What is a Trademark?

A trademark is a symbol, word, logo, phrase, or a combination of elements that sets a business’s products or services apart from others. To gain exclusive rights to use a trademark, it must be registered with the Intellectual Property Office of Singapore (IPOS). Once registered, the trademark is protected for 10 years and can be renewed indefinitely.

To qualify for registration, a trademark must be unique, non-deceptive, and not too similar to any existing trademarks. If someone uses a registered trademark without permission, it’s considered an infringement, and the trademark owner has the right to take legal action. Singapore is also a member of the Madrid Protocol, allowing businesses to apply for international trademark protection with a single application.

Trademark registration and enforcement in Singapore are governed by the Trade Marks Act. This law provides the framework for registering trademarks, protecting the rights of trademark owners, and managing enforcement to ensure trademarks are safeguarded effectively.

Trademark Registration Process

Registering a trademark in Singapore involves a clear and structured process designed to protect your brand under the law. Following this process carefully is essential to secure your brand’s identity and legal rights. Here’s a simplified overview of the main steps, from submitting your application to obtaining exclusive protection for your trademark

Steps for Registering a Trademark in Singapore

Step 1: Design Your Trademark

Start by creating a clear and detailed visual representation of your trademark. You can design it yourself using image editing software or hire a professional designer for more complex designs. Ensure the image is clear and not larger than an A4 size paper.

If your trademark has specific details, such as colors, shapes, or positions, include them in your application. For example, provide a color image if specific colors are important or include multiple views if it’s a 3D design. If your trademark involves a sound, submit both the musical notation and an audio file.

Be sure your trademark meets all registration criteria to avoid rejection. Since April 15, 2019, non-English words or characters in trademarks no longer require translation or transliteration. Simply include the original text in your application, and the system will handle the rest.

Step 2: Choose the Products or Services for Your Trademark

After designing your trademark, the next step is to decide which products or services it will represent. This requires identifying the appropriate categories, or classes, under which your trademark will be registered. These classes are based on international trademark laws, including the Nice Classification system, which organizes goods and services into 45 distinct classes.In your application, you’ll need to list the class numbers and specify the products or services your trademark will cover. You can select more than one class if needed. To determine which class your trademark falls under, refer to the IPOS Class Headings. Keep in mind that these headings are for guidance only and may not cover all specific items.

Step 3. Research Existing Trade Marks

Before submitting your application, it’s important to check that no one else has already registered a similar or identical trade mark. The registration fee is non-refundable, so if you apply for a trade mark that is too similar to one already owned by another company in the same industry, you could lose both your time and money.

However, if a similar trade mark exists in a completely different industry, you may still be able to register yours. For example, if the “Ouroboros” trade mark is already in use for ice cream but you want to use it for machinery with a distinct design, you may be fine. The final decision will be made by IPOS, which will ensure that the two brands are clearly distinguishable.To check if your desired trade mark is already taken, you can use the IP²SG e-service.

Step 4. Submit Your Application

You can apply for trade mark registration either online or on paper. For the fastest and most affordable option, use the IP²SG online platform. If you prefer paper forms, you can submit your application by mail or in person at the Intellectual Property Office of Singapore (IPOS). Keep in mind that online submissions are processed quicker and at a lower cost.

When submitting your trade mark application, make sure to include the following:

• Your company or personal details (if applying as an individual).
• A clear image of your trade mark.
• A description of the device or non-traditional trade mark (e.g., if you produce smartphones, mention where the trade mark will appear, like on the back of the device). For sound marks or holograms, provide a detailed description as well.
• The specific goods and services for which you want your trade mark registered.
• A declaration that you intend to use the trade mark in good faith.

If you're registering your trade mark for multiple classes, you can either submit one general application or separate applications for each class. While the number of applications doesn’t affect the fee (as you pay for each class individually), submitting a multi-class application can simplify the process. However, if IPOS raises concerns about any of the classes, it may delay the registration for all of them. If you believe there may be issues with some of the classes, it’s better to file separate applications to avoid complications.

Once submitted, double-check your application. You can only make minor changes afterward, such as updating the applicant’s name or address, at no extra charge.For any amendments to your application, use Form TM27. You can also refer to the IP²SG user manual for further guidance.

Step 5: Pay the Fee

Once you submit your application through IP²SG, you’ll receive payment instructions within three business days. The fee you need to pay depends on the classes of goods and services you're registering. If you select multiple classes, you’ll need to pay for each one.

Here’s a breakdown of the fees for online filing:

• $240: If you choose goods and services from a pre-approved database.
• $341: If you provide your own specifications for goods and services.
• $374: If you file manually (paper submission).

If you need to make changes to your application based on examiner feedback, there’s a fee of $40 for amendments. All trademark-related fees apply according to the class and method of filing.

Step 6: Receive Your Trademark Number and Pass the Examination

After you submit your application and pay the fee, the Intellectual Property Office of Singapore (IPOS) will assign a unique trademark number to track your application. This number helps monitor the status and details of your trademark throughout the registration process and its protection period. The filing date you provide will also establish the priority of your trademark.

IPOS will then review your trademark to ensure it meets legal requirements. They will check if the trademark is misleading, descriptive, or goes against public interests. They will also confirm that no similar trademark is already registered and that the goods and services listed match the Nice Classification.

If there are any issues with your application, IPOS will notify you and set a deadline for you to address the concerns. If you don’t respond on time, your application could be rejected. However, you can request an extension if needed.

Step 7: Trademark Publication and Opposition Period

If there are no objections or all issues have been addressed, IPOS will publish your trademark application in the Trade Marks Journal. After publication, there is a two-month period during which anyone can challenge the trademark registration by filing an opposition. If an opposition is filed, you will need to respond with a counter-statement.

The fee for filing an online opposition is $374.00 per class, while the fee for submitting an online counter-statement is $360.00 per class.

Step 8: Receive Your Trademark Registration

Once all matters are settled, IPOS will officially register your trademark and issue a certificate. The registration date will be the same as the date you submitted your application. Your trademark is protected for 10 years. To maintain protection, you must renew it before the 10-year period ends. It’s recommended to apply for renewal at least 6 months before your trademark expires. If you apply after that, the renewal fee increases from $380.00 to $610.00 per class for online filing.

What is a Priority Claim?

If you’ve applied to register the same trademark in another country within the past six months, you may have a priority advantage in Singapore. This means that if someone else tries to register the same trademark after your original application, you have the right to claim priority. The country where you first filed must be a member of the Paris Convention or the World Trade Organization. To claim priority, simply indicate this in the relevant section of your application form.

How to Protect a Trademark Globally

If you want to protect your trademark outside of Singapore, you can file an additional application through IPOS, rather than applying individually in each country. This international protection is valid in countries that are part of the Madrid Protocol. However, to qualify, the trademark must first be registered or applied for in Singapore. Here's what you need to do:

• Have an existing application or registration for the same goods and services in Singapore.
• Be a Singapore national or resident, or have a real and effective business in Singapore.

There are two fees for international trademark registration:

• A S$250 administrative fee by IPOS.
• A fee from WIPO, which varies based on the trademark's type, color, and the number of classes it's being registered for.
  

Once registered, your trademark will be listed in the international register and protected worldwide for 10 years, with the option for renewal. For the first five years, the international registration is linked to the validity of the Singapore registration. If your Singapore registration is canceled or revoked, the international protection will also be withdrawn.

Key Takeaways

• Do thorough research and prepare your trademark registration carefully to save time and money.
• Use IPOS's online e-service, IP²SG, for faster and more affordable processing.
• Stay vigilant after submitting your application, as objections may arise that you'll need to address.
• Once your trademark is registered locally, apply for international protection through a single application to IPOS, instead of registering in each country individually.

Conclusion

For a smooth and efficient trademark registration process, reach out to Clooud Consulting. Our experienced team with Cat and Pillar is dedicated to guiding you every step of the way, ensuring your brand’s protection and legal rights are secured. Contact us today for expert advice and assistance tailored to your business needs.