Singapore Trademark Filing Guide
FILING
A. Requirements
If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.
Joint applicants are permitted in this jurisdiction.
Neither actual use nor intent to use is required for application.
The following information is required to complete an application:
name and address of the applicant;
state or country of incorporation;
representation of trademark (a depiction of the mark an applicant seeks to register) (For marks comprising a three-dimensional shape of the goods or packaging, line drawings should clearly show all dimensions of the mark.);
list of goods/services;
official filing fee.
While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
name and address of the applicant;
state or country of incorporation;
representation of trademark (a depiction of the mark an applicant seeks to register) (For marks comprising a three-dimensional shape of the goods or packaging, line drawings should clearly show all dimensions of the mark.);
list of goods/services;
official filing fee.
The list of goods and services in this jurisdiction may specify:
the relevant Class heading;
the relevant entire (long) alphabetic class listing.
The following number of specimens of the trademark must be submitted: one, unless the mark can be represented in plain block capital letters.
Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
The Trade Marks Rules provide that the Registrar is entitled to to ask an agent to produce evidence of his authority to act. The Registrar may also be entitled to require the personal signature or presence of either the agent or the principal.
In this jurisdiction, the following type of registration is available:
national;
international.
This jurisdiction is a member of both the Madrid Protocol and the Madrid Agreement and may be designated in international applications.
This country is not a member of the European Union; a Community Trademark is not effective in this jurisdiction.
No multinational regional registrations are available in this jurisdiction.
An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid Agreement and Protocol.)
Applications can be filed online at the following URL: http://www.ipos.gov.sg. Please note that a local address for service must be provided if the applicant is situated outside of Singapore.
The official file cannot be accessed online. However, basic details of the application are available online in the Public Search records.
Applications are officially searched as to prior trademarks. This takes approximately the following length of time: It takes approximately two to three months for an Office Action to be issued after the filing date, and the Office Action will cite prior trademarks, if any, that would block the registration of the mark.
B. Priority
If an applicant's home country is a member of the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.
If an applicant's home country is a member of the World Trade Organization, it should be possible to claim the home filing date. (Consult a local trademark attorney.)
An International registration can be based on a national application or registration in this jurisdiction.
C. Classification
This jurisdiction uses the Nice Classification System.
If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.
For a multi-class application, the applicant must pay class fees on a per-class basis.
D. Representation
An application to register a trademark may be filed directly in this jurisdiction by:
the applicant, even if not a citizen of or domiciled in the jurisdiction (However, if the applicant is situated outside of Singapore, a local address for service must be provided.);
a trademark representative/attorney/agent, even if not a citizen of or domiciled the jurisdiction (However, if the representative/attorney/agent is situated outside of Singapore, a local address for service must be provided.).
IV. APPLICATION
A. Publication
The filing particulars of an application are made available to the public.
The filing particulars are made available:
through publication and online.
The following application details are made available to the public:
mark;
name of applicant;
address of applicant;
state or country of incorporation of applicant;
citizenship of applicant;
application number;
application date;
goods/services;
priority claim information;
representation of trademark.
B. Examination
Applications are examined in respect of:
formalities: i.e., for compliance with the filing requirements;
classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
clarity: i.e., that descriptions are clear, and are understandable;
descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing goods or services of one individual or organization from those of other individuals or organizations;
deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance as to the nature, quality or geographic origins of the goods or services);
conflict with an earlier registration, a prior filed application or earlier unregistered rights resulting from an official search.
If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.
This jurisdiction does not have disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive). It should be noted that although there is no requirement that a disclaimer will be imposed to an element of a trademark that is not distinctive, an applicant for registration of a trademark or a proprietor of a registered trademark may voluntarily disclaim any right to the exclusive use of any specified element of the trademark, or agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation.
The order of the application process is as follows:
Examination, publication, registration.
C. Prosecution
Accelerated examination may not be requested.
The following rights are established by a pending application:
the filing date of the application establishes a home filing date for purposes of priority;
the pending application can be cited in official examination against a subsequent (later filed) conflicting application;
the pending application can be used in a third party opposition proceeding against a subsequent (later filed) conflicting application.
D. Opposition
An application can be opposed.
The following can be grounds for opposition:
relative grounds (based on proprietary rights, e.g., conflicting prior registration);
absolute grounds (based on non-proprietary rights, e.g., descriptiveness, non-distinctiveness);
bad faith (e.g., deceptiveness, disparagement);
breach of copyright;
rights under Art. 6 bis (notorious or well-known mark) of the Paris Convention;
registered design rights;
unauthorized use of specially protected emblems or national insignia.
An application is published for opposition purposes after formal examination of the application.
The opposition period begins on the following date: the date of publication.
The opposition period ends on the following date: two months from the date of publication. An additional two months may be granted, subject to consent from the other party.
Anyone may oppose an application.
Oppositions cannot be filed online.
E. Proof of Use
Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.
V. ASSIGNMENT AND LICENSING OF AN APPLICATION
A. Assignment
An application can be assigned.
An assignment of an application must be for the entire territory covered by the application.
An assignment of an application can be for some or all of the goods or services listed in the application.
Goodwill need not be included in an assignment of an application.
A written assignment for an application requires:
name of the assignor;
address of the assignor;
name of the assignee;
address of the assignee;
details of the trademark being assigned;
the goods and services being assigned;
the territory being assigned;
the effective date of the assignment;
signature by the assignor;
consideration (either actual or nominal).
Legal verification of a written assignment document is not required but the written assignment has to be signed by or on behalf of the assignor to be effective.
An assignment of an application need not be recorded, but if it is not recorded, the assignment may not be effective against a subsequently dated but recorded assignment.
B. Licensing
An application can be licensed. The applicant should, however, exercise control over the use of the trademark and the quality of the goods and services produced by the licensee. Consult a local attorney.
A license of an application must be for the entire territory covered by the application.
A license of an application can be for some of the goods or services listed in the application.
A license of an application can be exclusive (only one licensee, with the owner excluded).
A license of an application can be sole (only one licensee and the owner).
A license of an application can be non-exclusive (multiple licensees and the owner).
Use, by a related company, of a mark that is the subject of an application must be licensed. The Trade Marks Act provides that a license is not effective unless it is in writing and signed by or on behalf of the grantor.
A license of an application can be made with a time limitation.
A license document for an application requires:
the name of the licensor;
the address of the licensor;
the citizenship of the licensor;
the name of the licensee;
the address of the licensee;
the citizenship of the licensee;
details of the trademark to be licensed;
the goods and services being licensed;
the commencement date of the license;
the term of the license;
the territory of the license;
quality control provisions (While they are not required for recording the license, it is in the interests of the licensor to have quality control provisions.);
signature by the licensor;
express permission to sublicense, if appropriate;
whether the license (or sublicense) is exclusive or not. An exclusive license means only one license is granted in respect of the specified goods/services for the specified license duration.
Legal verification of a written license agreement is not required butthe license must be signed by or on behalf of the grantor to be effective.
A license of an application need not be recorded to be effective, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.
VI. REGISTRATION
A. Requirements
A fee is not required for issuance of the registration.
The following documentation is required for issuance of the registration:
none.
B. Rights
The following rights are established by registration:
the exclusive right to use the registered trademark;
the right to oppose subsequent conflicting applications;
the right to bring a cancellation action against a subsequent conflicting registration;
the right to sue for infringement against confusingly similar third party trademark use;
the right to license other third parties to use the trademark;
the right to apply for seizure by customs authorities for importation of counterfeit goods;
the right to obtain damages for infringement.
A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
never.
The territorial limit of registration is: Singapore.
C. Term
The initial term of a registration is:
10 years.
The beginning of the term of a registration is calculated from the:
application date.
D. Marking Requirements
Marking is not compulsory for registered trademarks, but is advisable because: it serves as a notice to the trade and the public of the registered rights.
Any marking should be in the form(s) mentioned below. Please consult with your local attorney in case of doubt.
TM;
SM;
® (This marking should be used only if the mark is registered.).
The use of ® is legally recognized so long as the mark is a registered mark.
