For more information on how to register a Singapore trademark, view our Singapore Trademark services page.

To find out how EFSAG can assist you with your trademark needs, view our Trademark Services section.

How to register a Singapore Trademark

In order to ensure your application for Singapore trademark registration is successful, you are obliged to meet all necessary requirements as laid down by the IPOS and applicable Singapore trademark legislation.

It is essential that the mark seeking registration rights is available for registration in Singapore. This ultimately means the mark cannot already be in use or registered. One of the most convenient ways to ensure a mark is ‘available’ is to conduct a trademark search of the IPOS database. It is typically expected that an industry professional or attorney will perform the search as the results can be difficult to interpret. Provided the trademark is available, distinctive, and non-descriptive in nature, it is likely that registration rights will be granted by the IPOS.

All Singapore trademarks must be capable of graphical representation. They can be one of, or a combination of, colours, numbers, letters, designs and shapes.

Additionally, a Singapore trademark must comply with the Trademarks Act 1995, which stipulates that Singapore trademarks must meet standards set by the Paris Convention for the Protection of Intellectual Property. The Trademarks Act 1995 also provides the legal framework, thus providing individuals with the procedures to follow in cases of trademark infringement and remedies sought.

Trademark rights will last for a period of 10 years from the date of filing for registration. On expiry of the Singapore trademark rights, the owner must apply for trademark renewal.

For more information on how to register a France trademark, view our France Trademark services page.

To find out how EFSAG can assist you with your trademark needs, view our Trademark Services section.

How to register a France Trademark

The INPI is responsible for accepting trademark registration applications from individuals and business entities wishing to obtain legal protection over their trademark within the boundaries of France. The registry is effectively in charge of deciding which trademarks will be approved or rejected in line with the relevant trademarks law of France (No. 91-7 of January 4, 1991).

It should be noted that before registration can be sought, a trademark must first meet all the requirements provided by the INPI, including:

• Be available for registration
• Not be of a descriptive nature
• Be one of, or a combination of, words, letters, numbers, phrases, designs etc.
• Not be offensive in nature or immoral

With some jurisdictions, it is necessary for a trademark applicant to obtain representation in the country they wish to register their mark in. EU citizens seeking to register a France trademark do not require any form of representation, however, citizens outside of the EU do.

There are many advantages to registering a France trademark, some of which include:

• Exclusive ownership over the trademark within  all 11 French territories
• Right to seek remedies in court if your trademark rights are infringed
• Increased customer loyalty to the product or service thus enhancing brand awareness
• France trademark rights are renewable every 10 years
• Heighten level of protection against passing off

An important fact to note is that the INPI do not conduct their own trademark search and so it is advised that a professional consultancy of trademark attorney is enlisted to perform a thorough trademark search on your behalf. This will ensure your application for trademark registration is approved and the mark is in fact available for registration.

Overall, if your mark is available, distinctive, capable of graphical representation, and meets the standards as laid down by the INPI, it is likely to be approved for trademark registration.

For more information on WIPO, or to find out how EFSAG can assist with the registration of trademarks in global locations, Contact Us.

Structure and mission of WIPO

WIPO’s headquarters are located in Geneva, Switzerland. The organization currently has 185 member states which means that trademark owners seeking registration in any of the 185 member countries, can do so by applying with one single application form through WIPO.

Essentially, WIPO is responsible for reviewing all trademark applications for its member countries where there is an application for trademark registration for more than one country. Usually it is necessary for the applicant to first obtain trademark registration rights in their country of domicile before they apply to WIPO for registration in additional countries.

It should be noted that WIPO is not solely for the registration of trademarks, but also for:

• Patents
• Copyrights
• Designs

Oftentimes, where a national trademark registry is not available in a certain country, the individual will have to apply through WIPO in order to obtain their set of exclusive registration rights. As mentioned, there is only one application form required, irrespective of the number of countries the applicant wishes to obtain rights in. Application forms can be submitted in English, French or Spanish,

Operating in accordance with the Madrid System, which complies with the Madrid Agreement 1891 and the Madrid Protocol 1989, the organization is designed to develop and promote the use of intellectual property in a safe and fair environment.

WIPO sets the standards and legal framework of the requirements and obligations of a trademark while also providing rules as to revocation of trademark rights. Through its specialized services, legal framework, infrastructure and support of economic development, WIPO provides a fair and competitive environment for global intellectual property.

For more information on registering international trademarks with WIPO, please click on the following link to view our Register Trademark page.

Features of an International Trademark

Definition

As mentioned, an international trademark is one that is registered in many jurisdictions across the globe. An international mark differs to that of a community trademark (CTM) as CTMs are registered in EU member states only, where as international marks can be registered in the EU and outside of the EU.

Registration Process

The registration of an international trademark is a relatively straightforward process and involves filling a single application WIPO. The application form will include reference to all the countries in which you seek registration in, and WIPO will then review the application and either reject or approve it.

Registered international trademarks provide trademark owners with legal rights, protection, benefits and obligations in line with the Madrid Agreement 1891 and the Madrid Protocol 1891. It should be noted that for a trademark to seek international registration it must be registered in the country of domicile first.

Benefits of an international trademark

An international trademark can be registered in over 80 territories worldwide; this allows the trademark owner to gain worldwide recognition for their brand name, obtain enhances legal protection against passing off or other trademark infringements,  and significantly develop their customer base and brand awareness globally.

International trademark search

Registering an international trademark requires meeting a number of industry standards and requirements as set by WIPO. The competition surrounding the registration of an international mark is vast and so it is highly advised that all owners seeking registration conduct an international trademark search or enlist the professional services of an attorney to perform the search on their behalf. Conducting an international trademark search will ensure the mark is available in all countries they seek registration in.

For more information on the range of services we can provide please view our Trademark Services section, or Contact Us.

Importance of a undertaking trademark research

As mentioned, there are two primary stages in registering a trademark that must be researched properly; the initial design stage and the trademark availability prior to submitting the registration application.

Trademark Design

When creating the initial trademark design to represent your goods or services it is advised that you conduct thorough trademark research. By conducting research on the relevant trademark registry’s guidelines on acceptable trademark designs, you can effectively ensure that your mark complies with relevant laws, appropriately represents your services or goods, and helps to build your brand.

Researching the variety of trademarks used by your competitors, and by researching the most successful types of trademarks, you can obtain an understanding of the type of trademark you should create that will help develop customer loyalty and build brand awareness.

The requirements and standards of trademark designs will vary from one trademark registry to another, and so it is vital that your mark is designed in a way that renders it acceptable for registration in all jurisdictions you seek trademark rights in.

Trademark Availability

Owners must conduct trademark research with regards to finding out if their intended trademark is in fact available to use. This can be achieved by researching the relevant trademark registry’s database of registered marks to ascertain whether your mark is already in use, or is confusingly similar to existing marks. It is a common rule across the board that trademarks much not be the same or similar to those of other trademarks in a bid to avoid confusion to the public, and cases of passing off.

Although is it not obligatory to conduct trademark research it is high advisable to do so in order to significantly reduce the risk of your mark being rejected by the registry on grounds of not being ‘available’ to registry. However, due to the complexity surrounding the interpretation of trademark search results, it is common for trademark owners to obtain the services of a trademark attorney or professional consultancy firm.

EFSAG can provide assistance with Patent and Trademark requirements. To find out how we can assist you with your trademark needs please Contact Us.

Supplementary Protection Certificate (SPC) explained

EU member states have the right to issue supplementary protection certificates for the protection of a patent while the regulatory approval of the patent is pending. Essentially, drugs and plants including herbicides and insecticides pending patent approval can obtain a SPC provided the products are capable of meeting the required standards in order to qualify for the certificate.

Legislation

A SPC is governed by two main regulations within the EU, these are;

• Council Regulation (EEC) No 1768/92 of 18 June 1992
• Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996

Why obtain a SPC?

A product that is already protected under a patent can obtain further protection through obtaining a supplementary protection certificate.

Qualifying for a SPC

The European Court of Justice (ECJ) provides that a supplementary protection certificate is applicable where a product is;

• Protected by a patent
• Subject to an administrative authorization procedure
• Not places on the market within the EEA as a medicinal product prior to SPC application

How does a SPC work?

Once the supplementary protection certificate is obtained, it will come into force when the product’s current patent rights expire.

Validity of a SPC?

A supplementary protection certificate is valid for a period of 5 years; however, for all human medicinal products the SPC validity period can be extended to 5.5 years.

For more information on how to register a Malaysia trademark, view our Malaysia Trademark services page.

To find out how EFSAG can assist you with your trademark needs, view our Trademark Services section.

How to register a Malaysia Trademark

Protection

A registered Malaysia trademark is one that has obtained registration rights through MyIPO. Once the mark obtains these set of exclusive ownership rights, it is protected within the boundaries of Malaysia. In order to obtain legal protection over the mark in other countries, the mark will need to be registered with the jurisdictions’ relevant registries.

Legislation

Malaysia trademark law states that any person or company can apply for registration over their mark in Malaysia, even where the applicant does not hold Malaysian citizenship. This right to register a Malaysia trademark also extends to individuals who are non residents of Malaysia.

The Trademarks Act 1976, together with the Trademarks Regulations 1997 provides the legal and regulatory framework for all registered trademarks in Malaysia. It is important to be aware of the requirements and obligations to meet in order to maintain your trademark rights. It is equally important to know your legal rights in cases where third party infringement, or passing off occurs.

Requirements to satisfy

The main requirement by law is that all trademarks seeking registration must comply with the minimum requirements as laid down by MyIPO.

Some of the main requirements to satisfy include:

•  Must show intent to use the trademark in Malaysia
•  Must not be descriptive in nature
•  Cannot be the same or similar to existing trademarks
•  Cannot cause offence or be immoral

Validity

Malaysia trademarks adopt a 10-year validity period. Upon expiry of the mark, the owner has the right to seek renewal of their rights provided the mark was used in line with the requirements stated by MyIPO. It is advisable to seek professional guidance with regards to applying for official trademark registration and also with the renewal process as these procedures can be particularly difficult to administer without the guidance and assistance of a professional within the industry.

For more information on trademark renewal services, please click on the following link to view our Trademark Renewal page, or Contact Us.

Trademark renewal explained

As mentioned, a registered trademark will usually have a 10-year validity period, however, not all jurisdictions employ the same regulations regarding registered trademark validity and the grounds for renewal. It is therefore important that you are fully aware of the obligations in place in your selected country to ensure that you use your mark in line with the provisions and qualify for renewal when the time comes.

Process of trademark renewal

Generally, 6 months prior to the expiry of a registered trademark, the appropriate intellectual property registry will inform you that you must apply for renewal in order to keep the trademark registered. Without renewing your mark, it will disappear from the official trademark database and the owner will lose exclusive rights to the mark.

Conditions for trademark renewal

There are certain conditions that must be satisfied in order to qualify for trademark renewal and these conditions will vary from one jurisdiction’s trademark registry to another. Usually, the requirements for owners to follow include using the mark within 3 years from the date of registry, and using the mark in a commercial capacity. Essentially, a trademark must be used in good will, in accordance with the relevant trademarks act and it must be used for a specified period of time, otherwise renewal can be refused on grounds of non-use or non compliance.

For more information on trademark design services, please click on the following link to view our Trademark Services page.

Benefits of Trademark Design Services

Trademark design services are highly advantageous to those who do not have the resources, or experience, to create their own trademark design. The design of a trademark is very important to get right because if it does not comply with the applicable industry standards, then it will not gain trademark registration.

By using expert trademark design services, you can ensure that your mark will be produced in line with the appropriate trademark laws and jurisdictional standards in place. A professional trademark design company has the means to create a mark that is distinctive, non-descriptive in nature, available, and unique compared to another other trademarks in the market.

It is unlikely that a trademark designed by a professional design team would be rejected by the applicable trademark registry on grounds of it not complying with jurisdictional requirements, as professional trademark designers are aware of the requirements that must be satisfied for a trademark to be compliant. This in turn will ensure that the registration process goes smoothly and as cost effectively as possible.

Using trademark design services to create your trademark will ensure you are viewed favorably in a court of law should a case for passing off or infringement occur. This is because you can effectively demonstrate that you showed due diligence and good faith at the time of designing the mark as the services you obtained were from a qualified industry professional.

It is always advised to enlist the trademark design services of a qualified and experienced company or individual, as they will create the trademark in line with the necessary standards.

For more information on how to register a Russia trademark, view our Russia Trademark services page.

To find out how EFSAG can assist you with your trademark needs, view our Trademark Services section.

How to register a Russia Trademark

Owners of trademarks who wish to obtain a set of exclusive rights over their mark in Russia, must apply to Rospatent with the necessary application documents and await their decision regarding whether their mark meets the applicable trademark standards in place.

If individuals are successful in attaining registration approval by Rospatent, they will benefit from legal protection and exclusive ownership rights within the territory of Russia. Usually, all marks that meet the conditions stipulated by Rospatent will be awarded with registration rights, however, third parties have the right to contest the registration.

The main conditions that Rospatent requires trademarks to meet include:

-          Must be capable of graphical representation

-          Must be compliant with the Russia trademark act

-          Must not be the same or similar to other trademarks

-          Cannot be offensive, immoral or confusing to the general public

-          Cannot be descriptive in nature

Importance legislation

Article 5 of the Russia Trademark Act provides a detailed overview of the exact specifications a trademark in Russia should meet. It is therefore advisable for individuals to study the act and the requirements stipulated by Rospatent prior to submitting an application for registration; this is because all applications that are rejected by Rospatent will also lose their application fee.

Article 4 of the Russia Trademark Act provides the rights and remedies available to owners in the event of passing off or trademark infringement. Due to the scope associated with Russia trademark laws, it is advised that professional legal guidance is sought to manage and maintain your Russia trademark rights.

Validity of a Russia Trademark

Trademarks registered with Rospatent are valid for a 10-year period from the date of registration. Provided the mark is in a commercial capacity, and in line with all other trademark standards in Russia, the owner can seek renewal of their rights after 10 years. It is vital that owners use their registered trademark within a commercial capacity for 3 consecutive years after registration as non-use can result in the renewal of registration rights being denied.