Trade and Service Marks
– Trade Marks Act (Chapter 332), as amended.
– Trade Marks Rules, as amended.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since December 10, 1990.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since February 23, 1995.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks, since March 18, 1999.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since October 31, 2000.
– Singapore Treaty on the Law of Trademarks, since March 16, 2009.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 16, 2021.
Applicants: any person, firm or company claiming to be the proprietor who uses or intends to use a mark for goods or services.
Foreigners: must have an address for service in Singapore.
Notion: a mark means any sign capable of distinguishing the goods or services.
Excluded from registration: any matter likely to deceive or cause confusion, which would be contrary to law or morality.
Well-known marks: protected with or without registration.
Service marks: registrable.
Certification marks and collective marks: registrable.
Colors, sound, smell and 3D marks: may be claimed.
Series marks: several marks used for the same goods and resembling each other may be registered in a series in one registration if they differ only in respect of matters of non-distinctive characters.
Priority: according to the Paris Convention. Particulars of priority applications must be provided.
Classification: International Classification of Goods and Services for applications filed on or after January 1, 2007 (11th Edition).
Multiple class applications: available from July 2, 2007.
Filing requirements for an application:
1. The mark and the list of goods;
2. 1 clear copy of the trademark (if it is not a word mark). A trademark in black and white also protects the mark in color;
3. Name and address of applicant;
4. Local address for service.
Note: a sign in a language other than English must be accompanied with a translation.
Electronic filing: online filing of the application is required.
For a change of name or address: a scanned copy of the change of name/address certificate, no legalization required.
Examination: for registrability and availability.
Objections of the Registrar: are notified by official letters and the applicant can reply.
Letters of consent: depending on the mark, may be accepted to overcome an objection based on an earlier registration. The LoC can be simply signed and witnessed.
Publication: if application is accepted, an advertisement is placed in the Trade Marks Journal.
Opposition: can be filed by any person within two months from the date of advertisement.
Appeal: decisions made by the Registrar are subject to appeal to the High Court.
Legal effect: (other than well-known marks) the first user of the mark is entitled to registration. The registration of a mark, if valid, confers the exclusive right to use the same.
Delivery of document: the certificate of registration is issued in electronic format only.
Duration: ten years from filing date.
Renewal: for periods of ten years. A grace period of up to six months from expiry applies with payment of late fees.
Use: compulsory to defend an existing registration, but is not necessary for renewal. On application by any person aggrieved, the High Court or the Registrar may order a trademark to be removed from the Register in respect of any of the goods registered on the grounds that (1) up to one month before the application, a continuous period of five years or more from the date of registration had elapsed during which there was no genuine use of the trademark in relation to those goods by the proprietor; (2) use has been suspended for five years without proper reason; (3) the mark has become common to the trade; or (4) the proprietor’s use is misleading.
Invalidation: a registered trademark may be declared invalid on the ground that it is a mark devoid of any distinctive character or it is descriptive, or for shape mark, its shape is determined from the nature of the goods, or the mark is contrary to public policy or morality or is deceptive or it was made in bad faith or it is prohibited by any written law, or it is a geographical indication.
Marking: no provision.
Assignment: possible, may be with or without goodwill of the business concerned in the goods and in respect of all or some of these goods.
Licenses: recordal is not mandatory. Use by a licensee is deemed as use by the proprietor.
Infringement: arises where a person, without the consent of the proprietor of the registered mark, (1) uses in the course of trade a sign which is identical on identical goods, or (2) uses an identical sign on similar goods, or (3) uses a similar sign on similar goods with those of the registered trademark and there exists a likelihood of confusion. Infringement of a registered trademark which is well-known in Singapore also arises where a party, without consent of the owner uses in the course of trade – a sign which is identical or similar to the registered trademark in relation to goods or services which are not similar and such use would indicate a connection with the registered proprietor and there exists a likelihood of confusion and the interests of the registered proprietor is likely to be damaged by such use.
Criminal penalties for counterfeiting a registered trademark or falsely applying, or making or possessing an article for committing an offense is a fine not exceeding S$100,000.00 or imprisonment not exceeding five years or both. The offense of importing or selling goods with falsely applied trademarks carries a fine of S$10,000.00 for each article (not exceeding S$100,000.00 in aggregate) or to a maximum of five years imprisonment or both.