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> What is a Trade Mark and how to protect it
A
trade mark can exist in the form of a word, name, signature,
numeral, logo, brand, heading, label, shape, colour, aspect
of packaging or any combination of the above. A mark that is
used in relation to services as opposed to goods is referred
to as a "service mark".
Trade
marks are used to distinguish the goods and services of one
trader from that of another. It may also indicate the source
of the origin of the goods or services and also the quality
of the goods or services.
Protection
of a trade mark can be obtained by filing an application with
the Registry of Trade Marks, Intellectual Property Office of
Singapore (IPOS). Before an application can be filed, an applicant
has to decide on the type of goods for which registration is
sought. Different types of goods are covered under different
classes. The classes under which goods may be registered are
numbered from class 1 to 34 under the International Classification
of Goods and Services generally referred to as the "ICGS".
The classes under which services may be registered are numbered
from class 35 to 42. Care should be taken to ensure that the
application is made under the correct class. It may sometimes
be necessary to file applications in more than one class if
the applicant deals in a wide range of goods which may fall
under different classes. Similarly, an applicant for a service
mark has to decide on the type of service for which registration
is sought.
Having
identified the relevant class or classes, the applicant is advised
to conduct a search at IPOS to ensure that there is no identical
or similar mark on the register. If the search is done by the
applicant's lawyer, an opinion will usually be rendered on the
issue of whether the applicant's mark is identical or similar
to a particular trade mark on the register by applying legal
guidelines. If there is no identical or similar marks on the
register, the applicant may then proceed with the application.
Before
proceeding with the application, it is however advisable for
the applicant to obtain a legal opinion on whether a particular
mark is registrable. The Trade Marks Act sets out grounds for
which a registration will be refused. Much time and expense
would be wasted if the application is proceeded with without
considering these possible grounds for refusal. If objections
are raised during the examination stage and they cannot be overcome
the application will be refused.
The
applicant should try and avoid using marks which consist exclusively
of signs or indications which serve to designate the kind, quality,
quantity, intended purpose, value, geographical origin, the
time of production of goods or other characteristics of goods
or services and trade marks which consist exclusively of signs
or indications which have become customary in the current language
or in the bona fide and established practices of the trade.
These are just some of the grounds for refusal.
This
article does not intend to deal with all the grounds for refusal.
If a trader intends to provide his goods or services over the
internet, the selection of a trade mark needs to be carefully
thought out. The trader may want to ascertain whether a particular
mark is already registered as a domain name, and if not, to
proceed to obtain registration of the domain name. It is useful
to have a domain name identical to the trade mark.
Application
for registration of a trade mark is made by filing the prescribed
forms provided by the Trade Mark Rules. Some points to note
when preparing the forms for filing is that when the application
consists of a device, a description of the device in words,
as accurate as possible, should be given. If the mark contains
or consists of a word which is not an English word, the applicant
is required to provide the derivation of the word and the English
translation. If the mark contains or consists of a foreign character,
the applicant has to specify the language and provide a transliteration
of the character.
After
the application is filed, the mark will be examined to ensure
that it is not one which should be refused under the grounds
for refusal of registration in the Trade Marks Act Chapter 332.
There are numerous grounds upon which a registration may be
refused. The applicant may need legal assistance to answer some
of these objections as they may be technical.
If
there are no objections or the objections raised have been overcome
and the application is accepted, the application will be published
in the Trade Marks Journal. Any person wishing to file opposition
proceedings has to do so within 2 months from the date of the
publication. If no opposition is filed within the prescribed
period, Certificate of Registration will then be issued. The
cost for filing and obtaining registration of a trade mark varies
from law firm to law firm but is generally in the region of
S$1,200.00 inclusive of official fee.
Registration
gives the proprietor various rights and remedies including the
exclusive right to use the trade mark and to authorize its use
by other persons. The proprietor may also obtain relief for
infringement of his trade mark. A trade mark is a personal property.
Registration can be granted to 2 or more persons jointly. It
is assignable and transmissible in the same way as other personal
or movable property.
The
applicant may want to obtain registration for his trade mark
in countries other than Singapore. Prior to Singapore acceding
to the Madrid Protocol on 31 July 2000, an applicant seeking
registration in countries other than Singapore has to instruct
lawyers or agents in each of the countries in which registration
is sought and to file a separate application in each of the
countries.
With
effect from 31 October 2000, an applicant can apply for an international
registration of trade marks in Singapore without having to file
separate applications in each of the countries where registration
is sought provided these countries are covered by the Protocol.
The applicant may designate in his international registration
the countries in which registration is sought. One of the main
advantages of the International Registration System is that
the applicant need only file one application in one language
and pay one fee. A further advantage is that changes subsequent
to the registration, for example, a change in the name or address
of the proprietor or change in ownership may be recorded through
a single procedural step. There is only one expiry date and
only one registration to renew.
The
fee for obtaining an international registration consists of
a basic fee of 653 Swiss Francs, a standard designation fee
of 73 Swiss Francs, a supplementary fee of 73 Swiss Francs for
each class of goods and services beyond the third and a handling
fee charged by the national office. The fee charged by the solicitors
for handling the application will vary from law firm to law
firm and depend on the actual scope of the instructions.
Conclusion
With
changes to the trade mark registration system locally and with
the introduction of the international registration system it
will now be easier and cheaper for traders to obtain protection
for and to maintain their trade marks both locally and internationally.
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