Singapore (SG)
07-31-2012 (Newsletter Issue 12/12)New Website LaunchedThe Intellectual Property Office of Singapore (IPOS) has recently launched a new website. The source is available in English and contains official information on patents, trade marks, registered designs, plant varieties and copyright, such as annual reports, legal texts, statistics and useful links. Users can also find links to all the e-services from e-filing to e-search, along with further details on filing an application at IPOS, forms and fees and information about IP service providers.
To access the new website, please click here
Source: www.epo.org 02-07-2012 (Newsletter Issue 2/12)
New Dispute Resolution Procedure
Singapore signed a Memorandum of Understanding (MOU) with WIPO establishing a dispute resolution procedure for IP disputes filed with IPOS on September 28, 2011. The new resolution allows IP disputes filed with IPOS to be mediated using WIPO rules. It took effect on January 3, 2012.
Source: Source: hslegal LLP, Singapore
11-08-2011 (Newsletter Issue 13/11)
Adoption of 10th Edition of Nice Classification
The Intellectual Property Office of Singapore (IPOS) announced on September 16, 2011, that the 10th edition of the Nice Classification will come into effect on January 1, 2012.
The Registry will provide more information on the specific changes shortly. However, the Search & Pick and eTrademarks Search databases will be duly updated and the relevant changes will be captured once the 10th edition of the Nice Classification comes into force.
The 9th edition of the Nice Classification shall continue to apply to all applications filed before January 1, 2012. Applications filed on or after January 1, 2012 shall be filed in accordance with the 10th edition of the Nice Classification. For the avoidance of doubt, there will be no reclassification of goods and services for existing applications filed prior to January 1, 2012, after the 10th edition of the Nice Classification comes into force. The Registry will conduct cross class searches to ensure that relevant citations are captured.
Source: www.ipos.gov.sg, Allen & Gledhill LLP, Singapore
11-08-2011 (Newsletter Issue 13/11)Official Fees Increase in DecemberThe Singapore's Intellectual Property Office has revised its fees upwards by an average of 10%, effective on December 1, 2011. The new official fees can be viewed here
Source: hslegal LLP, Singapore 10-25-2011 (Newsletter Issue 12/10)
Official Fees to Increase in November
The Intellectual Property Office of Singapore (IPOS) will increase its official fees sometime in November 2011. This was announced at a recent dialogue with IPOS. The increase in official fees takes place to meet in the increase in IPOS’s operating costs. In most cases, official fees are expected to increase by about 10%.
Source: hslegal LLP, Singapore
08-03-2011 (Newsletter Issue 10/11)
Revocation Process Changed
The Intellectual Property Office of Singapore (“IPOS”) amended the Trade Mark Rules for revocation actions filed on the ground of non-use. In the past, the registered proprietor’s evidence of use filed with the counter-statement has been accepted without the need for such evidence to be sworn.
Pursuant to Rule 69(1) of the Singapore Trade Mark Rules it is now required that “evidence shall be given by way of a statutory declaration unless otherwise provided by the Act of these Rules or directed by the Registrar”. This applies all inter partes proceedings including revocation actions.
This means that if a proprietor intends to defend his trade mark registration against revocation for non-use, he needs to file evidence of use by way of a statutory declaration together with his counter-statement. He is only required to show that he has an arguable case with prima facie evidence such as brochures and sales receipts. The evidence does not have to comprise the proprietor’s entire defence in relation to use as more detailed evidence, can be filed during the course of the proceedings. Alternatively, if a proprietor intends to defend his trade mark registration by giving proper reasons for non-use, he would only be expected to give these reasons in his counter-statement without a supporting statutory declaration.
If evidence is not filed in accordance with the Rules, the application for revocation will be granted and the registered proprietor’s trade mark registration will be revoked. As the Registrar has accepted counter-statements without sworn evidence under past practice, there will be a grace period from 1 May 2011 to 31 October 2011 for proprietors to re-file their evidence by way of a statutory declaration. After this grace period, the Registrar will grant the application for revocation if no evidence by way of a statutory declaration is filed with the counter-statement.
Source: hslegal LLP, Singapore
Legal basis is the Trademark Act of 1998, last amendment in force since July 2nd , 2007.
The principles of “common law” apply.
Singapore is a member of the Madrid Protocol.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, colours, combinations or shades of colours, sounds, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs.
Theoretically registrable are smell, hologram and movement marks as well.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed with the Intellectual Property Office of Singapore.
Multiple-class applications are possible.
To complement a multiple-class system, it is now possible to divide a trademark application into two or more applications. A trademark applicant may divide his application into two or more applications so that those classes of goods or services that do not face opposition or objection can proceed to registration first. Division will therefore expedite trademark registration where appropriate.
Foreign applicants do not need a local agent. An address for service in Singapore is necessary.
A power of attorney is not necessary.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 6 to 12 months.
Prior to registration, the trademark application is published in the Trade Mark Journal.
National:
The opposition period is 2 months from publication date of the application. A request for an extension of time to file the notice of opposition may be made by filing the necessary form within 2 months from the date of publication of the application in the Trade Marks Journal. In this case, the opponent has to notify the trademark applicant of its intention to apply for an extension of time and to request the latter’s consent. The total extension of time for which the Registrar may allow to file the notice of opposition cannot exceed 4 months from the date of the publication.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
2 months. A request for an extension of time to file the notice of opposition may be made by filing the necessary form within 2 months from the date of publication of the international registration within the Trade Marks Journal. It is a formalities requirement for the opponent to notify the trademark applicant of its intention to apply for an extension of time and to request the latter’s consent. The total extension of time for which the Registrar may allow to file the notice of opposition cannot exceed 4 months from the date of the publication.
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
If the trademark has not been used within 5 years from issuance of the registration certificate or the Statement of Grant (for marks registered under the Madrid Protocol), it may become vulnerable to a revocation action.
Subsequent use of the trademark can restore protection if no party has requested revocation due to non-use in the meantime.
The official trademark application fee for a manual submission is SGD 374.00 (approx. EUR 233.00) for each class; and for an online submission, the official fee is SGD 341.00 (approx. EUR 212.00) for each class. There are no official fees payable at the publication and registration stages for trademark applications in Singapore.
Trademark Licence Agreement
In Singapore a licence agreement has to be in writing. Licensing of unregistered or pending marks is permitted. A licence to use a registered trademark may be limited to only some of the goods or services covered by the trademark. There are exclusive and non-exclusive licences. The sale of a registered trademark does not automatically terminate the licence. There is no prescribed form or content for a licence agreement.
A typical trademark licence agreement will include:
1. Details of licensor and the licensee
2. Details of the trademark being licensed
3. Scope and terms of usage of the licence including any territorial restrictions
4. Quality standards and quality control measures
5. Financial terms of the trademark licence
6. Exclusivity of the trademark licence
The licensor is responsible for supervising the quality of the licensed goods and the licensee shall ensure the quality of the goods in respect of which the registered trademark is used.
Recordal
There are provisions in law for the recordal of a licence. Recordal of a licence is not compulsory, but it is advisable since recordal serves as notice of the licence to third parties. There is no time frame for a recordal. The request to register a licensee has to be filed on official form TM 37.
No further documents are required for a recordal.
Effectiveness
A licence is not effective against third parties unless it is in writing and signed by or on behalf of the grantor. A licence becomes enforceable against third parties from the application date of the licence recordal. The licence is not required to be published.
Infringement Proceedings
There is no evidentiary presumption that use by a recorded licensee is permitted use. Unless otherwise provided for, a licensee is entitled to call on the proprietor of the registered trademark to institute infringement proceedings in respect of any matter which affects his interests. If the proprietor refuses or fails to do so within two months after having been called upon, the non-exclusive licensee can institute proceedings in his own name. In this case, the proprietor must be joined as a plaintiff or defendant in any such proceedings. An exclusive licensee may institute trademark infringement proceedings in his own name at any time. He is not required to cite the trademark owner as a plaintiff or co-defendant.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
290,00 € |
260,00 € |
| Word Mark Search (identical) |
140,00 € |
30,00 € |
| Extended Search (word mark, company name, domain) |
570,00 € |
260,00 € |
| Device Mark Search (availability) |
380,00 € |
250,00 € |
| Trademark Owner Search |
390,00 € |
|
| Company Name Search |
340,00 € |
|
| Domain Name Search (extended) |
|
|
| i-Search (word mark availability + legal opinion) |
390,00 € |
330,00 € |
The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey01-09-2013
Francine Tan Law Corporation, Singapore, Singapore
12-15-2011
Namazie & Co, An Intellectual Property & Technology Law Firm, Singapore, Singapore
06-06-2011
Allen & Gledhill LLP, Singapore, Singapore
Licensing01-09-2013
Francine Tan Law Corporation, Singapore, Singapore
12-15-2011
Allen & Gledhill LLP, Singapore, Singapore
Namazie & Co, An Intellectual Property & Technology Law Firm, Singapore, Singapore
02-01-2011
Allen & Gledhill LLP, Singapore, Singapore