Congratulations! You have decided to obtain trademark protection for your brand! You understand that seeking protection for IP rights is important to protect your business and its long-term vision, and must not be delayed to avoid unnecessary and expensive complications.
Please don’t worry; we are here to make your life easy and we have compiled a list of questions that will help you understand the basics of trademark applications.
I have registered my company. Is it necessary to obtain protection for my trademark?
Setting up a company and obtaining trademark protection are two distinct processes, and registering a company will not give you monopoly over your trademark.
You can read about the difference between a trademark and company name.
Is it compulsory to conduct a trademark search before filing a trademark?
Conducting a search is not compulsory but is recommended to ensure the eligibility of your trademark in a particular class. The search will reveal if there are other similar or identical prior trademarks belonging to third parties that may hamper your trademark registration.
When should I start the trademark application process?
It is not uncommon for new business owners to delay the trademark filing process until their business has grown. Or, until they find out that their trademark is being used by a third party. In such circumstances, it will be harder, if not too late, and definitely costly to obtain protection for the trademark. We therefore recommend that you register a trademark before the launch of your products or services.
What do you need from me to proceed with my trademark application?
Starting the trademark application process is not as difficult as you imagine. We would need the following details:
- The applicant’s name and address
- The mark to be protected in JPEG format
- The goods and/or services you will use your trademark for.
What can be registered as a trademark?
There are “classic” trademarks such as words, names, or devices, but there are also trademarks of a new generation called non-conventional or non-traditional trademarks such as 3D shapes, sounds, smells, colours, holograms, letters, numbers, or packagings.
You can read more in detail about what can be registered as a trademark, and refer to this guide to the registration of 3D trademarks in Singapore.
Should I register the logo or the word(s) in plain font?
Both have their own merits and will give you different protection. We can advise you in this connection once we know how you use your trademark.
Should a trademark be registered in the name of a company or an individual?
Generally, it is advisable to register the trademark in the name of the entity/individual that is using it, to avoid complications related to the non-use of the mark. Bear in mind however that trademarks can be transferred anytime to third parties – subject to additional fees.
How long does it take for the trademark application process to be completed?
A straightforward application (without any refusal from the registry) in Singapore would take between 3 – 6 months to mature into registration, but much longer in other jurisdictions such as Malaysia (18 months), Indonesia (24 months) or Thailand (24 months). However, trademark protection, if granted, will be given from the filing date. It is therefore important to secure trademark protection without delay.
What is the trademark application process?
Once we have filed the mark with the Registry, it will go through an examination process where a trademark examiner will be appointed to assess the registrability of your trademark application. If the application satisfies the requirements, it will proceed to publication in the Trade Mark Journal which is available for public inspection. If there is no Notice of Opposition filed against your trademark application by any third party during the publication period, the Registry will then issue the Certificate of Registration.
You can read about the process of trademark registration in Singapore.
What is the difference between ® and ™?
While ™ is the abbreviation for “trademark” and can be used by any mark owner, ® can only be used upon registration of the trademark. This symbol will deter potential infringers from adopting or using identical or confusingly similar trademarks.
My business is growing and I would like to get protection in different jurisdictions. How do I proceed?
Trademark protection is territorial by nature. For example, if you file a trademark with the Intellectual Property Office of Singapore, your trademark will be granted protection in Singapore only. If you intend to obtain protection overseas, you would need to file either national applications in those countries or an international application (also called Madrid System) which provides protection in multiple jurisdictions and is a very cost-efficient solution.
For how long is my trademark valid?
The initial period of protection is normally 10 years but trademarks can last indefinitely as long as they are renewed every 10 years. Upon registration of your mark, we will help you monitor your trademark renewals and send you timely reminders.
Here’s what you need to know about trademark renewals in Asia.
What happens if my trademark is not renewed in time?
Failure to meet the renewal deadline or to file the trademark renewal application form during the grace period (if any) will lead to the cancellation of the trademark by the Registry. At that point, if you – the trademark’s owner – wish to maintain your rights, you will have no choice but to file a fresh application that will have to go through a standard examination process before being accepted for registration.
At IPHub Asia, we help businesses register their trademarks. If you have any more questions or need help to get the ball rolling, please do get in touch. We would be glad to be of assistance. You can also visit our website to learn more about our services.