Registrar may, in his discretion, register a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.
- The Registrar may, in his discretion, register any trade mark referred to three preceding paragraphs where the proprietor of the earlier trade mark or other earlier right fails to give notice to the Registrar of his opposition to the registration.
- A trademark which is an earlier trade mark whose registration expires, shall continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry, unless the Registrar is satisfied that there was no bona fide use of the mark during the 2 years immediately preceding the expiry.
When an application for registration has been accepted, the mark shall be published in the Trade Marks Journal. Any interested party may oppose the registration of the mark within two months of the publication.
If there is no opposition to the registration of the mark or where an opposition is resolved in favor of the applicant, the trademark will be registered and a registration certificate will be issued.
If you are thinking of seeking protection outside Singapore, you may wish to consider the Madrid Protocol option or the “International Route”. This option is crucial if you intend to export your products abroad. In this context, you should familiarize yourself with the key elements of the Protocol Relating to the Madrid Agreement for the International Registration of Marks or the Madrid Protocol, which is undoubtedly very beneficial for SMEs, if they wish to protect their marks in other countries.
The Madrid Protocol enables trademark owners to obtain protection in as many countries as are members of the international agreement by simply filing one application, in one language (including English), with one set of fees and in one currency (Swiss francs). Similar advantages exist when the registration has to be renewed or is assigned to a third party or when other changes, such as in name and/or address, have to be recorded.
In short, the Madrid system is a simple, economical, effective centralized procedure that provides for:
- A one-stop shop for trademark holders to obtain and maintain trademark protection in export markets;
- A single set of simple formalities;
- Lower registration fees;
- No need to translate the application into several languages;
- Great ease of post-registration administration of your rights.
The savings achieved, in terms of filing fees, formalities and agent fees abroad, will clearly facilitate the protection of your trademark abroad and therefore the marketing of your products in foreign countries. This means that if you possess either a commercial or industrial establishment in Singapore, or you are domiciled in or a national of Singapore, then you are entitled to use the Madrid system.
A single international application produces the same legal effects in the various designated countries as if the mark had been filed nationally. In other words, the effects of an international registration are equivalent to those of a national registration. As a consequence, an international registration can be seen as a bundle of national registrations, whose management is centralized within the hands of the International Bureau of WIPO and is greatly simplified.
However, it is important to remember that the Madrid system is merely procedural. The domestic legislations of the designated Contracting Parties set the substantive conditions for the actual granting of the protection. In general, it is recommended to seek professional advice before filing an application.
This is the way you should proceed to use the Madrid system:
- First of all, if you are using DIP as your so-called “Office of Origin”, you need to have a basic mark—an application or a registration in Singapore. This is what you will use as basis for your international application.
- You need to use the official WIPO Form (MM2) to file an international application with IPOS. The filing language in IPOS is English. Note that you cannot file your application directly with WIPO.
- Your basic mark should match your national application or registration. You may decide to reduce its scope (for example, by eliminating some of the goods/services covered by the national mark), but you cannot expand it.
The international application must contain the following:
- a reproduction of the mark (identical to the mark filed or protected nationally);
- a list of the goods and/or services for which protection is sought, classified in accordance with the International Classification of Goods and Services (Nice Classification); and
- the indication of the Contracting Parties in which protection of the mark is sought (the so-called “designations”); these are the countries where you wish to register your mark and where you intend to do business.
- An international application is subject to the payment of fees. The standard fee system comprises a basic fee (which is intended to cover the costs of the International Bureau in administering the system of international registration), a supplementary fee (if the list of goods and services involves more than three classes of the International Classification under the Nice Agreement) and a complementary fee (for each Contracting Party for which protection is requested) or an individual fee (instead of the complementary fee), the amount of which is determined by that Contracting Party.
- Before forwarding the application to WIPO, IPOS, your Office of Origin must certify that the mark that is the subject of the international application is the same as that in the national application or registration, that the applicant or owner of the mark in both the basic mark and the international application is identical, and that the goods and/or services listed in the application are covered by those of the basic registration or basic application.
- On receipt of the international application, WIPO checks that it complies with the requirements of the Madrid Protocol and of the Common Regulations, including in particular, the requirements relating to the classification of the list of goods and/or services, and that the required fees have been paid. The Office of Origin and the applicant are informed of any irregularities and these must be remedied within the time limit of three months, otherwise the application will be considered abandoned.
- Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the Gazette. The International Bureau then notifies each Contracting Party in which protection has been requested.
- Each designated Contracting Party has the right to refuse protection in its own territory if the mark does not comply with the substantive requirements of its law.
- A refusal must be notified to WIPO by the Office of the designated Contracting Party concerned within the time limit specified (in principle, 12 months from the date of the notification of the international registration, or 18 months, or even a longer period if the refusal is based on an opposition).
- If no refusal is notified to WIPO within the relevant period, the mark in question will enjoy the same protection in the Contracting Parties concerned as if it had been registered by the respective Offices of these Contracting Parties. The designated contracting party will then issue a Statement of Grant of Protection.
- On the contrary, if a refusal is notified, the procedure subsequent to that refusal, such as a review or appeal, is carried out directly between the holder and the national IP Office of the designated contracting party in accordance with domestic legislation and without any involvement on the part of WIPO.
- An international registration is in effect for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. The applicant will still need to comply with the maintenance requirements (use requirements) of each of the designated contracting parties, if there are any.
There are two routes of protection of industrial designs in Singapore—the national route and the international route of protection via the Hague Agreement. The national route is excellent if you want to protect your design only in Singapore, but if you are thinking of protecting your design abroad, you may consider the Hague option.
The Intellectual Property Office of Singapore (IPOS) is the national agency in charge of registering trademarks.
The contact details of the office are as follows:
Intellectual Property Office of Singapore51 Bras Basah Road #01-01, Manulife Centre
Tel: +65 6339 8616
Fax: +65 6339 0252
- The application must be filed using the prescribed application form.
- The filing language is English.
- The office accepts paper and online applications.
The filing date of a design application shall be the earliest date on which the application for registration of a design together with the fee is filed at the Registry of Designs.
The application for registration of a design shall be in the prescribed form and shall contain the following:
- state the name and address of the applicant for the design;
- contain at least one clear representation of the design.
Once these minimum requirements are met, the filing date will be accorded, and a formalities examination conducted.
The applicant must also include a statement describing the novelty of the design in the application. If the design contains generic elements such as numerals or letters, the applicant is encouraged to disclaim these in his statement of novelty.
Industrial design applicants may request to defer the publication of the design for up to 18 months from the date of filing of the application. The applicants will need to make the request in writing when applying for the registration of a design. This request for deferment of publication can be withdrawn by the applicant in writing.
The representation of the industrial design, whether two-dimensional or three-dimensional, should be shown graphically in representations following the requirements of IPOS.
The representations can be either photographs or drawings that should be visually clear, of good quality and suitable for reproduction.
The application may only contain a maximum of 10 different views of the design. The dimensions for each of the views of the design should not exceed 13 x 15 centimeters, but should not be smaller than three by three centimeters.
The detailed guidelines on the representation of the industrial design can be found at the website of IPOS.
An industrial design may pertain to the features of shape, configuration, pattern or ornament applied to an article by any industrial process.
A design must meet the following criteria in order to be registered:
It must be new. A design subject of the application shall not be considered as new if it is the same as a design —
- registered in respect of the same or any other article in pursuance of a prior application; or
- published in Singapore or elsewhere in respect of the same or any other article before the date of the first-mentioned application,
or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade.
In deciding whether a design is new, an application for registration shall be considered as filed on a date earlier or later than that on which it was filed.
The design must be industrially applied onto an article. It shall be considered as industrially applicable if –
- more than 50 reproductions in 3 dimensions of the design are made for the purposes of sale or hire;
- it is reproduced in 3 dimensions in one or more articles manufactured in lengths for the purposes of sale or hire; or
it is reproduced as a plate which has been used to produce –
- more than 50 reproductions of an object in 3 dimensions for the purposes of sale or hire; or
- in 3 dimensions one or more articles manufactured in lengths for the purposes of sale or hire.
The following will not be registered:
- If the publication or use of the industrial design would be contrary to public order or morality.
- Computer programs or layout-designs of integrated circuits.
Designs applied to the following articles
- Works of sculpture (other than casts used or intended for use as models or patterns to be multiplied by any industrial process);
- Wall plaques, medals and medallions;
- Printed matter primarily of a literary or artistic character (including book jackets, calendars, certificates, coupons, dress-making patterns, greeting cards, labels, leaflets, maps, plans, playing cards, postcards, stamps, trade advertisements, trade forms and cards, transfers and similar articles).
- Any method or principle of construction.
- Designs that are solely functional.
- Designs that are dependent upon the appearance of another article, of which it is intended by the designer to form an integral part; or enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function.
The formalities examination shall ensure that the statement of novelty, the classification and article name are in order and that the representation or image of the design is suitable for reproduction. Once these requirements are met, the design will be registered.
In the event of deficiencies, IPOS will send a notification giving the applicant three (3) months within which to correct the defects. If an amendment is required to overcome the deficiencies in the application, the applicant shall submit the amendment and pay the corresponding fee. If the applicant does not respond to the notification or request an extension of time to respond, the application will be withdrawn.
If the applicant disagrees with the result of the formalities examination, the response must be filed within the prescribed period stating the reasons for the argument. The Registrar will decide to either register or refuse the application based on the arguments raised by the applicant.
If the design is registered, the notice of registration of the design shall be published in the Designs Journal.
Any interested third party may, at any time after the design has been registered, file for the revocation of the registered design either to the Registrar or the Court based on the following grounds:
- the design was not new at the time of registration;
- the design was already protected by copyright at the time it was registered, but the period of registration of the design had expired when the copyright in that work expired; or
- any other ground on which the Registrar could have refused to register the design.
The initial period of registration of a design is 5 years from the date of registration of the design.
The period of registration of a design may be extended for a second and third period of 5 years, by applying to the Registrar for an extension, and paying the prescribed extension fee, before the expiry of the current period of registration.
If you are thinking of seeking protection outside Singapore, you may wish to consider the Hague Agreement for the International Registration of Industrial Designs option or the “International Route”. This is a very good option if you intend to export your products abroad. In this context, you should familiarize yourself with the key elements of the Hague Agreement for the International Registration of Industrial Designs, which is undoubtedly very beneficial for SMEs in countries like Singapore, if they wish to protect their designs in other countries.
The Hague Agreement enables industrial design owners to obtain protection in as many countries as are members of the international agreement by simply filing one international application, in one language (including English), with one set of fees and in one currency (Swiss francs). Because of the efficiency of acquiring design protection in multiple countries provided by the Hague Agreement, cost savings are realized by design owners.
The Hague Agreement is available to any person or entity that is a national of, has domicile, or has real and effective industrial or commercial establishment in Hague member. An international application may also be filed in a Hague Contracting Party that is the habitual residence of the of the applicant.
A single application may include up to 100 different designs, for as long as they all belong to the same class of the Locarno Classification. The publication of the designs may be requested to be deferred for a period or 12 or 30 months from the date of filing or priority date, if there is a priority claim. Singapore has declared that the deferment period is only up to 12 months from the filing or priority date.
An applicant may file the application with IPOS or directly with the International Bureau of the World Intellectual Property Organization (WIPO). The application may be filed in English, French and Spanish if filed directly with WIPO, but only in English if filed with IPOS. An international application is subject to the payment of a basic fee, a publication fee and either an individual or standard fee based on the number of countries where the applicant wishes to seek protection for the design. The application may be filed in paper or online.
Once the international application is received by the International Bureau, it will check whether the prescribed formality requirements (such is quality of representation, fees) are met. In case of defects, the applicant will be notified by the International Bureau and given three months to correct the deficiencies. If the formality issues are not resolved within the time period, the international application will be abandoned.
If the formality requirements are met, the application will be published by the International Bureau, unless there is a request for deferment of publication. The maximum period for deferment is 30 months, but IPOS allows deferment only up to 18 months The resulting international registration will then be transmitted by the International Bureau to the Contracting Parties designated in the application.
The IP Offices have the option to refuse the registration of the industrial design if it does not comply with the substantive conditions for protection in the concerned Contracting Party. The refusal of protection, if any, is issued by the IP Office either within 6 or 12 months. In the case of Singapore, the refusal period is 6 months.
If there are no grounds to refuse protection, the design will be protected in the Contracting Party under the laws of such country. The international registration will be protected for an initial period of five years, with an option for renewal for an additional period of five years, or up to the maximum period allowed by each Designated Contracting Party. In Singapore, the maximum total period is 15 years.