Obtaining a trademark registration in Singapore is important for business owners who plan to enter the Singapore market. As the owner of a Singapore trademark registration, you will have the exclusive right over that particular trademark. This means that you will have the option to either use your trademark or to authorize third parties to use your mark in Singapore. The latter can be done by granting a license for the trademark to the third party. Such an arrangement can be beneficial not only for maintaining your trademark registration – as it is important to make sure the mark is properly used in order to maintain your rights – but to expand your market, distribution, and production capacity as well. All of this will, in the end, increase the value of your brand and business.
Type and scope of licensing
Depending on the agreement between the parties, the extent of rights granted in the license agreement can be determined as follows:
1. Limitation of scope and/or geographical area
a. Exclusive or non-exclusive license
Trademark owners will have the option to grant an exclusive or non-exclusive license for their trademarks. In case of exclusive license, the trademark owner will appoint a single licensee in each country and only the said licensee will have the right to use the mark in that specific country.
Meanwhile, if a non-exclusive license is granted, the trademark owner will be able to appoint multiple licensees in one country, or use the trademark in that country along with the licensee.
b. Limiting the goods and/or services that can be used by the licensee in the country.
The trademark owner also has the right to grant a license either for all the goods/services covered in their trademark registration, or for some of them only. In the case of the latter, the right to use the mark for the remaining goods or services remains with the trademark owner, who may then grant a separate license to another party.
c. Limiting the geographical area where the licensee can use the mark within the country.
For example, it may be used only in certain cities.
2. Sub-license
The trademark owner can decide whether they will allow the licensee to appoint a sub-licensee or not, and this can be included in the agreement.
3. Duration
There is no specific rule regarding how long a license should last. The license may be granted for an unlimited period of time, or it may be limited to a certain period, or determined to end on a specific date as agreed by the parties.
The above elements should be agreed upon by the parties and included in the trademark licensing agreement. You may find useful information about the trademark license agreement here.
Registering a trademark license in Singapore
Some countries require a license agreement to be recorded with the trademark registry before the agreement can be considered as valid and can be enforced. This is not the case in Singapore, where the executed license agreement will not be invalidated if the parties do not register such an agreement with the Intellectual Property Office of Singapore (IPOS). This being said, it is certainly recommended to record the transaction with IPOS. Indeed, once recorded, the details of the licensee and term of the license will be included in the trademark records in the IPOS database for the public to see. In this sense, the recordal serves as prima facie evidence of the license and third parties are deemed aware of the existence of such a transaction.
At IPHub Asia, we specialise in trademark and design protection in Asia, with a strong focus on Southeast Asia. If you have any questions about the trademark license or how to register your trademark license in Singapore, feel free to get in touch. You can also visit our website to learn more about our services.
