It is essential to first determine if any other person or organisation has the right to prevent you from using your trade mark before you begin using your trade mark. This can be done by searching the records of the Trade Marks Office, business and company names registers and any other databases available, including directories such as the Yellow Pages and directories relating to your particular industry, for the same or similar trade mark as the trade mark you intend to use. Trade mark lawyers and intellectual property lawyers can conduct searches on your behalf at a cost.

There are two types of Trade Marks:

1. Common law Trade Mark (commonly designated by ™) occurs where the trade mark has been used either as a brand name or in advertising in relation to certain goods and/or services to such an extent that it has developed a reputation such that any unauthorised use by another trader would amount to a misrepresentation or be misleading or deceptive

2. Registered Trade Mark (commonly designated by ®) is a trade mark registered under the Trade Marks Act.

It is not compulsory to register a trade mark in Singapore. An individual, firm or company, who owns a trade mark and uses it in connection with his goods or services, acquires common law rights in that mark by virtue of the use and reputation of the mark.

For a trade mark that is not registered, the owner can only rely on the common law action of passing off to protect his mark against imitation or infringement. This remedy, however, requires the owner of the mark to prove his reputation and goodwill. The requirement of proving reputation and goodwill may pose some problems where the business or the use of the trade mark has not been established for a substantial period of time.

By filing for trade mark registration, the trade mark owner obtains a right to ownership or statutory monopoly, and the right to prevent others from using a similar mark without his permission.

Having a registered trade mark gives the registered trade mark owner the power to take action to stop, and/or seek compensation from, another person for using the same or similar trade mark in relation to the same or similar goods or services for which the trade mark is registered. Therefore the main purpose of registering a trade mark is to avoid the need to make extensive use of it in relation to your goods and/or services before being able to prevent other traders from using it. Once registered, a trade mark also becomes a piece of property that can be bought and sold.

Any legally recognised person or entity including an individual, a company, a partnership, etc can apply to register a trade mark. The main restriction to applying to register a trade mark is that the applicant must be the owner of the trade mark.

Where the trade mark includes artwork, copyright in that artwork may be owned by the creator of the artwork and not the applicant. If the applicant does not own the copyright in the artwork to be used in the trade mark they will not be considered to be the owner of the trade mark. So it is essential to purchase the copyright in the artwork to be used in the trade mark before applying to register.

A trade mark can be letters, words, names, signatures, numerals, devices, brands, labels, tickets, shapes, colours, aspects of packaging or any combination of these. For a trade mark to be registered it must be distinctive and capable of distinguishing the goods and/or services of the owner from other similar goods and/or services.

The following are some common examples of marks that cannot be registered under the trade mark law in Singapore:

Descriptive Marks : Marks that describe the goods and services of the business. For instance, marks that describe the quality ('Good' or 'Best'), quantity ('One dozen'), value ('Cheap'), intended purpose ('Cleaner'), or geographical origin cannot be registered.

Marks 'Common to the Trade' : Marks that are signs or indications that are or have become customary in the trade. Some marks have become so well accepted that the term is used to describe the type of the goods or services in general, and no longer serves to distinguish the products offered. An example of a trade mark that has become customary in the industry is "escalator".

Marks Contrary to Public Policy or Morality : Marks that are generally contrary to public policy or morality.

Deceptive Marks : Marks that attempt to deceive the public. For instance, marks that misrepresent the nature, quality or geographical origin of the goods or services cannot be registered.

• Select a Sign or Symbol: You may combine various signs and types of symbols to increase uniqueness
   
• Select a word to go with the Sign or Symbol [Consumers usually find it easier to remember a mark with word(s)]
   
• Avoid using words which have been misspelt
   
• Avoid using laudatory words
   
• Avoid using descriptive words
   
• Neither the sign, symbol or word should be commonly associated with the product or service in question

Trade marks that are already in use can still be registered and there is no time limit as to when the owner may apply for a registration.

Although there is no time limit for filing, it should be noted that a suit for an infringement of a registered trade mark is only possible if the trade mark is registered. Upon registration, a trade mark registration takes effect from the date of filing.

Registration for use in relation to specific classes of goods and/or services

For the purposes of trade mark registration, all of the known goods and services in the world have been classified into 45 classes. Trade mark registration should only be sought for goods and services that you are in the business of producing or providing. The types of classes are provided in our Members' section.

The rights conferred by a registered trade mark extend throughout Singapore. It gives the owner the right to prevent others from using in Singapore as a trade mark, a mark similar to the mark registered in relation to the same or similar goods or services in Singapore without the owner's permission.

The registered trade mark can last indefinitely, subject to renewal every 10 years. A registered trade mark is a form of property; it can be licensed or assigned.

To register a trade mark an application must be made to the Trade Mark Registry at the Intellectual Property Office of Singapore (IPOS). A fee must accompany the application (manual or e-filing).

The application is then examined by the Trade Marks Registry to ensure that it complies with the provisions of the Trade Marks Act. If the application does not comply with the Act a report will be sent to the applicant stating why the trade mark is not capable of being registered.

However, an initial refusal does not necessarily mean that the trade mark is not capable of being accepted for registration if you can successfully argue against the refusal by providing further evidence of its eligibility.

The whole process of registration may take a period of 12 to 18 months. Refer to the diagram below.

A trade mark registration lasts 10 years. It can be renewed indefinitely, towards the end of each 10 year period, by the payment of renewal fees. The life of a trade mark registration is therefore potentially unlimited.

However, trade mark registration under the Act only has effect in Singapore. To obtain trade mark rights and protection in other countries it is necessary to use and/or register the trade mark in those countries.

Trade mark protection is territorial in nature. A separate registration will have to be made in each of the countries where protection is desired. To obtain protection outside Singapore, it is necessary to file applications in the countries concerned either individually or via the Madrid Protocol.

Trade Mark registration is available in most countries of the world and is a national right. If you are planning to export goods bearing your trade mark you should apply for registration of your trade mark in the foreign country into which you plan to export your goods. Any rights that you establish in Singapore will not assist you in a foreign country.

In addition you should be careful to apply for registration in a country before you commence use of your trade mark in that country. In some countries (eg Continental Europe, China, Japan and Indonesia) the first person to apply for registration will be given the rights to a trade mark, rather than the person who first uses the trade mark. Therefore, another party could legitimately "steal" your trade mark by applying for registration even if you were the first person to use the trade mark.

On 31 October 2000, Singapore became a member of the Madrid Protocol, which allows Singapore trade mark owners to file a single application and obtain trade mark protection in over 60 countries (other members of the Madrid Protocol).

The following table lists the member countries of the Madrid Protocol. (as at December 25 2003)

The Madrid Protocol provides for a system of international registration of marks. This process produces the same effect as if an application for the registration of the trade mark has been made in each country designated by the applicant. The Madrid Protocol allows a trade mark owner to seek protection for his trade mark in several countries simultaneously by filing one application with a single office, in one language, with one set of fees in one currency (Swiss francs).

The Madrid Protocol is administered by the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland.

Country of Origin

Under the Madrid Protocol, a trade mark must first be registered or applied for in the country of origin before filing for an international application. A country of origin is a country that is a party to the Madrid Protocol where the applicant is a resident or national of, or has a real and effective industrial or commercial establishment.

International Registration

Where Singapore is a country of origin, an international application may be filed with IPOS in Singapore or the International Bureau of WIPO in Geneva, Switzerland.

In order to obtain an international registration under the Madrid Protocol, a Singapore trade mark must first file an international trade mark application with IPOS designating other member states of choice.

The international application is to be filed on the forms prescribed by WIPO. IPOS's role is to act as the office of origin and receive the international application together with the applicable administrative fees. There is no limit on the number of states applied for so long as they are all members of the Protocol and the requisite fees are paid.

Upon receipt of the application, IPOS will examine the application for irregularities such as the requisite fees are paid. The Applicant should ensure that the forms are properly signed either personally by the Applicant or by his chosen trade mark agent.

The date of receipt by IPOS of the application will represent the filing date. This date is important as it determines the eventual date of registration of the mark. If IPOS during examination detects irregularities in the form, it will correspond with the Applicant to rectify these irregularities within a designated period of time.

An international application designating Singapore under the Madrid Protocol is treated in the same manner as Singapore national applications, and is therefore published in the Trade Marks Journal for opposition purposes before protection is granted. They are published in a separate section of the Trade Marks Journal entitled "International Registrations filed under the Madrid Protocol Published for Opposition Purposes under the Trade Marks Act (Cap. 332, 1999 Ed.)". Unlike Singapore national applications, they are published according to the international registration number instead of the class of goods or services.

Process of Madrid Protocol

The effect of the Madrid Protocol is that an applicant can file a single application with his national trade mark office, which will then forward the application to World Intellectual Property Organisation in Geneva.

WIPO will conduct a limited review of the application for formalities, publish the mark in the WIPO Gazette of International Marks and forward the application to all the countries designated for protection.

The national trade mark offices will then examine the application for registrability under local laws and decide upon any oppositions filed in accordance with the laws and procedure. Each of the offices has up to 18 months to notify WIPO of the refusal of the application. If no refusal has been communicated within the 18 months, the trade mark is deemed to be registered in the designated countries.

The marks stated in the above table are strictly for research, illustration and/or information purposes, and the rights thereof belong to their respective owners.