Every business has a logo – this could be a typed name of the company or a stylishly designed logo – that needs to be protected. As a new – or small - business, you might not pay too much attention to protecting it, but imagine what it could mean ten years down the line when your business booms. Think Nike’s swoosh and Apple’s bitten apple being used by all and sundry!
As a trade mark is a part of your identity, you need to make sure only YOU can use it.
But first, what is a trade mark?
A trade mark is a sign used to differentiate one business from others. It is primarily used as an identifier by its customers. Anything can be trade mark as long as it is unique, graphical, not offensive, and is not similar to any other existing trade mark. It can be any letter, word, numeral, drawing, or design of a device, name, brand, label, aspect of packaging, shape, colour, sound, or a combination of these elements.
As the trade mark is your business's identity, you need to protect it against any misuse or misrepresentation.
If you are a business incorporated in Singapore, then the local registration laws can help you protect your trade mark locally and help you gain access to international registration. Once you have created your trade mark, follow the following steps to register it in Singapore.
Research the existing trade marks
One of the biggest reasons for registration rejection is that the trade mark is already taken by someone in your industry. So before applying, you must run a thorough check in the trade mark database – you can do this through the e-service IP²SG.
The application fee is not refundable, and the process is time-consuming, so its best to check before you invest your time and money.
In general, similar names or trade marks in different industries are acceptable as long as the graphical representation is markedly different.
Fix the products that will fall under your trade mark
The International Classification of Goods and Services, also called the Nice Classification, is an internationally accepted system of classifying goods and services. It was established first in 1957 and is updated every five years. Currently, it has 45 classes, and you can choose the most appropriate ones.
In your application, you must mention the class numbers and cite specific goods and services you are interested in. To make the right choice do refer to IPOS Class Headings and the Nice Classification of Goods and Services.
File the application
The application for registration can be submitted either manually or online. The online forms are naturally much cheaper to file and are processed faster. If you are applying for more than one class, then you can either file a combined application or separate ones for each category. The fees are paid per class, so in general, it is advisable to file separately as an objection to one part can delay the whole trade mark process.
(Fees for online filing have to be paid via IP²SG and is S$240.00 (if you choose goods and services from a pre-approved database) or S$341.00 (if you designate your specification for goods and services). Manual filing costs more, and the fee here is S$374.00).
With the application, you have to submit -
- company data or your personal information if you apply as an individual;
- graphical representation of a trade mark;
- description of the device used with the trade mark or description of the non-conventional trade mark if that is the case.
- goods and services for which the trade mark is to be registered;
- declaration to use the trade mark in good faith.
Deal with IPOS queries
If the IPOS examiner finds a problem with your application, you will be informed officially. The examiner also puts forward a timeline for resolving and responding to the query, and you must revert appropriately well before the deadline. Failure to do so will result in an automatic rejection of your application.
Respond to comments after the publishing of trade mark
Once all objections have been resolved (or if there are no objections raised), your trade mark will be published in the Trade Marks Journal. The publication starts a period of two months in which any interested party can raise objections to which the applicant must respond.
Get the final registration
Once all the issues are resolved, IPOS issues a certificate registering your trade mark. The date of registration applicable is the day on which the application is submitted. The trade mark is applicable for a period of 10 years from this date, after which it must be renewed.
What’s next?
Well, the process mentioned above protects and recognises your trade mark in Singapore. To extend this internationally, you need to file an additional application with IPOS. The consolidated international protection registration process can only start once the Singaporean registration is complete. After that, you have to register for an international claim, which costs S$250 in administrative fees. The WIPO fee depends on the type and colour of the trade mark and the number of classes it is being registered for.
It is important to note that an international consolidated application is only applicable in member countries of the Madrid Protocol. So do check the list!
Our recommendation
DO NOT disregard the importance of trade mark registration. For a new company or for a small business, the cost and the time might seem high and could dissuade you from pursuing the process, but do keep it on your to-do list.