Trademark rights are territorial. Businesses entering new markets should consider local protection for the names and logos used for their products and services.
Since Singapore also operates a separate trademark system from Korea, registering a trademark in Korea does not mean that it will receive the same protection in Singapore.
In particular, Singapore has systems that are useful to know at the application stage, such as Series of Marks and Disclaimer, and it is necessary to continuously manage the actual use and renewal of trademarks even after registration.
In this article, we will look at the characteristics of Singapore's trademark system, application procedures, duration and renewal, and post-registration management.
Features to be aware of in Singapore's trademark system
When looking at Singapore's trademark system, it is worth noting not only the general overseas trademark application process but also some of the systems available in Singapore.
A series application can cover multiple related marks
Singapore has a Series of Marks system.
A series trademark has many different forms, but it is a system in which applications can be filed as one series if the main features of each trademark are essentially the same and the differences between trademarks are limited to non-distinctive elements.
The Intellectual Property Office of Singapore provides guidance that trademarks forming a series must be similar to each other in important respects, and differences must not substantially change the identity of the trademark as a whole.
For example, if the same brand mark is used but only non-distinctive elements such as product type, number, price, color, etc. are different, the possibility of it being a series trademark can be reviewed.
However, this does not mean that you can simply apply for several different trademarks at once. There must be substantial identity between the individual marks making up the series, and the differences must also meet certain requirements.
Therefore, companies that use multiple types of brands or logos need to consider not only how to file separate applications for each, but also whether they can utilize Singapore's series trademark system.
- Disclaimers: limiting exclusive rights in part of a mark
Singapore trademark applications have procedures related to Disclaimer/Limitation.
In Singapore, a separate section is provided in the trademark application form to indicate a Disclaimer, which means that the trademark does not claim exclusive rights to use part of the trademark. Limitations, which limit the scope of trademark rights in a specific way, can also be dealt with.
For a mark combining a distinctive brand name with wording describing the goods, a disclaimer of exclusive rights in the descriptive wording may be relevant.
However, making a Disclaimer does not mean giving up protection for the entire trademark. It needs to be understood differently from the registration and protection of the entire trademark in that it does not claim exclusive rights to a specific part of the trademark.
How long does it take to register a Singapore trademark?
A trademark application in Singapore generally goes through the following process: application → examination → publication → opposition period → registration.
If there are no special flaws, rejections, or objections to the application, it may take approximately 9 months from application to registration. However, the actual time required may vary depending on the content of the application, the examination process, reasons for rejection, or whether an objection occurs, etc.
In particular, if a reason for rejection occurs during the examination process or an objection is raised by a third party, the overall period may be longer. Therefore, if you are preparing a trademark application according to the schedule for entering Singapore, it is recommended to take these variables into consideration.
Singapore Trademark Application Process
So what procedures do you have to actually go through to secure trademark rights in Singapore?
① Pre-filing trademark searches
Before applying for a trademark, it is necessary to first review whether the trademark in question can be registered in Singapore. In particular, if there is an identical or similar prior trademark, registration may be rejected depending on the relationship with the designated good or service even if the trademark itself is not the same, so it is important to check the prior trademark before filing an application.
② Application
After reviewing the feasibility of applying, determine the scope of the trademark and products/services you wish to protect and apply.
The application includes information about the applicant, expression of the trademark, designated goods and services, and matters regarding use or intention to use the trademark.
The important thing at this stage is not simply to decide on the brand name, but also to decide together which products and services to secure trademark rights for.
It is advisable to determine the scope of the application by considering not only products currently sold in Singapore, but also products and services that are likely to expand business there in the future.
③ Examination
Once an application is received, the trademark is reviewed to determine whether it meets the registration requirements.
Key registration requirements guided by the Intellectual Property Office of Singapore include whether the trademark is distinctive, does not consist solely of expressions that describe goods or services, and is not identical or confusingly similar to existing trademarks.
If there are no problems as a result of the review, the process proceeds to the next step, publication.
On the other hand, if there are any areas that do not meet the registration requirements, you can receive an Examination Report. In this case, in principle, you must respond within 4 months by submitting opinions or necessary data, or, if necessary, revising the application details or requesting a hearing.
Therefore, when applying for a trademark in Singapore, it is important to respond appropriately not only to the application itself but also to reasons for rejection that may arise during the examination process.
④ Publication and opposition
If the trademark is determined to be registrable as a result of the examination, the trademark application will be published in the Trademarks Journal for two months.
During this period, third parties may object to the registration of the trademark. If no opposition is filed, the application will proceed to the registration stage.
⑤ Registration
If no legitimate opposition is filed during the notice period, or if the applicant's rights are recognized in the opposition process, the trademark is registered.
Once registration is completed, a certificate of registration is issued, and the trademark is protected for 10 years from the date of application.
Why management is necessary even after trademark registration in Singapore
Trademark rights are not rights whose management ends with the issuance of a registration certificate.
Particularly in Singapore, it is necessary to pay attention to actual trademark use and whether or not registered trademarks are maintained.
- Actual use after registration is important
The Intellectual Property Office of Singapore advises that a trademark registered in Singapore is at risk of being revoked for non-use if there is no genuine continuous use for five consecutive years after registration.
Therefore, after registering a trademark in Singapore, it is necessary to not only maintain the registration status but also check whether the trademark is being used appropriately in actual business.
Especially in overseas markets, it is important to systematically manage data that can confirm the use of the trademark in products, advertisements, sales, etc. to prepare for the possibility of disputes such as revocation for non-use in the future.
- When the registered trademark and the trademark actually used are different
As a company operates its business, it undergoes brand renewal or logo changes.
At this time, if the existing registered trademark and the actual trademark used in the market are significantly different, it is necessary to review whether the existing trademark registration alone can sufficiently protect the currently used trademark.
The Intellectual Property Office of Singapore has established separate procedures to manage or change products and services, expression of trademarks, number of series trademarks, Disclaimer or Limitation, etc. in relation to registered trademarks.
Therefore, when changing a brand or using a new logo, it is advisable to review whether it is sufficient to simply maintain the existing trademark rights or whether an additional application for a new type of trademark must be filed.
It is important to manage Singapore trademark rights in one flow from application → registration → renewal → actual use and rights relationship management.
If you are preparing to enter the Singapore market or are already conducting business there, it is advisable to not only register a trademark but also review the application strategy appropriate for the local system and post-registration rights management.
This article reflects the information available when it was published. Contact us to discuss your circumstances.