European SMEs who have fallen victims to bad faith trade mark registration in Singapore and elsewhere in South-East Asia have some opportunities of getting their trade mark back without having to pay a lot of ‘ransom’ money. If the unscrupulous company who registered the trade mark in bad faith does not put the trade mark into genuine use, European SMEs could initiate a trade mark revocation process. in today’s blog post we are taking a look at the process of trade mark revocation in Singapore by analyzing an interesting case study.
Trade Mark Protection in Singapore
Registered trade marks enjoy statutory protection in Singapore under the Singapore Trade Marks Act, which also recognizes three-dimensional signs (shapes) and sounds as trade marks, however trade marks based on taste and smell are not yet recognized and not registrable in Singapore. Singapore operates under a ‘first-to-file’ system meaning that the first company to register the trade mark will own the trade mark irrespective of the first use. This means that early application for trade marks, ideally before the release of products and services into Singaporean market is recommended.
Applications for trade mark registration in Singapore can be submitted in English to the Intellectual Property Office of Singapore (IPOS) and the application fee is 341 SGD (228 EUR) if the application is filed online. IPOS will assess the application to ensure that all formalities are met before conducting the relevant searches and examination to ensure that the mark applied for is registrable. Once this is completed, the application will be published and, provided no oppositions are filed against the application within two months of publication, the trade mark will proceed to registration. Once registered, statutory protection for registered marks can last indefinitely, although renewal applications must be filed every ten years.
Trade Mark Revocation
Where trade marks are granted before actual use, the right holder, or his licensee must put the mark to genuine use in the course of trade within five years from the date of completion of the registration procedure, or risk the registration being revoked for non-use.
The registration for trade mark can be revoked for non-use at any time after five consecutive years of non-use of the respective trade mark.
Case Study: Trade Mark Revocation
A Spanish company, Company A, successfully registered its “AAA” trade mark in Singapore, starting from 2 April 1986 (“1986 Mark”). The “AAA” mark was registered in Class 3 of the International Classification of Goods under the category of “perfumery with essential oils”.
On the 20 November 2001, a US company, Company B, filed an application to register the same “AAA” mark in Class 3 under “bleaching preparations and other substances for laundry use; cleaning; polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; colognes; toiletries; sunscreens; cosmetics; skincare products; deodorants and antiperspirants for personal use; shaving preparations” (“Company B’s Application”)
On the 21 January 2002, Company B applied to revoke Company A’s 1986 Mark on the ground of non-use for a period of five years immediately preceding its application to revoke. Since Company A failed to show that it had used the 1986 Mark during the five year period, Company A’s rights to the 1986 Mark ceased from the date of the revocation application (i.e., 21 January 2002).
Following the revocation of the 1986 Mark, Company B’s Application was accepted and then published for opposition purposes.
During the publication period for opposition, Company A filed a Notice of Opposition against Company B’s Application on the ground that its 1986 Mark was still on the Register when Company B filed its own application (i.e. 20 November 2001), and its Mark, at the time, had yet to be revoked. Company A argued that, as such, the 1986 Mark could be considered to be an “earlier trade mark” which bars the acceptance of Company B’s Application for registration.
Company B’s Application was not allowed to proceed to registration. The 1986 Mark was only revoked on 21 January 2002, which means that, the 1986 Mark was still valid from 2 April 1986 to 21 January 2002. Company B’s Application, if it were to be granted, would take effect on 20 November 2001 (date of application), a date which falls way before the 1986 Mark was removed from the Register (i.e. 21 January 2002). The existence of Company B’s Application on the Register would therefore infringe the 1986 Mark.
It is critical to always bear in mind the need to ensure that the entry of a mark on the Register would not result in the existence of two similar or identical marks belonging to different parties at any period of time. Therefore, to avoid any confusion, Company B’s Application was not allowed to be registered.
If a trade mark applicant wishes to revoke a conflicting “earlier trade mark” and apply for registration thereafter, they must ensure that the mark is officially revoked before they begin their own application for registration. This way, the possibility of two similar or identical marks existing in the Register at any given time by different parties, is avoided.
South-East Asia IPR SME Helpdesk Team
The South-East Asia IPR SME Helpdesk supports small and medium sized enterprises (SMEs) from European Union (EU) member states to protect and enforce their Intellectual Property Rights (IPR) in or relating to South-East Asian countries, through the provision of free information and services. The Helpdesk provides jargon-free, first-line, confidential advice on intellectual property and related issues, along with training events, materials and online resources. Individual SMEs and SME intermediaries can submit their IPR queries via email (email@example.com) and gain access to a panel of experts, in order to receive free and confidential first-line advice within 3 working days.
The South-East Asia IPR SME Helpdesk is co-funded by the European Union.
To learn more about the South-East Asia IPR SME Helpdesk and any aspect of intellectual property rights in South-East Asia, please visit our online portal at http://www.ipr-hub.eu/.