While every trademark owner wishes for a smooth application and registration for their trademarks, it may not turn out that way for most. In practice, many trademark applications receive provisional refusal (objections) during the application process. The question is, why is a trademark refused by the IPOS?
There are several reasons why a trademark application is objected to as per Singapore regulations. The grounds for refusal of registration include:
1. Non-distinctiveness
For a trademark to be allowed for registration, it has to be sufficiently distinctive such that it can distinguish the goods and/or services of the trademark owner from similar goods and/or services offered by other parties. In other words, a trademark should be unique enough for consumers to easily identify the goods and/or services as belonging to the specific owner.
2. Descriptiveness
It can be tempting for business owners to choose a trademark that can be easily identified with their goods and/or services or to incorporate some words in the trademark that can either describe their goods and/or services or their quality. However, it should be noted that trademarks that describe the purpose, quality, quantity, value, and geographical origin of the goods and/or services are not registrable. For example, “the best detergent” cannot be registered as a trademark for detergent products or “the world’s best bakery” will not be registered for bakery services.
3. Common to the trade
Over the years, there have been many trademarks that have become very well accepted by the public to the extent that they have become a common/generic term used to describe the specific goods or services. Such trademarks can no longer be registered as a trademark, as they do not serve the purpose of distinguishing the goods or services offered by the owner. Escalator is an example of a trademark that has eventually become generic and no longer serves its purpose as a trademark.
4. Contrary to public policy or morality
Trademark owners should also avoid filing an application for trademarks that are against public policy and that could potentially promote immoral behavior. Such trademarks are not acceptable for registration and will be objected to by IPOS.
5. Deceptive marks
Trademarks that could potentially misrepresent the nature, quality or origin of the goods and/or services, and which are thus deceptive in nature, cannot be registered. For example, a trademark containing the name of a country cannot be registered if the actual goods or services have not originated from said country.
6. In conflict with an existing trademark
With the number of prior existing trademark registrations, it can be a challenge to find a trademark that will not infringe on a third party’s rights. However, it is important to note that trademarks that are identical or essentially similar to earlier pending or registered trademarks belonging to third parties and covering the same or similar kind of goods and services will not be allowed for registration to avoid the risk of confusion for the average consumer.
7. In conflict with a well-known trademark
Similar to the aforementioned, trademarks that are identical or essentially similar to well-known trademarks belonging to third parties and covering the same or similar kind of goods and services will not be allowed for registration. This is applicable even if the well-known trademark is not registered in Singapore.
To mitigate the risk of receiving objections during the application process, it is strongly recommended for trademark owners to consult with trademark practitioners and conduct trademark availability searches before deciding on the trademark that they will use for their business and try to obtain protection for. Conducting trademark availability searches will help trademark owners identify possible grounds for objection for their intended trademark, such as, if:
– there are existing similar or identical trademarks belonging to third parties which can pose a risk for the use and registration of the intended trademark
– their trademark is sufficiently distinctive according to local practice
– their trademark would be considered as descriptive for the intended goods or services
Based on the availability search results, a trademark owner will be able to assess if it is worth investing in the trademark, i.e. if they should file the trademark application and move forward with its use, or if they need to modify the trademark (or worst-case scenario, chose another one) to have a better chance of success in registration. In other words, a full clearance search could avoid unnecessary complications such as additional fees and delays due to refusals or infringement action, for example. You can get acquainted with the process of trademark registration in Singapore for some clarity.
At IPHub Asia, we are always ready to help you build the best strategy for your trademark. If you have any questions regarding why a trademark is refused by IPOS or require solutions for your trademark rights in Asia, do get in touch.
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