Registering a trademark is essential for safeguarding your brand in Singapore. While the application process is generally straightforward, challenges can arise, particularly during the publication stage where third parties have the opportunity to oppose your trademark. A clear understanding of the opposition process is crucial to addressing objectives effectively.
Overview of the Trademark Opposition Process
1. Opposing a Trademark
Once your trademark application is accepted, it will be published in the Trade Marks Journal for a two-month period. During this time, any individual or entity can file a notice of opposition with the Intellectual Property Office of Singapore (IPOS). The notice of opposition must include a statement of grounds detailing the reasons for the objection, with a copy sent to you as the applicant.
- Filing Fee: S$420 per class opposed
- Extension of Time: If additional time is needed to file the notice of opposition, a request can be submitted to IPOS within the two-month publication period. A copy of this request should be sent to all parties who may be affected, including the trademark applicant.
2. Filing a Counter-Statement
If you wish to proceed with your trademark registration after receiving a notice of opposition, you must file a counter-statement with IPOS. This document should address the grounds of opposition and acknowledge any facts you agree with. A copy of the counter-statement should also be sent to the opponent. Failure to comply will result in your trademark application being considered withdrawn.
- Filing Fee: S$360 per class opposed
- Extension of Time: You can request an extension within two months of receiving the notice of opposition if more time is needed. A copy of this request should be sent to all affected parties, including the opponent.
3. Mediation
Once the counter-statement is submitted, both parties may attempt to resolve the dispute amicably through mediation or other dispute resolution methods. Both parties must file a Notification to Registrar form with IPOS within one month, with copies sent to each other.
- Extension of Time: You can file a request for additional time within one month. Copies should be sent to all affected parties, including the opposing party.
- Extension Fee: S$120
- Outcome Notification: Both parties must inform IPOS of the mediation outcome within two weeks of its conclusion.
4. Submission of Evidence
If mediation does not resolve the opposition, proceedings resume, and both parties are required to submit evidence supporting their claims.
- Opponent’s Evidence: The opponent files a statutory declaration with supporting evidence and sends a copy to the applicant. Failure to comply will result in the withdrawal of the opposition.
- Applicant’s Evidence: The applicant files a statutory declaration with supporting evidence, followed by a final round where the opponent can provide evidence in reply, if necessary.
- Extension of Time: If more time is needed, an extension request can be submitted to IPOS, with copies sent to the applicant and other affected parties.
- Extension Fee: S$120 per class opposed
5. Hearing
A pre-hearing may be conducted where IPOS considers settlements or requests additional information. All written submissions and bundles of authorities (such as references from textbooks and past cases) should be filed, with copies sent to the other party, at least one month before the hearing. IPOS should be informed of all parties attending the hearing by filing Form HC1.
- Hearing Fee: S$1,000 for the first class; S$800 for each subsequent class
6. Decision and Appeal
If the decision does not go in your favour, an appeal can be filed with the General Division of the High Court within 28 days of the decision being announced.
Conclusion
Understanding each step of the trademark opposition process in Singapore is vital for effectively managing and protecting your brand’s intellectual property rights. Taking timely action and adhering to procedures can significantly influence the outcome of opposition proceedings.
Save yourself the stress and complication, reach out to us for professional guidance in navigating trademark oppositions and disputes.