What is a Trade Mark and how to protect it

By Adrian Ee

A trade mark can exist in the form of a word, name, signature, numeral, logo, brand, heading, label, shape, colour, aspect of packaging or any combination of the above. A mark that is used in relation to services as opposed to goods is referred to as a “service mark”.

Trade marks are used to distinguish the goods and services of one trader from that of another. It may also indicate the source of the origin of the goods or services and also the quality of the goods or services.

Protection of a trade mark can be obtained by filing an application with the Registry of Trade Marks, Intellectual Property Office of Singapore (IPOS). Before an application can be filed, an applicant has to decide on the type of goods for which registration is sought. Different types of goods are covered under different classes. The classes under which goods may be registered are numbered from class 1 to 34 under the International Classification of Goods and Services generally referred to as the “ICGS”. The classes under which services may be registered are numbered from class 35 to 42. Care should be taken to ensure that the application is made under the correct class. It may sometimes be necessary to file applications in more than one class if the applicant deals in a wide range of goods which may fall under different classes. Similarly, an applicant for a service mark has to decide on the type of service for which registration is sought.

Having identified the relevant class or classes, the applicant is advised to conduct a search at IPOS to ensure that there is no identical or similar mark on the register. If the search is done by the applicant’s lawyer, an opinion will usually be rendered on the issue of whether the applicant’s mark is identical or similar to a particular trade mark on the register by applying legal guidelines. If there is no identical or similar marks on the register, the applicant may then proceed with the application.

Before proceeding with the application, it is however advisable for the applicant to obtain a legal opinion on whether a particular mark is registrable. The Trade Marks Act sets out grounds for which a registration will be refused. Much time and expense would be wasted if the application is proceeded with without considering these possible grounds for refusal. If objections are raised during the examination stage and they cannot be overcome the application will be refused.

The applicant should try and avoid using marks which consist exclusively of signs or indications which serve to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or other characteristics of goods or services and trade marks 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. These are just some of the grounds for refusal.

This article does not intend to deal with all the grounds for refusal. If a trader intends to provide his goods or services over the internet, the selection of a trade mark needs to be carefully thought out. The trader may want to ascertain whether a particular mark is already registered as a domain name, and if not, to proceed to obtain registration of the domain name. It is useful to have a domain name identical to the trade mark.

Application for registration of a trade mark is made by filing the prescribed forms provided by the Trade Mark Rules. Some points to note when preparing the forms for filing is that when the application consists of a device, a description of the device in words, as accurate as possible, should be given. If the mark contains or consists of a word which is not an English word, the applicant is required to provide the derivation of the word and the English translation. If the mark contains or consists of a foreign character, the applicant has to specify the language and provide a transliteration of the character.

After the application is filed, the mark will be examined to ensure that it is not one which should be refused under the grounds for refusal of registration in the Trade Marks Act Chapter 332. There are numerous grounds upon which a registration may be refused. The applicant may need legal assistance to answer some of these objections as they may be technical.

If there are no objections or the objections raised have been overcome and the application is accepted, the application will be published in the Trade Marks Journal. Any person wishing to file opposition proceedings has to do so within 2 months from the date of the publication. If no opposition is filed within the prescribed period, Certificate of Registration will then be issued. The cost for filing and obtaining registration of a trade mark varies from law firm to law firm but is generally in the region of S$1,200.00 inclusive of official fee.

Registration gives the proprietor various rights and remedies including the exclusive right to use the trade mark and to authorize its use by other persons. The proprietor may also obtain relief for infringement of his trade mark. A trade mark is a personal property. Registration can be granted to 2 or more persons jointly. It is assignable and transmissible in the same way as other personal or movable property.

The applicant may want to obtain registration for his trade mark in countries other than Singapore. Prior to Singapore acceding to the Madrid Protocol on 31 July 2000, an applicant seeking registration in countries other than Singapore has to instruct lawyers or agents in each of the countries in which registration is sought and to file a separate application in each of the countries.

With effect from 31 October 2000, an applicant can apply for an international registration of trade marks in Singapore without having to file separate applications in each of the countries where registration is sought provided these countries are covered by the Protocol. The applicant may designate in his international registration the countries in which registration is sought. One of the main advantages of the International Registration System is that the applicant need only file one application in one language and pay one fee. A further advantage is that changes subsequent to the registration, for example, a change in the name or address of the proprietor or change in ownership may be recorded through a single procedural step. There is only one expiry date and only one registration to renew.

The fee for obtaining an international registration consists of a basic fee of 653 Swiss Francs, a standard designation fee of 73 Swiss Francs, a supplementary fee of 73 Swiss Francs for each class of goods and services beyond the third and a handling fee charged by the national office. The fee charged by the solicitors for handling the application will vary from law firm to law firm and depend on the actual scope of the instructions.

Conclusion

With changes to the trade mark registration system locally and with the introduction of the international registration system it will now be easier and cheaper for traders to obtain protection for and to maintain their trade marks both locally and internationally.

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