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What is the primary legislation governing trademarks in your jurisdiction?
The Trademarks Act (2005 revised edition, Cap 332) and its subsidiary legislation, which comprises the Trademarks Rules and the Trademarks (International Registration) Rules – are the primary legislation governing trademarks in Singapore.
Which international trademark agreements has your jurisdiction signed?
Singapore is a signatory to the following international trademark agreements:
- the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (the Madrid Protocol);
- the Paris Convention for the Protection of Industrial Property;
- the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights;
- the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
- the Singapore Treaty on the Law of Trademarks.
Which government bodies regulate trademark law?
In Singapore, legislation is made and regulated by Parliament and enforced and interpreted by the courts.
The main governing body that regulates trademark law is the Intellectual Property Office of Singapore, which is a statutory board under the Ministry of Law.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Singapore operates a ‘first-to-file’ system, under which the first party to file an application for an IP right in Singapore owns the right once the application has been granted. However, other traders can oppose the registration of a trademark in Singapore on the grounds of prior use of an identical or similar trademark.
What legal protections are available to unregistered trademarks?
The owner of an unregistered mark can rely on the common law action of passing off to protect the mark against imitation or unauthorised use by third parties.
How are rights in unregistered marks established?
Rights in unregistered marks are established if the owner of the mark can prove its reputation and goodwill.
Are any special rights and protections afforded to owners of well-known and famous marks?
Yes, subject to circumstances set out in the Trademarks Act (2005 revised edition, Cap 332), the owner of a well-known or famous mark can obtain an injunction against the unauthorised use of the mark in Singapore, even if the owner:
- has not registered the mark with the Intellectual Property Office of Singapore (IPOS);
- does not conduct business in Singapore; and
- has no goodwill in Singapore.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Priority claims can be filed in respect of corresponding applications filed under the Paris Convention for the Protection of Industrial Property or in World Trade Organisation member countries within six months of the first application in any such country (other than Singapore).
What legal rights and protections are accorded to registered trademarks?
A trademark registration grants the owner a statutory monopoly over the trademark in Singapore. The protection initially lasts 10 years, but can be extended on payment of renewal fees. A trademark owner has the right to:
- control the use of the registered mark by restricting other parties from using it in the course of trade in Singapore without consent; and
- prevent a later trademark, which is similar or identical to the registered mark, from being registered.
Who may register trademarks?
An individual, firm or company claiming to be the owner of a trademark can file for a trademark registration as long as it is using, or intends to use, the mark in the course of its business.
What marks are registrable (including any non-traditional marks)?
For a trademark to be registered, it must be capable of being represented graphically.
In 2004 the requirement for a trademark to be visually perceptible was removed from the legislation, enabling sound marks to be registered. To date, no smell and taste marks have been registered with the IPOS, even though this is theoretically possible. Shape marks are also registrable, but the shape cannot:
- result from the nature of the goods themselves;
- be necessary to obtain a technical result; or
- add substantive value to the goods.
Can a mark acquire distinctiveness through use?
Yes, a mark can be registered on the basis of substantial prior use resulting in the mark acquiring a distinctive character.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
A mark will be refused registration on absolute grounds if it:
- describes the goods and services of the business;
- is common to the trade;
- is contrary to public policy or morality; or
- attempts to deceive the public.
A mark will be refused on relative grounds if it:
- is identical to an earlier mark;
- could cause confusion; or
- is identical or similar to a well-known mark.
Are collective and certification marks registrable? If so, under what conditions?
Collective and certification marks may be registered and are protected by law in Singapore.
A collective and certification mark must be examined for distinctiveness, as is the case for ordinary trademarks.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
What information and documentation must be submitted in a trademark registration application?
The following information is required to obtain a filing date:
- the applicant’s name and address;
- a clear graphical representation of the mark;
- a list of the goods and services for which registration is sought, classified according to the International Classification of Goods and Services;
- a declaration of use or intent to use the trademark; and
- proof of payment of the prescribed filing fee.
Additional information is required for:
- marks with non-English words or non-Roman characters;
- marks comprising the three-dimensional shape of the goods or packaging;
- collective marks; and
- certification marks.
What rules govern the representation of the mark in the application?
The main rules are as follows:
- The trademark must be represented graphically and be capable of distinguishing the applicant’s goods or services from those of other traders.
- The graphical representation must show the exact trademark for which the applicant is seeking protection.
- The graphical representation must be clear, with a minimum image resolution of 250 by 250 pixels.
Are multi-class applications allowed?
Is electronic filing available?
Yes, both electronic and manual filing are available.
What are the application fees?
The application fee for manually registering a trademark, collective mark or certification mark is S$374 per class.
For online filing, the official fee is reduced to S$341 per class. A further fee reduction is available for marks where the specification items are fully adopted from a pre-approved database. For such marks, the application fee is S$240 per class.
How are priority rights claimed?
If an applicant has a corresponding application that was filed earlier in a Paris Convention for the Protection of Industrial Property or World Trade Organisation member country (other than Singapore), it may claim priority from this first-filed application, subject to certain conditions being met, provided that the Singapore application is filed within six months from the date of the first filing.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Trademark searches are not required, but are highly recommended.
What factors does the authority consider in its examination of the application?
The application will be examined to determine whether the mark is registrable in accordance with the law.
Does the authority check for relative grounds for refusal (eg, through searches)?
Yes, trademark examiners will conduct a search to check if the applied-for mark is similar to any trademark which has already been registered or applied for by another party for the same or similar goods or services.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Where an examiner has an objection to a mark, he or she will inform the applicant of the objection and grant the applicant a specified period in which to respond. The applicant can file amendments to the application to address the examiner’s objection and may also request to extend the deadline to respond.
Can rejected applications be appealed? If so, what procedures apply?
All appeals against a registrar’s decision (concerning either the mark’s registrability or the outcome of an opposition) must be filed with the High Court. The appeal procedures are governed mostly by specific rules of court. Appeals of High Court decisions can be submitted, with leave, to the Court of Appeal, which is the highest appellate court in Singapore.
When does a trademark registration formally come into effect?
Once registered, a trademark formally comes into effect as of the application’s filing date.
What is the term of protection and how can a registration be renewed?
Trademarks are granted protection for 10 years from the application’s filing date. Protection can last indefinitely, subject to payment of renewal fees every 10 years and proper use of the mark.
What registration fees apply?
There are no registration fees, the applicant need pay only application fees.
What is the usual timeframe from filing to registration?
For straightforward applications that face no objections, the total processing time from filing to registration is approximately nine months.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes. A notice of opposition should be accompanied by valid grounds in accordance with the trademark legislation. A registrar of the Intellectual Property Office of Singapore (IPOS) Hearings and Mediation Department will hear the case based on the information and evidence presented by both parties and present the grounds for its decision.
What is the usual timeframe for opposition proceedings?
It generally takes between one and two years to reach an initial decision. However, this timeline will change if the parties:
- can agree to a settlement at the mediation stage; or
- request time extensions.
Are opposition decisions subject to appeal? If so, what procedures apply?
The parties can appeal the decision within 28 days from the date of the IPOS hearing officer’s decision and should do so with the High Court. The procedures for filing such an appeal are governed by the rules of court.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
Where trademarks are granted before actual use, the rights holder, or its licensee, must put the mark to genuine use in the course of trade within five years from the date of the registration procedure’s completion. The trademark registration can be revoked for non-use at any time after five consecutive years of non-use. An application to cancel a registered mark must be accompanied by a statement that includes the grounds on which the application is based.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
A trademark registration may be revoked on the following grounds:
- the owner of the registered mark has not, without valid reasons, commenced use of the mark within five years from the registration procedure’s completion;
- the use of the mark was suspended for an uninterrupted five-year period, without valid reasons;
- the mark has become a common name in the trade for the goods or services for which it was registered due to the owner’s inactivity; and
- the manner in which the mark was used would mislead the public, particularly as to the nature, quality or geographical origin of the goods or services applied for.
Who may file a request for revocation and what is the statute of limitations for filing a request?
A revocation application may be submitted by any party to the registrar or the courts, unless the proceedings concerning the trademark in question are pending in court, in which case the application must be submitted to the court. If the application is submitted to the registrar, he or she may, at any stage of the proceedings, refer the application to the courts.
What are the evidentiary and procedural requirements for revocation proceedings?
A party may apply to revoke a registered trademark by filing an application for revocation or a declaration of invalidity and a statement of grounds, together with payment of the applicable official fees. At the same time, the applicant must send the owner a copy of such application and a statement of the relevant grounds.
What is the appeal procedure for cancellations or revocations?
If a trademark owner wants to maintain the registration of its trademark, it must file the following within two months from receiving the application for revocation or a declaration of invalidity from the applicant:
- a counterstatement;
- proof of payment of the applicable official fees;
- the grounds supporting its counterstatement; and
- a statement detailing the facts alleged in the application to which it admits, if any.
The trademark owner must also send the applicant its counterstatement and supporting documents when it files them with the Intellectual Property Office of Singapore.
What is the procedure for surrendering a trademark registration?
A trademark owner may submit to the Trademarks Registry an application to cancel some or all of the goods and services for which its mark is registered by filing the appropriate official form.
Which courts are empowered to hear trademark disputes?
The High Court and the Supreme Court are empowered to hear such disputes.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
A civil action can be taken against trademark infringement, typically via writ actions.
An infringement may come about through the use of:
- an identical mark on identical goods or services;
- an identical mark on similar goods or services; or
- a similar mark on identical or similar goods or services.
The use of a sign similar to a trademark that is well known in Singapore on dissimilar goods or services may also constitute infringement.
Alternatively, the registered owner may enforce its trademark rights in criminal proceedings with regard to, among other things:
- counterfeit goods;
- the false application of registered trademarks; or
- the import or sale of goods using a falsely applied trademark.
Who can file a trademark infringement action?
Trademark infringement actions can be filed by the trademark owner and licensees, in specific circumstances.
Co-owners can bring infringement proceedings without the other co-owners’ consent, but cannot proceed with the action without the leave of the court, unless the other parties are joined as plaintiffs or added as defendants.
What is the statute of limitations for filing infringement actions?
An infringement action must be commenced within six years from the date on which the cause of action accrued.
What is the usual timeframe for infringement actions?
Proceedings typically last between 12 to 18 months, although it is possible to seek the court’s directions for an expedited trial.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
The courts may grant an injunction in a trademark infringement action and, therefore, the usual rules of court apply.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
The types of relief that the court may grant in an infringement action include:
- an injunction (subject to such terms that the court deems fit, if any);
- an account of profits; and
- statutory damages (in applicable cases).
Special punitive damages are not provided for in the Trademarks Act and are therefore prohibited.
What customs enforcement measures are available to halt the import or export of infringing goods?
Customs has the power to search and detain infringing goods and may take ex officio actions to detain goods which are:
- imported into or intended to be exported out of Singapore; or
- in transit and co-signed to any person with a commercial or physical presence in Singapore.
What defences are available to infringers?
Defences are available where:
- the owner consented to the infringing use;
- the use occurred in respect of genuine goods or parallel imports;
- the use constituted the defendant’s use of its own registered mark;
- the so-called ‘own name defence’ applies;
- the complainant’s mark is descriptive or concerns the purpose or characteristics of the goods, where such use occurs in accordance with honest practices in industrial or commercial matters; and
- the infringer used its mark before (and has used it continuously since) the mark in question was registered or first used by the registered owner, whichever is earliest.
What is the appeal procedure for infringement decisions?
Appeals of infringement proceedings (which are heard at first instance before the High Court) under the Trademarks Act (2005 revised edition, Cap 332) must be filed before the Court of Appeal. Passing-off claims may be brought in either the subordinate courts or the High Court, depending on the quantum of the claim. Appeals from the subordinate courts must be filed before the High Court and may, in relevant cases, proceed to the Court of Appeal.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
An assignment of a registered trademark, or an assent relating to a registered trademark, is effective only if it is in writing and signed by or on behalf of the assignor or, as the case may be, a personal representative.
Until an application for the recordal of such transaction has been made, it is ineffective against a party acquiring a conflicting interest in or under the registered trademark in ignorance of the transaction.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
The grant of a licence under a registered trademark may be registered, but is not compulsory. However, a licence is ineffective unless it is in writing and signed by or on behalf of the grantor.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
A licensing agreement should include information on:
- the scope of the licence (ie, whether it is exclusive or non-exclusive, as well as sub-licensing provisions);
- the licence fees and payment method;
- quality control and compliance with applicable laws;
- any limitations to liability; and
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
Yes, a registered trademark may be the subject of a charge. Any assignment by way of security is ineffective unless it is in writing and signed by or on behalf of the assignor or, as the case may be, a personal representative.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Certain designs, words or sounds used as trademarks may be protected under copyright law. A mark can also generally claim copyright protection if an original design is used in association with the goods and services.
In some circumstances, trademarks may also be protected as registered designs. However, they must comply with the validity requirements.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
A trademark that is used online is granted the same level of protection as if it were used on physical goods or for the supply of services. Proceedings can also commence under the Singapore Domain Name Dispute Resolution Policy, which provides a framework for resolving ‘.sg’ domain name disputes.