Today’s technological advances are directly influencing our lifestyle. The New-Age rapid-paced environment escalates the creation of demand for a whole new range of equally sophisticated produce. This mindset has single-handedly enticed businesses to invest hugely in advanced and costly research and development to create “THE” product. Ironically, technological advancement also allows unscrupulous characters to easily tamper with, steal, copy or duplicate your ideas, creations or inventions! After expending much time, effort and money, surely you would like to ensure that your creation is protected from such devious acts? What then are your options?

Depending on what your creation is, there are legal protective measures that you can take to protect your Intellectual Property; a product of your creativity and intellectual efforts, your goods or services, your fortunes! Unfortunately, many entrepreneurs or businessmen are unaware of such protection and fall prey to counterfeiters or infringers of their goods or services.

To safeguard yourself from being caught in a similarly undesirable situation, you may want to glean some tips from our series of write-ups outlining the different forms of Intellectual Property protection which includes Patents, Passing Off and Copyrights. In the first of a series of articles, we will touch on issues regarding Trade Marks protection in Singapore.

If you walk down any aisle in the local supermarkets, you would see the myriads of products being displayed on the seemingly never-ending shelves. On the average, you can get at least 8 different brands of coffee, 5 brands of bread, 10 brands of condensed milk and even more for instant noodles! And you may also notice that some of these brands are more popular than the others. Have you ever wondered why the manufacturers of the less popular brands repackage their products to resemble the popular ones? Demand is already present for such “branded” and perceivably “better” products so why go through the hassle of selling the same or something similar in a different package? Just join the bandwagon and enjoy the slice of the profit-pie!

Though the above scenario is unscrupulous but nevertheless possible, this form of “intellectual theft” can be prevented if the owners seek the protection of law by getting their trade marks registered, an avenue which owners of such popular brands have sought. So how does one go about protecting one’s trade mark?

You must first be aware of the laws governing the registration of trade marks in Singapore. These are the Trade Marks Act (Cap. 332) and the Trade Mark Rules. The Trade Mark (Amendment) Act 1991 has now extended the registration of product marks to the registration of service marks.

A service mark is used to identify and distinguish the services of one person from that of another’s. A trade mark can be a name, signature, word, letter, numeral, device, brand, heading, label, ticket or any of these combinations to identify and distinguish the goods or services of a proprietor from the goods or services of another trader and to indicate the origin of the goods.

The applicant may either apply directly to the Registrar or authorize a trade mark agent such as a lawyer to act on his behalf regarding the registration of his trade mark. If the trade mark agent is used, a prescribed form giving the agent’s address for service must be lodged with the Registry.

How then does one proceed to register a Trade or Service Mark.The standard procedure is described as follows:

1. To file an application, the applicant has to fill in certain prescribed forms together with the payment of a S$150.00 fee at the Registry of Trade Mark. An official receipt will be given with a trade mark application number and the date of the application;
2. A preliminary search for conflicting registered or pending marks may also be obtained from the Registry of Trade Marks. Marks, which resemble one another in their main features, would constitute a series. Registration of a series of marks may be made on one application;
3. After a trade mark application is made, the Registry will search for · Geographical names; · Surnames; and · Prior conflicting pending or registered marks.
4. The mark will be examined to determine whether it is registrable. If the Registry raises no objections or if the objections are overcome, the Registry will then proceed to advertise in the Government Gazette.
5. The Registrar will advertise in the Government Gazette for 2 months as soon as the application for the registration of a trade mark is accepted. If no objection is lodged within these two months, the mark will be registered.
6. Any person may oppose the registration by giving a written notice (opposition) to the Registrar within 2 months from the date of advertisement of an application for the trade mark registration. A copy of the opposition will be given to the applicant who must then send a counter-statement. If he does not do so, he is deemed to have abandoned his application. The Registrar will give a copy of the counter-statement to the opponent. The opponent is deemed to have abandoned his opposition if he files no evidence. The Registrar will hear both parties and he will decide whether to register the trade mark with or without conditions or refuse to register the trade mark. The Registrar’s decision is subject to appeal to the court.
7. The registration of a trade mark is valid for 10 years from the date of application. Protection of a trade mark starts from the date of registration which is the date of the application for registration. The mark may be renewed every 10 years on payment of renewal fees.

You must understand that Trade Mark registration offers only geographical protection. That means if the Trade Mark is registered in Singapore, you will only receive protection for your mark only within the country. Registration in another country must be obtained if protection is desired there. Though registering a Trade Mark is not compulsory, once registered, the owner of the said Trade Mark is given the protection against other traders who may use his mark to sell their products. Registration also serves as a notice to others that the owner has claims to the name and he has exclusive rights to its usage.

Any form of infringement may be enforced by an injunction where damages may be awarded to the owner. However if a trade mark is not registered or pending registration, then the owner may, if the said mark is being used, acquire rights in his mark under the common law remedy of passing off, a topic which we will feature in our next newsletter.