If you are not an IP professional, trade mark applications can be a bit of a mystery.
This guide is intended to be a short, simple, and practical walkthrough of the things you may need to think about when registering your trade mark in Singapore.
1. Why bother?
In short, registering a trade mark gives you a clear, unambiguous right to use that trade mark, and to prevent other people from using it without your consent. It also allows you to use the ® symbol.
2. Do I really need one?
Most small businesses in Singapore do not have a registered trade mark.
For some, it’s simply not necessary. If a business relies on something other than a name or a sign to attract customers, registering a trade mark may be a waste of money. For instance, your local minimart probably relies on its location rather than its branding to attract business.
For others, it’s because they haven’t given it much thought. These are the businesses at risk. When something later goes wrong, it might be difficult to resolve the problem without resorting to lawyers and litigation, which can be expensive. The expense often causes them to not bother doing anything about the issue, and to just accept the loss. In addition, their future expansion plans can be limited.
If you’re in the second category, you might want to consider filing an application.
3. What do I need to get started?
To file an application for a trade mark, you will need:
4. How do I get started?
Trade mark applications are filed with the Intellectual Property Office of Singapore (IPOS). To get started, go to www.ip2.sg or download the IPOS Go mobile app from Google Play Store or the Apple App Store.
5. How do I fill out the application form?
Filling out the application form is quite straightforward, but you should pay extra attention to the details to ensure that your application is correct.
First, you’ll need to upload the image of your trade mark. The maximum file size is currently 2Mb, and the file must be in one of the supported image formats (e.g. JPEG). You should ensure that the image is not blurry.
Your trade mark needs to be distinctive and also not similar to anyone else’s trade mark. You can search for similar marks on www.ip2.sg or on the IPOS Go app.
A distinctive trade mark is one that:
- Is not just a reference to the kind or quality of the goods or services; and
- Is not just a simple geometric shape or pattern.
Example: “Leather Sole” for footwear would not be acceptable, but “Leather Soul” would likely be ok because “soul” is not descriptive of shoes.
Second, you’ll need to select the goods or services (or both) that your business provides.
For most small businesses, this will be quite easy. Simply use the in-built keyword search to find words that describe your products or services.
You may notice that there’s a number in brackets beside the search results.
This number refers to the classification of the goods or services. If you search for related terms you will see that some of them are in the same class and some are not.
If you need to select items from more than one class, the fees for the application will go up. It’s currently S$240 per class.
However, within a single class, you can select as many items as you like until you’re satisfied that you have fully covered everything your business has to offer.
You should try to describe the goods or services that your business offers as accurately as possible.
Example: if your business sells furniture, you may also want to select “chairs”, “tables”, “desks, which are all also in class 20.
If you cannot find a good description of what your business does using the search tool and you are using ip2.sg, you can opt for “manual entry”. This means that you can describe your goods or services in your own words. If you feel that you need to go down this route, it may be best to consult with a lawyer to avoid problems with the application down the road. It is also more expensive, at S$341 per class.
Third, if you are using ip2.sg, you will be asked to inform IPOS if your claim has priority based on another application outside of Singapore. If you haven’t filed any other trade mark applications outside Singapore in the last six months, then likely the answer is “no”.
Finally, you will have to fill up the applicant details and contact details. The applicant is the person or organisation who will be the owner of the trade mark. Make sure you check the details thoroughly as changing them later will incur fees.
6. What happens next?
Once you submit your application, you’ll receive an application number. This number will refer to your trade mark even when it’s registered, so you should make a note of it.
IPOS will then assign an examiner to your application. The examiner’s job is to review the application for compliance with the requirements of the Trade Marks Act and Rules.
Any communications from IPOS during the examination process will be made through www.ip2.sg. A notification will be sent to the email address that you submitted for the contact person.
If everything goes smoothly, you will be notified of the registration in around 6 to 9 months, after which time you can download the registration certificate from www.ip2.sg.
7. What problems might my application encounter?
The most common issue that may need to be addressed is where the goods or services are entered manually by the user, rather than from the pre-approved list, since the proposed description might not be clear enough to allow proper classification. In such cases, the description may be questioned by the examiner and amendments may be necessary. Amendments will incur a fee and will delay the application process.
The next most common issues are:
These issues ought to have been considered when filing the application (see above Q5, “filling out the application form”).
If these issues arise, the examiner will send you a letter explaining what’s wrong and will give you a fixed period to respond. If you choose to respond, you can reply via www.ip2.sg.
Discussions about distinctiveness or similarity can get quite technical, and at this stage it’s often helpful to consult with a lawyer.
If the examiner is satisfied that the application can proceed, details will be published in the Trade Marks Journal. At this stage third parties are able to oppose the application. In practice, this doesn’t happen very often. If you do receive a notice of opposition you may wish to consider discussing the matter with a qualified lawyer, since you will be expected to submit certain documents and adhere to procedure and failure to do so could mean that your application will be rejected.