Selecting a trade mark

- Selection of trade mark

It is easier said than done – register only the most important element of your trade mark.  But what is  most important?   The previous discussion might be a good indicator on how your selection should be. Here is an example : your business name is JOO SENG EFFICIENT TRANSPORT AND COMMUNICATION SERVICES.  

Do you register this entire name as a trade mark or just JOO SENG. The concern about registering JOO SENG EFFICIENT TRANSPORT AND COMMUNICATION SERVICES is that an adverse party may argue that JOO SENG is technically different from JOO SENG EFFICIENT TRANSPORT AND COMMUNICATION SERVICES.. He might therefore argue that
JOO SENG FAST LOGISTICS is different from  JOO SENG EFFICIENT TRANSPORT AND COMMUNICATION SERVICES. If you had registered simply JOO SENG, you would have

-- Should I avoid descriptive mark?

Descriptive mark appeals to some of us because they inform the market right away what the goods or services are about. However, the problem is that a directly descriptive mark cannot be readily registered as a trade mark.  A well known massage establishment was trading under the name TRADITION OF MASSAGE. It has since changed its name to HEALING HANDS. Between the two,  HEALING HANDS is relatively less descriptive or at least arguably not directly descriptive. This business basically went through a
rebranding exercises.

The risk in carrying on with a descriptive word for a trade mark is that once your brand catches on in the market, competitors will try to ride on the same name which you have invested in. You will not be able to stop these competitors if your trade mark is rejected because of its overly descriptive content. 

-- The mark should not be too simple or lacking in distinctiveness.

Examples of marks lacking in distinctiveness would be word that are directly descriptive of the goods concern such as SMOOTH for lubricants and GLITTER for diamond. The rationale is that these words should rightfully be in the public domain free for traders to use in promoting similar products. 

The same consideration applies to common surnames such as TAN, CHEONG or LIM.
Other legitimate traders should not be prevented by a registered mark from trading under his or her own surname. The exception would be when the trade mark owner seeking to register his surname has been using the surname for a significant period of time achieving  a certain degree of awareness such that the market had come to associate the product with that name. 

-- Trend is to have shorter marks.

The trend appears to one of simplifying a trade mark to possibly a one word mark. Examples would be TANGS previously CK Tang, Rodyk the brand for the law firm Rodyk & Davidson, KFC precisely Kentucky Fried Chicken, PEPSI previously PEPSI COLA, Dior of  Christian Dior, CITI of Citibank, Yeo's formerly Yeo Hiap Seng. Such marks are easier on to promote through word of mouth and easier to stick with the consumer at the sub-conscious level.

-- If I am under a tight budget, what should I register? The name or the logo?

As a general rule of thumb, the trade name should be protected first. The
part of your branding that can be verbally articulated should be protected first. You would want to protect the part that is promoted by word of month. 

It is quite common to see  registration for composite marks - the trade name and the logo in one single registration. This is not ideal as the two should be protected in two separate registrations.  

Should there be an infringement where only the trade name portion is taken by another party, there is an arguable defence against such a composite registration : strictly speaking, the registration comprises of two elements (word and logo design) whereas the other party has only taken one element of the registration - the word element).  The test is whether there is similarity when compared as WHOLES between the infringer's use of the trade name and your composite mark as REGISTERED. In practice, courts may take a robust attitude and tend to rule against the infringer.  However, such a position is not necessarily certain.

Your logo may also be protected under copyright law which does not need registration. It is important to specify in your contract with the logo designer that you own copyright in the logo to avoid any doubt. We have seen many cases in which the owner fails to procure this rather simple paperwork to clearly establish ownership in the logo design. The need to show copyright ownership arises when it becomes necessary to enforce your rights.  The position in using copyright law to protect a logo is not entirely certain but it is still useful to know that there is a fall back if you choose not to register the logo. Professional advice may be needed in this regard.

Copyright law protection includes literary work and artistic drawing. While  a logo might be considered as artistic drawing because the level of creativity needed under copyright law is not high, a trade name is not considered as a literary work as normally understood.  

-- Other form of trade marks

When it comes to petroleum, the color green has come to be associated with BP, and the color combination of yellow and blue is readily associated with IKEA. The trade mark law allows for protection of such color marks provided that it come be shown that the trader has built up market awareness in associating such trade marks to their goods or services.

Other non-conventional form of trade marks include the INTEL melody, the shape of the Coke bottle and the color red as applied to soles of woman shoes from the luxury brand designer Christian Lonboutin. They can be protected as trade mark if  consumers have come to recognise such marks as indicia of trade. Such recognition would have to be built over a period of use so that consumers come to instantly. associate certain style of packaging as from a specific origin even before they hold the product in their hands to ascertain the trade name.

The protection of such trade dress (in lawyer speak) becomes increasingly important in the fast consumer moving goods (FCMG) segment as competitors vie for market share from established product line by copying as far as they think legally possible the general look and feel of the product packaging from the entrenched produce line.

- The application process

-- To search or not

It is preferable to do a search for possible conflicting marks at least on your own first using the online website at xxx if you would like to save on costs. Search is recommended not only for the reason to know whether the application will be approved but also to know whether any prior registration will block your future or continued use. It will be a waste of investment to be stopped from using your chosen mark when you realise some months down the road that the is a similar registration that render your continued use an act of infringement. Knowing your position in advance helps you to better avoid legal mine field and unnecessary waste of investment.

At some point, you may need professional advice on whether some of the prior marks are close enough to block your application. It is difficult to lay out the principles on which marks are judged similar. Some advisors go on gut feel based on years of practice/ experience. This author prefers to draw on previous case examples  determine whether a proposed mark will be judged as similar to any prior mark.

- Trade mark application process

-- Goods classification

A trade mark application needs to specify the goods for which protection is required. By way of example, Levi's is protected for clothing and in particular jeans and its trade mark registration is unlikely to cover poultry products.  In order to make the application process manageable, there would need to a classification of goods and
services.  There are over forty classes e. g. computers and electronic goods are classified under class 9, mineral water, juices, soda are classified under class 32, clothing, headgear and footwear come under class 25.

It would not be possible to apply to register a trade mark for completely unrelated goods in one single application, for example it would not be possible to specify fruit preserve and whiskey in one single application incurring only one set of fees. Note however the option to submit a multi class application.

-- Costs
Total costs of a trade mark application if done through an agent can costs between $600 to $900. Out of this, about $390 is for government fees charged by the Intellectual Property Office of Singapore.

In some cases, firms that charge more may offer more value add because of the experience of the client serving staff who advises on the class of goods or services for which protection should be offered.

If an application is subsequently met with objection because of a conflicting prior mark, get clear understanding on how the law or agent firm will charge. In some cases, the costs in reporting and offering you with recommendations to overcome the objection can be two to three times as much as your initial filing costs considering that the odds in successfully overcoming the  objection is usually not high unless you can show significant prior use of your chosen mark.

If a pre filling search is required, the additional cost can be between USD200 to USD600.

Some of the more established agents are not really under pressure to price competitively because their main source of work is from overseas clients who send large volume of work to them. 

When choosing an agent, feel free to speak to the responsible staff and get clear understanding if there would be hidden or additional costs not just at point of filling but also further down the road.

- When my trade mark is registered -  how do I maintain and enforce it?

-- When is there infringement of my registered mark?

Trade mark infringement happens when another party uses an identical mark on goods that are covered by the registration. Where the offending mark is not identical but similar, it would only be infringement if there is likelihood of confusion. If the mark is only similar, it is best to consult an experienced attorney for advice whether there is similarly likely to result in confusion. This is because a wrongful accusation threatening legal action can result in a counterclaim by the other side.

The trade mark law create civil and criminal liability for trade mark infringement. In order to establish criminal liability, a greater degree of culpability or wrong doing need to be shown: it must be shown that the other side has used an identical trade mark on goods covered by the registration. This stricter requirement is because a conviction of a trade mark offence can result in imprisonment. in contrast, a right to file civil claim can arise from use of similar mark (not necessarily identical) that is likely to result in confusion.

-- How do i maintain the registration?

You need to renew the registration every ten years. A reminder should be sent to you from the Trade Mark office. Problems arises when you relocate and the address is not updated at IPOS.

There is some advantage in using PO Box for correspondence purpose. If you use a firm of trade mark agent, this might avoid the problem as well since the renewal notice will be sent to this agent. 

A registration can also be revoked if it has not been used for a continuous period of three years. Such a revocation process is initiated by another party who might wish to apply to registers a similar mark but is blocked by your prior registration.

It has become easier to revoke a registration because the owner of the registered mark has to show that the mark has been in use. In the past, the onus was on the challenger to prove that the mark has not been in use, to prove a negative of sorts. This was expensive because market survey was needed to show absence of use of the registered mark before a revocation can be successful in most cases.

This has now changed as the onus is on the registered owner to show that he has been using the mark continuously over the past three years. If you are not able to use the mark due to some commercial reason, you should consider licensing the mark to another party to use the mark in the meantime. There are agents who might be able to pair up potential licensee to keep the mark in use for you.

- Trade mark protection overseas
A Singapore registration will not protect your trade mark in another country such as Indonesia. You need to file application in that country where you desire protection. 

However, this is now made easier with an international treaty called Madrid Protocol. Under this treaty, it is possible to file an application designating up to over 70 countries for trade mark protection. 

There is cost saving as this system does away the need to instruct local agent to file a local application. You will still need a local agent help if you run into a prior registration that conflict with your mark because of similarity.

One thing to note is that it is important to maintain the Singapore application by keeping the registration alive for five years because the life of the overseas registration depends on the home Singapore registration being kept intact from challenge. It is therefore important to undertake a thorough trade mark search to see if there is any risk of third party challenge in Singapore before embarking on such an international application.