How I got my Singapore-based company’s trade mark registered internationally!
Posted: Jan 23, 2020
4 years ago, when I first launched my auto accessories business, I didn't think much about trade mark registration. Truth be told, I didn't have a logo. It was just the name of the business typed up! As I expanded and started producing my own designs, I was counselled by my accountant to think about registering my trade mark.
I read a bit about it and dived into the process myself. It seemed simple enough, and almost all of it is online. It took me a year and a fair amount in application fees, but I did it. So, here I am penning down my experience to help any other small business owner thinking of starting the registration process –
1. Design a trade mark
I hired the services of a graphic designer to create my logo. As my business was already well-established and well recognized, I kept the new logo very similar to the existing text I was using.
(There are some dos and don’ts - a trade mark or logo should not be descriptive, similar to another registered business trade mark in your industry, deceptive or similar to well-known marks or common industry goods or services).
2. Decide which class of goods and services your trade mark covers
There are 45 classes of goods and services under the Nice Classification system. These are internationally accepted categories, and you have to pick the ones your trade mark will represent. You can choose more than one, but each has a separate application fee, so do keep an eye on your budget.
3. Put together all documents and information
Once I finalised a logo, I got together all the materials that form a part of the application. These are -
- Company data or your personal information if you file as an individual;
- A clear graphical representation of the trade mark no larger than an A4 size paper.
- If your trade mark is a bit unconventional, then you need to describe the device used with the trade mark or other distinguishing features such as special colours, shapes, positioning on the object, etc. If you register a sound mark, you need to describe it as well with musical notations and an audio file.
- Citing the class of goods and services for which the trade mark is to be registered;
- A declaration stating that you will use the trade mark in good faith.
4. File the application and pay the fees
I filed my application online with IPOS, but there is also an option to do so manually on paper forms. I recommend the online version as it is relatively cheaper and is also processed more quickly.
The fee for manual filing is S$374. Whereas, for online filing, the fees are S$240 (for goods and services from the pre-approved database) and S$341 (for specific goods and services outside the fixed database).
(I registered for three categories and filed separate applications for all of them. The cost is the same as you have to pay per class, but it safeguards your investment because in case the examiner has an objection with one class or rejects the application because of one class, the rest of the application doesn't get affected. In a combined application, you can list all classes in one form, and while it's great for reducing paperwork, it can delay your entire process in case a problem crops up).
5. Handling examiner queries
Once the application is filed and paid for, an IPOS examiner is assigned to your case. It is his/her job to check whether your application complies with all the legal requirements of a trade mark. They usually check for things like whether your trade mark is similar to other registered logos in the industry, or whether it is too descriptive or downright deceptive, or if the categories citied match the product/service you offer and similar factors.
If they discover a problem, you will be given a chance to clarify and respond to their objections.
6. Waiting for comments or opposition
Once the IPOS examiner is satisfied, you are still not done! The approved mark is published by IPOS in the Trade Mark Journal and is open to the general public for any comments or objections for 60 days. During this time, any company can file a notice of opposition against your trade mark. You have to file a counter-statement, and the final decision rests with the registrar.
7. Get your registration certificate
Once all issues are resolved, you will be issued the registration certificate, which is dated from the day, you filed your application. The validity of the registration is 10 years, and after that, you will have to renew it to continue your ownership of the trade mark.
After I got my trade mark registered in Singapore, I decided to keep the momentum and apply for international protection!
This is again done through IPOS and is only open to Singaporean nationals or residents or to businesses who have a real and effective presence here. You also MUST already a registered trade mark for the same goods and services in Singapore or a filed application. The international registration is only applicable in countries that are members of the Madrid Protocol.
There is, of course, a fee (actually 2 fees) for this as well – the IPOS fee of S$250 and the WIPO fee, which depends on the type and the colour of a trade mark and the number of classes it is being registered for.
I wouldn’t deny it was a long and painstaking process! And unless you can spare the time and have a meticulous bent of mind to manage the paperwork, I would recommend you hire a trade mark lawyer or agency to manage your registration for you. It will save you a ton of stress and guarantee a good outcome.
All the helpful links and more information on registering your trademark could be found on Osome Blog: https://osome.com/sg/blog/how-to-register-trade-mark/.
The author is a professional company secretary with more than 10 years of experience.