What is a trade mark?
A trade mark could be a symbol, word or phrase which you use to distinguish your business’s goods or services from others. Trade marks can sometimes be identified by commonly used symbols such as ® (registered trade mark) or ™ (unregistered trade mark).
Above all, a trade mark represents your brand, and is often how people identify your brand. This article addresses the process of trade mark registration, the benefits of registering your trade mark, and any questions you may have about trade mark registration in Singapore.
In Singapore, the registration and protection of trade marks are governed by the Trade Marks Act, which lays the legal framework for registration, rights, and enforcement of trade marks. This ensures that trade marks are well protected and managed appropriately under the law. Many businesses consult a lawyer in Singapore to ensure their intellectual property is properly secured.
| TRADE MARKS ACT 1998 2. —(1) In this Act, unless the context otherwise requires — … “sign” includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof; “trade mark” means any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person; |
Definition of a trademark under the Trade Marks Act
1. Why should you register for a trade mark?
If you are a business owner, it is highly recommended for you to consider registering your trade mark for your business. A registered trade mark gives you a statutory monopoly and prevents others from passing off their products under your brand. In Singapore, a trade mark is valid for 10 years, and can last indefinitely if it is renewed every 10 years. A reputable Singapore law firm with expertise in intellectual property and business law can assist you in this process.
- Benefits of registering for a trade mark
With a registered trade mark, you can:
- License your trade mark to third parties to expand your market share (e.g., through franchise);
- Sell your trade mark for a sum of money in the event of an acquisition of your company;
- Use your trade mark to raise equity for your business undertakings;
- Add value to your business by helping your customers easily identify and remember your goods and services.
- Protections a registered trade mark grants you
You will also be able to:
- Protect your market share (i.e., your profits) by deterring others from using your trade mark without your consent;
- Protect yourself from competitors infringing on your trade mark(s);
- Prevent others from registering a similar trade mark, especially in respect of the same or similar goods and services provided by your business.
As a business owner, you would have worked hard to establish a reputation for your business under a particular branding. However, a competitor may try to unfairly ride on the coattails of your success by imitating the branding of your business. They may use similar colours, fonts, and even visuals to what your business has used, making their business look highly similar to yours. This can lead to customer confusion about which business is the original and which one was established first.
If you find yourself in this situation where someone is imitating your business branding, there are two main legal causes of action to address this if you have a registered trade mark – the tort of passing off and trade mark infringement. On the other hand, if you do not have a registered trade mark, you can only bring an action in the tort of passing off against the defendant. You may consult the expert services of a litigation lawyer in Singapore in the event of a conflict.
Trade Mark Infringement
Trade marks are given statutory protection under Section 27 of the Trade Marks Act, which provides as follows:
- A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, the person uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
- A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, the person uses in the course of trade a sign where because
- the sign is identical to the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or
- the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public.
For example, if a competitor applies your trade mark (or a trade mark that is similar to yours) to their own goods or packaging, they would be infringing on your trade mark.
Following Section 31 of the Trade Marks Act, if a competitor has infringed on your trade mark, the court may grant the following types of relief:
- an injunction (an order to stop the infringement)
- damages;
- an account of profits;
- (where a counterfeit trade mark is used) statutory damages
In this instance, consulting a lawyer in Singapore may be beneficial to safeguard your business.
Tort of Passing Off
The basic principle that the law of passing off is based on is that a trader should not sell his or her goods on the pretext that they are the goods of another trader. This action can be used to enforce both registered and unregistered trade mark rights.
There are three elements to the tort of passing off, which are goodwill, misrepresentation, and damage. As the Plaintiff, you must show that these three requirements are met for an action for passing off to succeed against the Defendant.
The case of Han’s (F&B) Pte Ltd. v Gusttimo World Pte Ltd. [2015] SGHC 39 (“Han’s F&B”) is helpful in illustrating these concepts. In these proceedings, the Plaintiff was Han’s (F&B) Pte Ltd., and the Defendant was the owner of a restaurant named “HAN Cuisine of Naniwa.” The Plaintiff opened its first Han’s restaurant in 1980, while the Defendant opened HAN Cuisine of Naniwa in 2012. While the Plaintiff’s Han’s restaurant served a combination of local food, Hainanese-style Western sets and pastries, the Defendant’s HAN Cuisine of Naniwa served Japanese cuisine. The table below depicts the Plaintiff’s registered trade marks (“the Han’s trade marks”), as well as the sign that the Defendant was trading under (“the HAN sign”).
The Plaintiff claimed that the Defendant was passing off its business as the Plaintiff’s by using the HAN sign.
Goodwill
The first element is goodwill – your brand must have already acquired goodwill at the material time that the Defendant launches its business or product. “Goodwill” consists of two essential features – the first being that the business must be associated with a mark that has been applied on a particular source. The second is that an attractive force must arise from that association, which brings in custom. In essence, goodwill is the “benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom.” It is important because it distinguishes an old-established business from a new business. Goodwill can be proved by showing evidence of sales or of expenses incurred in promoting the goods and services in association with the mark, brand or get-up which they bear.
Goodwill is the legal property that the law of passing off protects. In essence, the law recognises that the Defendant should not be able to take advantage of the positive associations with your brand by imitating your brand.
In Han’s F&B, the Court accepted that there is goodwill in the Han’s trade marks amongst the general public. The large revenue and volume of sales showed the goodwill in the Han’s trade marks. The Han’s restaurants also had wide exposure, with the chain of 21 outlets operating throughout Singapore. All this was evidence that the general public in Singapore had come to associate the chains which trade under Han’s trade marks as emanating from the same source.
Misrepresentation
In the context of the tort of passing-off, the Defendant will have made a misrepresentation if the Defendant uses a similar mark or get-up to that used by you, the Plaintiff. The misrepresentation must also give rise to the likelihood of confusion that the goods and services of the Defendant originate from the same source or are somehow connected to the source of the Plaintiff’s goods and services.
In Han’s F&B, the Plaintiff alleged that the Defendant has misrepresented that there is a connection or association between the Plaintiff and the Defendant by using the name “HAN.” The Plaintiff’s argument was that within the food and beverage industry, it is common for investment holding companies to provide a wide range of goods and services under different brands which target and cater to different market segments. Thus, an average Singaporean will believe that the Plaintiff’s and the Defendant’s establishments are managed by the same corporate group. However, the Court held that there was no misrepresentation. The Court considered that the HAN sign had a different conceptual feel, and that the word “Han” has several well-known meanings including as a surname. This, coupled with the significant difference in décor and price, led the Court to the conclusion that there is no substantial likelihood of confusion.
Damage
The Defendant’s act of passing off must result in some kind of loss. Such damage can take the form of (but is not limited to) the dilution of your goodwill, loss of profits, and damage to reputation.
In Han’s F&B, the Court found that the Plaintiff had failed to prove that they had or were likely to suffer any loss. Although both the Plaintiff and Defendant were in the food and beverage industry, the market segments provided by their respective restaurants were far apart. The HAN sign, while bearing some similarity to the Plaintiff’s marks, is not the same. The Plaintiff had also not shown evidence that it had suffered significant damage in the form of being deprived of a real opportunity of moving into the market segment targeted by the Defendant’s restaurant. The Plaintiff failed to prove that they have or are likely to suffer any loss. The Plaintiff’s claim in passing off was therefore dismissed.
If the Court finds that a competitor has attempted to pass its business off as yours, the Court may grant the following types of relief:
- an injunction (an order to stop the infringement)
- damages;
- an account of profits;
How can a lawyer be helpful in the process of filing a trade mark?
A law firm in Singapore can help streamline your trade mark application process.
At Christopher Bridges Law Corporation, our lawyers can assist with:
- Researching and checking if there are any trade marks registered prior to your proposed trade mark which are similar to your proposed trade mark;
- Advising you on the classes of goods and services for which your trade mark can be registered;
- Liaising with IPOS and filing your trade mark application on your behalf.
- What are the steps to registering a trade mark?
Step 1: Identify your distinctive trade mark
To meet the registration criteria, your trade mark must:
- be represented graphically;
- be distinctive and capable of distinguishing your goods or services from others;
- not be identical or confusingly similar to existing trade marks;
- not consist entirely of signs which are descriptive of your goods or services, or are customary in current language.
Estimated time: 1-2 weeks
Step 2: Conduct research in the trade mark database
To ensure that a similar trade mark has not been previously registered by others, our lawyers in Singapore will assist you in conducting a Similar Mark Search on the IPOS Digital Hub. This will save the need for additional time taken and costs accumulated for amendments to be made.
Estimated time: 1-2 weeks
Step 3: Identify the class of goods and services
At our Singapore law firm, our lawyers will advise what goods or services you may wish your trade mark to be registered in before filing, based on the IPOS’ Classification Database of pre-approved descriptions of goods and services.
Estimated time: 1-2 weeks
Step 4: Filing and processing of your trade mark application
Submission of trade mark application
- Our lawyers will submit the Form TM4 on your behalf when applying for a trade mark registration in Singapore via the IPOS Digital Hub. Please provide the necessary details required on the form, and our lawyers will handle the rest.
Processing and examination of trade mark application
- Once the essential filing requirements are met, a filing date will be accorded. If the trade mark is registrable, it will proceed to the publication stage.
- If the essential filing requirements are not met, you will receive an examination report, which will state the reasons for objection and the claimed goods and services that are being objected to. Our lawyers will assist you in responding to the report within 4 months by either:
- providing any necessary information,
- amending the application via Form TM27, where relevant, or
- applying to the registrar in Form HC4 for a hearing.
Estimated time: 9 months
Step 5: Publish your trade mark
If your trade mark application is accepted, your application will be published in the Trade Marks Journal for public inspection for 2 months. Third parties may oppose the registration of your trade mark. If there is no opposition, your application will proceed to registration.
During the opposition period, anyone can object to the registration of a trade mark by starting opposition. The grounds of opposition overlap with registrability criteria used during examination. If the grounds of opposition are established, the application is refused. If the grounds of opposition are not established, the trade mark application progresses to registration.
Estimated time: 2-3 months
Step 6: Register and receive your trade mark certification
Should there be no further objections to your application, your registration for the trade mark will be successful. IPOS will issue you a certificate of registration and the trade mark will be granted protection for 10 years.
Our lawyers in Singapore will see through your renewal process for your trade mark registration, should you wish to extend the protection of your trade mark for another 10 years. Filing for a renewal of your registration can commence 6 months before its expiry.
Estimated time: 1-2 months
As a business owner, you may have multiple trade marks, or a portfolio of marks. Our legal team will be able to manage the entire portfolio of marks for you, saving you the hassle of registering individual marks. Further, we will also be able to help you deal with any oppositions or objections.
Total estimated time for steps 1 to 6: 12-15 months
- How long does the process of registering a trade mark take?
The process of registering a trade mark usually takes about 12 months from the initial application date to be completed. However, objections and oppositions arising from your application may result in a delay in registration.
- What are the fees?
The IPOS filing fees are as follows:
| Description | Fees |
| Application to register a trade mark | For class(es) whose specification items are fully adopted from IPOS’ Classification Database of pre-approved descriptions of goods and services: S$280 per class |
| For class(es) whose specification items are not fully adopted from IPOS’ Classification Database: S$380 per class |
More detailed fees for filing for a trade mark can be found here.
These filing fees will be charged to you as disbursements.
As a general guide, our lawyer’s fees for trade mark registration are as follows:
| Description | Fees |
| Registration for the first class of goods and services | $450 |
| Registration for each additional class of goods and services | $400 |
| Dealing with oppositions | Hourly rates Director and Consultant: $950.00 per hour excluding disbursements Senior Associate: $650.00 per hour excluding disbursements Legal Associate: $550.00 per hour excluding disbursements Paralegal and Trainee: $300.00 per hour excluding disbursements |
Conclusion
As business owners, Intellectual Property (IP) laws and trade marks are essential for you because they protect your brand, products, and innovations from unauthorised use. Our lawyers at Christopher Bridges Law Corporation understand that your brand is one of your most valuable assets. It will be a costly mistake to allow competitors to copy your branding. We will assist you in every step in navigating Intellectual Property (IP) laws in Singapore and secure the necessary protection for your work.
Please feel free to reach out to our law firm in Singapore at (+65) 6323 2328 or seccbridges@cbridgeslaw.com to schedule a free consultation.
