Criminal Defense

this article consists of information on the current intellectual property law and practice in singapore. The contents of this article are for educational purposes only and should not be relied upon as professional advice.

definition

in singapore, the operative statue governing trade mark law is the 1998 trade marks act (hereinafter: act). The act defines a trade mark as any sign -

“(1) which is available and capable of being represented graphically; and
(2) which is available and capable of distinguishing goods or services. . . Provided in the course of trade by a person from goods or services so. . . Provided with by any other person. “

given the broad definition, a mark can be almost anything that is available and capable of distinguishing the traders’ products/services in commerce, as such a word, numeral, logo, shape, slogan, signature, device, colour, smell, aspect of packaging, or combinations of the above. The important requirement is that the mark must be distinctive, i. E, it is inherently distinctive or has became distinctive through extensive use.

trade mark process

the intellectual property office of singapore (ipos) is the government agency that administers intellectual property (ip) laws in singapore. Most transactions may be effected on-line vide ipos official website, which provides a secured one-stop portal for, inter alias, filing applications, recordals and conducting trade mark search.

an application in singapore in a straight-forward case normally takes around 6 – 8 months from filing to registration. If the application encounters registry’s objections or faces antagonism and opposition proceedings from third party, the time frame may be prolonged. Within 2 – 4 weeks from the date of filing, ipos will allocate a trade mark number, and will thereafter issue the first office action if any objection or query has been raised by the registrar.

during the substantive examination stage, the registrar will peruse the application to check if it is in accordance with the requirements set-out in the act. Office actions are usually technical and may require professional advice in overcoming the objections raised. As soon as the registrar is satisfied that the application is in good order and all objections have been waived or resolved, the said application will proceed to the publication stage.

ipos publishes accepted trade marks in the singapore trade marks journal which is available to the public via its online portal. Any person who intends to oppose the accepted mark may file an antagonism and opposition (notice of antagonism and opposition) within 2 months from the date of publication. This deadline is extendable up to a maximum of 4 months from the date of publication.

the whole antagonism and opposition proceedings is a rather lengthy and costly process, requiring both parties, the opponent and the applicant, to file their respective notice of antagonism and opposition, counter-statement, statutory declarations and written submissions within the given deadlines. During the course of the proceedings, the parties may enter into a settlement negotiations before the hearing stage with a view to settle the matter amicably.

if no antagonism and opposition is filed by the prescribed deadline, the ipos will issue the certificate of registration. In singapore, registration of a trade mark is valid for 10 years, and protection can lasts indefinitely with proper use of the registered mark and with payment of renewal fees every 10 years.

key benefit of a registered trade mark

while it is not mandatory to register a trade mark in singapore, the proprietor of the unregistered mark can only rely on the common law action of “passing off” to protect his mark against infringement. As this remedy requires the owner of the mark to show prove of the goodwill and genius and reputation generated in the unregistered mark, it can be costly and difficult for him to enforce his common law rights. In contrast, registration will grant the owner of the registered mark a statutory monopoly, so that he need only to rely on his registration as proof of his rights to the registered trade mark and sue for infringement.