Registration of Trademarks in Singapore

Copyright / Patent / Trademark
Registration of Trademarks in Singapore

Introduction

A trademark is a symbol used by business in the course of trade to identify and distinguish their goods and/or services from their competitors. The symbol can be a drawing, representation, label, device, brand, heading, word, signature, numeral or any combination of these.

While registration is not compulsory in Singapore, a registered trademark affords special and definite rights to the owner (“proprietor”) of the trademark. A proprietor will be able to sue a person who uses a mark that is identical or confusingly similar to the registered mark of the proprietor.

The Registry of Trademarks and Patents (“Registry”) follows the International Classification of Goods and Services under the Nice Agreement of 15 June 1957 (as revised at Stockholm 1967 and Geneva 1972). There are 34 classes of goods and 11 classes of services for which a trademark may be registered. The wide range of goods and services covers (for goods) scientific equipment and musical instruments to furniture and leather products, and (for services) telecommunications and education to insurance and advertising.

A single trademark may have to be registered under more than one class, if the mark is being used in respect of a wide range of goods and services. Generally, every trademark application is only for a single trademark under one class except for the registration of a series of trademarks.

Registration

The effect of registration under the Trade Marks Act does not extend beyond the boundaries of the Republic of Singapore. Applications for trademark protection in the countries must be made to the relevant trademark authority in the country where protection is sought.

To qualify for registration, the mark must be a visually perceptible sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade.

It is useful from the outset for a mark to have an intrinsic quality that makes it unique or easily distinguished. Otherwise, the mark may acquire sufficient distinctiveness through advertising or use to merit some protection.

What are the other restrictions on registration?

In addition to the criteria mentioned earlier for registration, a trademark must also, among other things:
not conflict with other marks already registered or applied for in respect of the same type of goods or services or the same description of goods or services;
not cause confusion;
not be deceptive e.g. as to the quality of the goods or services or origin of the goods or services;
not be contrary to law or morality nor be of a scandalous design;
not contain any words such as “Royal”, “Imperial”, “Presidential” or “Singapore Government” or any letters or devices if used in such a manner as to be likely to lead persons to thinks that the applicant either has or recently has had Royal or Presidential or Singapore Government’s patronage or authorisation, whether or not such be the case; and
not contain the words or abbreviation or foreign equivalent of the words “Patent”, “Patented”, “Registered”, “Registered Design”, “Registered Trade Mark”, “Copyright”, “To counterfeit this is a forgery” or words to like effect.

Choosing a mark – what to look for when designing a trademark

A usual mark that members of the public associate with a product will obviously give the manufacturer or seller of the product (be it goods or services) an edge over their rivals. The association should be a favourable one i.e. the product is remembered as one of quality and/or value, and which will lead satisfied customers to make repeat purchases of the branded goods or reuse the branded services offered.

Factors to consider in selecting a trademark for Singapore registration include:

a) Descriptive nature of mark
The more descriptive a mark is of the goods or services, the more unlikely it will be distinctive for registration purposes. This is because such a mark could be used by any manufacturer or seller of the same or similar goods or services.

A word or device not related to the nature of the goods or services will have a better chance of being registered. Such types of marks may not appeal to marketing or advertising people as they may not convey a direct message to the potential consumer.

b) Invented words
Invented words (preferably with two easily pronounceable syllables and with no obvious relation to the goods/services) have a much higher chance of approval for registration by the Registrar of Trade Marks & Patents. KODAK, PERSIL, LEGO and SONY are some invented words which have acquired tremendous worldwide recognition and been registered as trademarks.

c) Known words
A known word can be an acceptable mark for registration, provided it does not refer to the quality or function of the goods or services offered under the mark. Some examples are JAGUAR for cars and MARS for chocolate.

d) Composite marks
A mark can also combine two or more words or parts of words. The resulting word again should ideally have no reference to the quality, benefit or type of goods or services offered. Examples are BABYCHAM and COCA-COLA.

e) Marks accompanied by devices or pictorial or graphic representation
It is also possible to register trademarks which consist of words, labels, get-up or pictorial representation, or a combination of any of these. The lack of distinctiveness of a word may be redeemed by a very distinctive accompanying graphic representation.

It is important to remember that the lack of sufficient distinctiveness of a mark may be improved over time, through usage or advertising. The mark may also be rendered highly distinctive by adding an unusual device to it.

An unregistered mark or unregistrable mark is not, however, completely without protection. Common law and statutory protection exist in the forms of passing-off, injurious falsehood, and copyright actions.

Searches

To ascertain whether a mark is suitable for registration as trade or service mark in Singapore, we can assist you to conduct searches in the Registry of Trademarks and Patents for existing marks already registered or in respect of which applications have already been submitted.

The material in this memorandum is of the nature of the general comment only, and neither purports, nor is intended to be advice or any particular matter. Legal advice should be sought from qualified lawyers on any issues and queries relating to the topic.