Aug 25, 2022 (Newsletter Issue 12/22)
New Filing System Launched / Official Fees Increased
On 2 June 2022, the Intellectual Property Office of Singapore (IPOS) has launched the new filing system IPOS Digital Hub. It replaces the e-services platform IP2SG.
The new system offers, among other things, an improved user interface, an enhanced search function, intellectual property management features and more support for IP dispute resolution procedures.
Alongside the launch of the new IP filing system, official fees were changed. The new official fee for filing a trademark application increased from SGD 240 to 280 for each class using the pre-approved list of goods and services and from SGD 341 to 380 for each class if it is not under the pre-approved list of goods and services.
Source: www.ipos.gov.sg
May 19, 2022 (Newsletter Issue 6/22)Simplified Court Procedures for IP DisputesOn 1 April 2022, the new Supreme Court of Judicature (IP) Rules 2022 (SCJIPR 2022) came into force.
The new Rules provide for a new optional track for IP disputes for certain claims. The new single streamlined procedure will ensure time and cost proportionality for IP disputes and is especially suitable for individuals as well as small and medium-sized enterprises.
The key features of the simplified process are as follows:
1. It is generally suitable if the dispute involves an IP right, where the monetary relief claimed by each party in the action does not or is not likely to exceed SGD 500,000 or where all parties agree to the application of the process.
2. At a case conference, the court must give directions on all matters necessary for the case to proceed expeditiously and, if practicable, give directions to ensure that the trial is completed within 2 days.
3. If the case is proceeding to trial, the total costs ordered against a party must not exceed SGD 50,000 in relation to the trial of the originating claim and must not exceed SGD 25,000 in relation to any bifurcated assessment as to the amount of monetary relief after any set off.
For more information, please see here Source: www.judiciary.gov.sg Mar 31, 2022 (Newsletter Issue 4/22)Important Changes to IP SystemOn January 12, 2022, Singapore’s Parliament approved the Intellectual Property (Amendment) Bill 2021 to improve the intellectual property systems by enhancing business-friendliness, operational efficiency, and legislative and procedural clarity. It affects the Trade Marks Act, Registered Designs Act, Geographical Indications Act and Plant Varieties Protection Act. It is expected to be implemented in May 2022.
Key changes for trademarks are the following:
- Partial acceptance for national trademark applications will be permitted. This amendment will expedite the progress of applications that only face objections in relation to some of the goods or services claimed. This also aligns the practice in place for international applications designating Singapore.
- The time frame to "revive" applications that have been treated as withdrawn will be shortened from six months to two months. By this, applications will have a greater incentive to carefully monitor and act before the relevant deadlines. It also benefits prospective applicants that are waiting for the removal of earlier marks on the Register.
- The meaning of "earlier trademark" in the context of citation objections will be clarified to include expired marks that remain eligible for renewal or restoration.
- An opposition procedure for requests for correction of errors in applications or registrations concerning third parties (e.g., errors relating to the applicant's, proprietor's or priority details).
For more information, please see here and hereSource: www.ipos.giv.sg; www.dcc.com Nov 18, 2021 (Newsletter Issue 16/21)Amendments to Trade Marks Rules EffectiveOn September 10, 2021, the Intellectual Property Office of Singapore (IPOS) published the Circular No. 5/2021 to introduce the Amendments to Subsidiary Legislation and Electronic Filing and Service of Documents.
IPOS informs that amendments have been made to the Trade Marks Rules (TM Rules) and Trade Marks (International Registration) Rules (TM(IR) Rules) in order to enhance dispute resolution processes, and to streamline trademarks operational processes. These amendments take effect on October 1, 2021.
Key amendments are provided below:
- Registrar may shorten evidential deadlines:
The Registrar may shorten evidential deadlines after giving parties an opportunity to be heard under the new Rule 31(1A) of the TM Rules.
- Registrar may consolidate proceedings on own accord:
The Registrar may consolidate proceedings on own accord after giving parties an opportunity to be heard under the new Rule 81C of the TM Rules.
- Removal of form and fee for Registrar's Certificate of Taxation:
The Registrar is allowed to issue a Certificate of Taxation without the need for the party to file Form HC2 and pay the relevant fee under the amended Rule 76 of the Trade Marks Rules.
- Removal of mandatory provision of translation and/or transliteration:
Rule 20 of the TM Rules is amended to remove the mandatory requirement to provide a translation and/or transliteration for foreign characters in a trademark. However, the Registrar may still require a translation and/or transliteration to be provided, such as in cases where the foreign characters cannot be identified. This amendment follows from the Registry’s easing of translation and/or transliteration requirements, which was highlighted in Trade Marks Circular No. 04 of 2019.
- Clarification of period that a holder of an International Registration designating Singapore is not entitled to damages, account of profits or statutory damages:
Rule 8(5) of the TM(IR) Rules is amended to clarify the period where a person is not entitled to damages, an account of profits or statutory damages in respect of any infringement of the International Registration designating Singapore (IR) when a person becomes the holder of an IR (or protected IR) by virtue of a notifiable transaction made under that Rule.
For further information, please check the full list of amendments made to the TM Rules and TM(IR) Rules hereSource: www.ipos.gov.sg; www.bakermckenzie.com Sep 10, 2020 (Newsletter Issue 14/20)Fast Track Program for Trademark RegistrationThe Intellectual Property Office of Singapore (IPOS) has expanded the SG IP Fast Track (SG IP FAST) to include the acceleration of trademark and registered design applications. The SG IP FAST is known as the SG Patent Fast Track program that will end on April 29, 2022.
From September 1, 2020, applicants with a patent application accelerated under SG IP FAST can now request acceleration of related trademark and registered design applications. By providing this Extended Service, IPOS intends to better support innovators and enterprises when they are building and managing their IP Portfolio.
For more information, please see hereSource: www.ipos.gov.sg May 28, 2020 (Newsletter Issue 8/20)
Locarno Agreement Joined
Singapore has become the first country in ASEAN to join the Locarno Agreement, which has entered into force on March 19, 2020.
The Locarno Agreement is an international standardised classification system for industrial designs.
Source: www.bakermckenzie.com
Sep 19, 2019 (Newsletter Issue 13/19)Trademark Registration Mobile App IntroducedThe Intellectual Property Office of Singapore (IPOS) has introduced the world first trademark registration mobile app “IPOS Go”. With the new app trademark applicants can now file their trademarks directly with IPOS via their mobile devices.
The app offers a simplified user interface and features that create a seamless and fuss-free application experience, making it easier and faster for business owners to submit their applications. Further, the app integrates artificial inteligence (AI) technology to enhance searches for similar trademarks on the IPOS register, which can prevent applicants from filings for trademarks that are too similar to existing ones. Additional to that the applicant receives the registrations updates via its mobile device. The app is available via the Apple App and Google Play store.
For more information, please click hereSource: www.ipos.gov.sg Sep 05, 2019 (Newsletter Issue 12/19)
Tobacco Plain Packaging Law Published
The Ministry of Health (MOH) has introduced a subsidiary legislation to implement the new packaging and labeling requirements for all tobacco products in Singapore. The Tobacco (Control of Advertisements and Sale) (Appearance, Packaging and Labelling) Regulations 2019 were published July 1, 2019, (SP Regulations) and will come into operation 12 months from that date.
Thus, all tobacco products, including cigarettes, cigarillos, cigars, beedies, and other roll-your-own tobacco products sold in Singapore, must have standardized packaging and enlarged graphic health warnings (SP Measures) from July 1, 2020, onwards.
Manufacturers, wholesalers, and retailers may face a jail term of up to six months and/or a fine of up to SGD 10,000 (USD 7,235), should they fail to conform to the new law as first-time offenders. Repeat offenders will face heavier penalties.
SP Regulations and SP Measures mandate that logos, colors, images, and any promotional information associated with the brand are not allowed on the packaging. Product and brand names will instead be presented in a standardized font style and color. The minimum size of graphic health warnings (such as warnings about gum disease) on packaging will be increased from the current 50 percent to 75 percent of the packaging surface.
A three-month transition period will be provided from April 1, 2020, to June 30, 2020, to allow tobacco products that comply with either the current Tobacco (Control of Advertisements and Sale) (Labelling) Regulations 2012 or the SP Regulations to be imported into, or distributed, sold, offered for sale, or possessed for sale in Singapore. The transition period will help tobacco manufacturers, wholesalers, and retailers to prepare for the full implementation of the SP Regulations from July 1, 2020, onward.
Source: www.mirandah.com; INTA Bulletin, August 15, 2019, Vol. 74, No. 14
Aug 22, 2019 (Newsletter Issue 11/19)
Easing of Translation Requirements for Marks with Foreign Words or Characters
The Intellectual Property Office of Singapore released Circular No. 4/2019 stating that trademark applicants are no longer required to provide a translation and/or transliteration of foreign words and/or characters that appear in their marks as of April 15, 2019.
The Office informs that this process will be automated, and applicants need only to enter all the words and/or characters appearing in the mark in text format on the Form TM4. For international registrations designating Singapore, the Office will attempt to automatically generate the translation and transliteration of the foreign words and/or characters appearing in the mark.
If the automated generation of the translations is not possible, the Office may request the applicant to provide the relevant words and characters in text format (or any supporting translation documents).
Source: www.ipos.gov.sg
Apr 04, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationThe Office of Singapore has notified WIPO in accordance with new Rule 40(6) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the laws of Singapore and do not apply in respect of the Contracting Party. As a result, Singapore will not present to the International Bureau of WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Mar 14, 2017 (Newsletter Issue 5/17)Official Fees Reduced SoonThe Intellectual Property Office of Singapore (IPOS) informed that the official fees for patent and trademark protection will be lowered.
As from April 1, 2017, fees will be reduced for patent search & examination reports. In addition, brand owners applying for trademarks using a pre-approved list of goods and services will enjoy a substantial 30% discount. The fee will be SGD 240 per class.
For further information, please click here
Source: Namazie & Co., Singapore and www.ipos.gov.sg Feb 18, 2014 (Newsletter Issue 3/14)Trade Marks (Amendment) Rules 2013The Intellectual Property Office of Singapore (IPOS) has published the Trade Mark (Amendment) Rules 2013 (Circular No. 9/2013, dated 22 November 2013) which came into effect on 1 January 2014.
A summary of the amendments is as follows:
(a) Amendment to the First Schedule of the TM Rules
Item 35 of the First Schedule is amended to clarify that the fee payable for the issuance of a certificate under section 103 of the Trade Marks Act (Cap. 322) is computed on a 'per certificate' basis.
This amendment does not impact the cost of requesting a certificate, as each certificate issued under section 103 may only be in respect of one trade mark.
(b) Amendment to the Third Schedule of the TM Rules
In view of the coming into force of the Tenth Edition, Version 2014 of the Nice Classification (hereinafter abbreviated as "NCL (10-2014)") on 1 January 2014, the Third Schedule is amended to reflect the changes to the Class headings and items introduced by NCL (10-2014).
To access the Amendment please click here
Source: www.ipos.gov.sg and Namazie & Co., Singapore Jul 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 Feb 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
Nov 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
Nov 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 Oct 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
Aug 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, revised edition 1999 (30 December 1999) (Chapter 332).
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, 12th edition
Registrable as a trademark are all distinctive and graphically representable signs capable of distinguishing between goods or services of the proprietor from other traders, such as words, names, acronyms, letters, numbers, devices, colours, combinations or shades of colours, sounds, signatures, labels, tickets, 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. (NOTE: Hologram and movement marks have already been registered in IPOS – smell marks are still only theoretically registrable)
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 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 registrability under the Trademark Act 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.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is SGD 280 for each class using the pre-approved list of goods and services and SGD 380 for each class if it is not under the pre-approved list of goods and services. There are no official fees payable at the publication and registration stages for trademark applications in Singapore.
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Practical details on trademark licensing are available in our publication
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More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
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Jan 17, 2023
Namazie & Co., Singapore, Singapore
