South-East Asia IPR SME Helpdesk

Singapore

  

THE FACTS: Business in country for EU Companies

SIZE of Market

  • Singapore, GDP in 2018: EUR 293 billion (Source: Eurostat)

  • Singapore, GDP growth in 2018: 2.9 % (Source: Eurostat)

  • SIZE of the market (Source: Eurostat)

  • EU-28 exports in goods to Singapore in 2018: EUR 37 billion

  • EU-28 imports in goods from Singapore in 2018: EUR 21 billion

  • Total trade in goods in 2018: EUR 58.1 billion

  • EU-28 exports in services to Singapore in 2018: EUR 34.5 billion

  • EU-28 imports in services from Singapore in 2018: EUR 26.3 billion

  • Total trade in services in 2018: EUR 60.8 billion

  • Singapore is a major destination for European investments in Asia, andthe third largest Asian investor in the EU (after Japan and Hong Kong).

  • Singapore is the EU’s 14th largest trading partner, and its main trading
    partner in South-East Asia.

 

Key INDUSTRY SECTORS

  • EU-28 exports to Singapore are concentrated in transport equipment, petroleum and petroleum products, and non-electrical machinery.

  • EU-28 imports from Singapore are concentrated in the in pharmaceuticals, office and telecommunication equipment, and integrated circuits and electronic components.

  • EU and Singapore have negotiated a Free Trade Agreement and an Investment Protection Agreement. These agreements aim at: removing nearly all customs duties and facilitating trade; improving trade for goods like electronics, food products and pharmaceuticals; stimulating green growth, removing trade obstacles for green technology and creating opportunities for environmental services; encouraging EU companies to invest more in Singapore, and Singaporean companies to invest more in the EU. The EU–Singapore trade and investment protection agreements were signed on 19 October 2018. The European Parliament gave its consent to the agreements on 13 February 2019. The EU-Singapore Free Trade Agreement (EUSFTA) entered into force on 21 November 2019. The Investment Protection Agreement will enter into force after it has been ratified by all EU Member States according to their own national procedures.

 

IPR in country for SMEs: BACKGROUND

Intellectual Property Rights for SMEs: Why is this RELEVANT to you?

Intellectual property (IP), as intangible assets, is a key factor in the competitiveness of businesses in the global economy. IP can improve the competitiveness of small and medium-sized enterprises (SMEs) and provide a potential source of revenue (see EC definition at https://ec.europa.eu/growth/industry/intellectual-property/smes_en) when they internationalise their business to areas such as South-East Asia. Not only a way to help SMEs protect their innovations from competitors, IP assets can also act as an important source of cash-flow through their sale or licensing deals, as well as a significant pull-factor when attracting investors.  

Although SMEs often have limited time and resources, it is important to be aware of how IP can be valuable to businesses.  The infringement of intellectual property rights (IPR) is one of the most common concerns for businesses when dealing with ASEAN countries, and can lead to losses of business, revenue, reputation and competitive advantage, both in South-East Asia and in core domestic markets — unless proactive steps are taken to protect IP and deter potential infringers.  

Singapore has benefited from a strong IP regime and continues to build a trustworthy ecosystem, one that is recognised not just regionally but globally. For example, in the World Economic Forum’s Global Competitiveness Report 2019, Singapore was ranked second in the world and top in Asia in terms of IP protection regimes. Singapore is also the 14th most ‘idea intensive’ country, according to PwC’s Global Economy Watch in 2019 (see details in the link here).

How does Singapore’s IP legal framework compare to INTERNATIONAL STANDARDS?

The Singaporean IP legal framework is very comprehensive and generally considered to be one of the most developed and strongest in Asia. It has standards comparable with those in the EU, as the legal system of Singapore is based on the English common law system. Singapore’s IPR legislative and administrative regime is fully compliant with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). Minimum standards agreement, which allows members to provide more extensive protection of intellectual property if they so wish. Members are left free to determine the appropriate method of implementing the provisions of the Agreement within their own legal system and practice (https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm). Singapore has a very comprehensive and robust IP legal framework. IP is protected by patents, trade marks, designs, copyrights and layout-designs of integrated circuits, geographical indications (GIs), trade secrets and confidential information, as well as plant variety. Singapore is a member of the following international conventions regulating IP matters: the Paris Convention for the Protection of Industrial Property, the Madrid Agreement concerning the International Registration of Marks, the Patent Cooperation Treaty (PCT), the Hague Agreement, the World Intellectual Property Organization (WIPO) Copyright Treaty, the NICE Agreement concerning the International Classification of Goods and Services, and the Berne Convention for the Protection of Literary and Artistic Works (see the WIPO website http://www.wipo.int/treaties/en/ for more details on each of the above international agreements/conventions).

Singapore joined the World Trade Organization (WTO) on 1 January 1995 ready to implement the minimum standards of the TRIPS Agreement as a developed country, and met its TRIPS obligations in a timely fashion. The framework is considered to be one of the best in Asia.  

To continue encouraging innovation and creativity, the EU– Singapore trade agreement includes a comprehensive IPR chapter covering provisions on copyright and related rights, trade marks, geographical indications, designs, plant varieties and enforcement.
 

IP TIPS and things to WATCH OUT for in Singapore

Singapore operates under a ‘first-to-file’ system, meaning that the first person to file IP in the Singaporean jurisdiction will own the rights once the application is granted. It is therefore important that you register your IP at the first convenient opportunity (ideally before the release of products and services covered by these rights to the market).  

The Intellectual Property Office of Singapore (IPOS) provides comprehensive IP databases: you can use the eSearch services portal https://www.ip2.sg/RPS/ RPSLogin/SPLogin.aspx, which provides effective and comprehensive functions for searching, filing, amending and renewing patents, trade marks and designs. For more information you can check out the IPOS web portal at https://www.ipos.gov.sg

 

IP Rights in country: THE BASICS

A. Copyrights

WHAT is copyright?

Copyright is a legal term used to describe exclusive rights granted to authors, artists and other creators for their creations. These rights, generally, include: reproducing, copying, publishing, translating, adapting and altering, distributing, etc.  and are granted automatically following the creation of the work. Please see Table 1.1 below to compare different types of work that can be copyrighted and the duration of protection.

Copyright in Singapore: what you need to know

The kinds of works that can be protected by copyright laws in Singapore must be original works expressed in a tangible form, for example, recorded on tape or hard disk, or expressed in writing. Copyright does not subsist in ideas, facts and principles themselves, but only in their expression.

How LONG does legal protection last?

The duration of copyright protection depends on the nature of the copyrighted material, as indicated below in Table 1.1.

Table 1.1. 

Nature of work

Duration of Copyright

Literary, dramatic, musical and artistic works

70 years from the end of the year in which the author died.

If the work is published after the death of the author, it lasts for 70 years from the end of the year in which the work was first published.

Photograph

70 years from the end of the year in which the photograph was first published.

Published editions of literary, dramatic, musical or artistic works 

25 years from the end of the year in which the edition was first published.

Sound recordings and films

70 years from the end of the year of release of the sound recording or film.

Broadcasts and cable programmes

50 years from the end of the year of making the broadcast or cable programme.

Performances

70 years from the end of the year of the performance.

 

HOW do I register?

Unlike most ASEAN countries, in Singapore there is no system for the registration of copyright. Works that qualify for copyright protection under the Copyright Act do not need to be registered, because copyright protection is conferred automatically to the author. For a work to be protected by copyright, it has to be original and expressed in a tangible form, such as in a recording or in writing. Originality requires skill, labour or judgment in the creation of the work, but does not require inventiveness. In other words originality simply means that there is a degree of independent effort in the creation of the work. It is not a question of whether the work has creative merit. In general, copyright subsists in a work or subject matter in Singapore if:

  1. the work or subject matter was first published or made in Singapore or in a member country of the Berne Convention or the WTO (see more details, and a full list of all 177 members of the Berne Convention www.wipo.int/treaties/en/ip/berne and the WTO www.wto.org);
  2. the author of the work or subject matter was a citizen or resident of Singapore or of a member country of the Berne Convention or the WTO at the time when the work was first published or made.

 

Copyrights TIPS and things to WATCH OUT for in Singapore

  •  Include a copyright symbol © on your work. This symbol acts as notice of your claim to the work. While it does not give you any substantive rights, the use of this symbol could come in useful if you are involved in an infringement proceeding. If the infringing party claims that he did not know the material was protected under copyright law, the use of the symbol would generally stop him from successfully relying on this argument.
  • Where a business needs to use copyrighted material, it may consider entering into a license agreement with the copyright owner to avoid copyright infringement.  
  • Copyright infringement may lead to a civil and criminal offence under the Singaporean Copyright Act.Monetary awards and the penalties of a fine and/or imprisonment may be significant, where there is a large number of infringing items and where the infringement was done in an organised fashion. 

 

Enhanced Protection for Phonogram Producers under the EUSFTA

Singapore’s Copyright Act currently does not provide for the right of performers and phonogram producers to remuneration for broadcasting and communication to the public. However, performance rights included in the EUSFTA will enable music producers to obtain broadcasting and performance royalties in Singapore.  Within two years of the entry into force of the agreement, Singapore will introduce into its legal system a provision granting producers of phonograms a right to be remunerated: (a) when their sound recording is being broadcast by radio, including the playing of broadcast in a public place; (b) when a sound recording is played in a public place such as a shopping mall; (c) when a sound recording in a radio broadcast is played over the internet.  For more information on copyright protection in Singapore, check out our South-East Asia IPR SME Helpdesk Guide to Copyright Protection in South-East Asia, which is available to download from our website, https://www.southeastasia-iprhelpdesk.eu/sites/default/files/publications/Copyright_english.pdf.

B. Patents

WHAT are patents?

A patent is a right granted to the owner of an invention to prevent others from making, using, importing or selling the invention without permission. A patent may be obtained for a product or a process that gives a new technical solution to a problem or a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work.
Unlike most countries in South-East Asia, and like in the EU, in Singapore there is only one official type of patent, however registered designs, integrated circuit layout designs, and plant varieties can be registered separately and are conferred specific protection under Singaporean law (more details are given below).

Patents in Singapore: what you need to know

In order to obtain a patent, an invention must satisfy the criteria of showing ‘novelty’, having an ‘inventive step’, and ‘industrial applicability’. The registry will record the date of filing as the date of the application for the granting of the patent if it is filed in Singapore, however, if an earlier application for the same product or process was filed by the same applicant in another country that is a member of the Paris Convention (see more details and a full list of members www.wipo.int/treaties/en/ip/paris/index.html) or WTO, the applicant may claim priority. This means that patent protection will begin from the date of the earlier application (known as the ‘priority date’), provided that the Singaporean application is made within 12 months of the date of the filing of the earlier application. In cases where the earlier application has been filed under the PCT, the applicant will have 30 months to enter the National Phase stage in Singapore.
SMEs should consider applying for a patent as soon as possible, as Singapore has a first-to-file system — the first person to file an application will own the rights to the invention once it is granted. Therefore, it is essential to register a patent in Singapore before commencing business dealings there, and to be wary of disclosing too much information about the invention to third parties.
An amendment to Singapore’s Patents Act and Rules came into force on 30 October 2017. The major revisions include broadened grace-period provisions and the removal of the supplementary examination route. Accordingly, the amendment (which was applied from 30 October 2017) contains a grace-period provision that excludes certain disclosures from forming part of the state of the art as long as the Singapore patent application is filed within 12 months of the disclosure. However, disclosures are only excluded under limited circumstances, for example in the case of a disclosure made in breach of confidentiality. In addition, all patent applications with a filing date on or after 1 January 2020, as well as divisional applications initiated on or after 1 January 2020, will be subject to a substantive examination instead of relying on the supplementary examination route.  The supplementary examination process enables Singapore patents to be granted on the basis of positive examination results from a corresponding international application or a corresponding foreign application. With the closure of the supplementary examination route, all patent applications will undergo full examination by the examiners of the IPOS. This change is expected to ensure consistency in the assessment of patentable subject matter.

How LONG does legal protection last?

Singaporean patents are valid for 20 years from the date of filing, subject to the payment of annual renewal fees starting from the end of the fourth year.
In Singapore, there is no need to file for registration or deposit a layout design with the IPOS to obtain protection for it under the Layout-Designs of Integrated Circuits Act. Integrated circuit layout designs are protected for a duration of 10 years if they are first used commercially within 5 years of their creation. In any other case, they are protected for 15 years from the date of their creation.
Once a plant variety is granted, it can be protected for a maximum of 25 years, as long as it is renewed by the owner every year.

HOW do I register?

A request for the granting of a patent must be submitted using the official form, which can be obtained online (https:// www.ipos.gov.sg/resources/patent) and submitted to the IPOS either online via IP2SG (E-services Portal by IPOS) or by hand/ post to the Registry of Patents, IPOS. The application must be accompanied by:

  • A description of the invention;
  • The documents assessing your ‘priority date’ if necessary;
  •  The application fee.

Registrations in person can be made at this address:

Registry of Patents
Intellectual Property Office of Singapore
1 Paya Lebar Link, #11-03, PLQ 1, Paya Lebar Quarter
Singapore 408533

The overall process for registration takes anywhere between two to four years depending on the complexity of the invention.  However, Singapore currently has various Accelerated Programmes (discussed below) in which invention owners can seek the granting of patents in a very short period of time, as little as 6 to 12 months.
Please refer to the IPOS website (www.ipos.gov.sg) for further details and information on the application and registration process.

WHO can register?

The inventors of the inventions, employers on behalf of their employees, or people owning the rights to a patent by virtue of an agreement, may make an application for a patent in Singapore. Whilst there are no restrictions regarding nationality or residency, an address in Singapore must be provided.

Which LANGUAGES can I use?

Applications for a patent must be in English.

How much does it COST?

The basic fees (charged by the IPOS) for patent registration in Singapore are comprised of (i) Application Fees of SGD 160 (EUR 106), (ii) Search and Examination Fees, which vary from SGD 1 350 to 3 000 (EUR 894 to 1 988) depending on the search and examination routes selected, and (iii) Granting Fees of SGD 200 (EUR 133).

In line with Singapore’s Smart Nation push towards the adoption of cashless and digital payment, the IPOS adopted 100 % e-payment after 1 November 2018. Non-digital payments, such as cash, cheque and bank drafts are no longer acceptable.

Please refer to the IPOS website (https://www.ipos.gov.sg/resources/patent) for further details and information on the applicable forms and fees.

Accelerated Programmes

12 Months File-to-Grant
You can seek for the granting of Singapore patent within a period of 12 months from the filing of the application if there are no objections and you follow the specified time limits for certain actions and requirements of the IPOS. For more details, please check out https://www.ipos.gov.sg/docs/default-source/Protecting-your-ideas/Patent/requirements-to-obtaining-apatent-grant-within-12-months.pdf.

Accelerated initiative for Artificial Intelligence (AI2)
From 26 April 2019, under AI2, the IPOS started accelerating the granting of AI patent applications to as little as six months (compared to an average period of two years or more under the usual process). The AI2 initiative will run for a period of two years.

The FinTech Fast Track (FTFT)
The FTFT initiative is an accelerated programme to speed up the grant process for financial technology patent applications.  If the requirements for the FTFT initiative are met, IP holders can expect patents to be granted in as little as six months.
The FTFT was launched on 26 April 2018 and extends to 25 April 2020.

ASEAN Patent Examination Co-operation (ASPEC)
ASPEC is a regional patent work-sharing programme involving 9 of the 10 IP offices in the ASEAN member countries (only Myanmar is not yet involved). The objectives of ASPEC are to reduce complexity, achieve time savings and improve the quality of searches and examinations. This means that the IP offices can share the results of searches and examinations.  Applicants in participating countries can obtain corresponding patents faster and more efficiently as a result. The programme reduces duplication on the search and examination work done, thereby saving time and effort. Additionally, the search and examination work done on a corresponding application serves as a useful reference for producing quality reports. In practical terms, this means that a patent application from another ASEAN country can take advantage of expedited processes at the IPOS, allowing for a speedier granting of patent protection.  ASPEC is free of charge and operates in English in all ASEAN IP offices (except Myanmar).

Patent Prosecution Highway (PPH)
PPH is an agreement that one IP office may accelerate the process of a patent application by referring to the examination results of another IP office, so that the applicant can obtain a definitive answer quickly. Currently, the IPOS has bilateral PPH pilot programmes with the China National Intellectual Property Administration (CNIPA), the Mexican Institute of Industrial Property (IMPI) and the European Patent Office (EPO), and also participates in the Global PPH network, which comprises 25 PPH-partner offices. To initiate the accelerating process under the PPH, an applicant must submit a PPH request to the IPOS.  

For more details on the accelerated programmes, forms and requirements, please check out https://www.ipos.gov.sg/protecting-your-ideas/patent/application-process/accelerated-programmes.

Patent TIPS and things to WATCH OUT for in Singapore
• Following the National Security Clearances, if you are a resident of Singapore and wish to apply for a patent outside Singapore, you are required to obtain a written authorisation from the IPOS before filing an application. This request is free of charge and you can receive the clearance in a little as three to five working days.
• It is recommended that inventors keep proper records of their research in thread-bound record books, and date each entry. This will be useful as evidence of the development of the invention should any dispute arise.
• Consider utilising the Accelerated Programmes to shorten the patent registration process.

For more information on patent protection in Singapore, check out our South-East Asia IPR SME Helpdesk Guide to Patent Protection in South-East Asia, which is available to download from our website, https://www.southeastasia-iprhelpdesk.eu/sites/default/files/publications/EN_patent.pdf.

C. Registered designs

WHAT is a design?

In a legal sense, a design constitutes the ornamental or aesthetic aspect of an article, or even a non-physical product.  A design may consist of three-dimensional features, such as the shape of an article or an ornament applied to it, or twodimensional features, such as patterns, lines or colour.  In order to be registrable a design must be novel. An industrial design is considered to be new when it has not been registered in Singapore or elsewhere before, or published anywhere in the world before the date of the application for the first filing.  A registered design is a right granted to the owner of a design to stop others from making, importing or selling, without their permission, an article to which that design, or a design not substantially different from it, has been applied.  Designs in Singapore: what you need to know A design that qualifies for registration in Singapore must be new. That is to say, as mentioned above, the design must not have been registered in Singapore or elsewhere before, or published anywhere in the world before the date of the application for the first filing. The following cannot be registered as a design:

 

  • Designs that are contrary to public order or morality;
  • Computer programs or layout designs of integrated circuits;
  • Designs applied to certain articles, such as wall plaques, medals and medallions, and printed matter primarily of a literary or artistic character (e.g. calendars, certificates, coupons, greeting cards, leaflets, maps, playing cards, postcards, stamps, and similar articles);
  • Methods or principles of construction;
  • Designs that are solely functional;
  • Designs that are dependent upon the appearance of another article or non-physical product, of which it is intended by the designer to form an integral part or enable the article or non-physical product to be connected to, or placed in, around or against, another article or non-physical product so that either article or non-physical product may perform its function.

Singapore’s Designs-Related Legislative Amendments entered into force on 30 October 2017. Accordingly, the scope of designs that can be registered were broadened to include virtual designs of non-physical products and colours as one of the features of a design. The designer is now recognised as the default owner of the commissioned design unless otherwise agreed in the contract.

Under the amendments, the grace period for design disclosure prior to the filing date was broadened to 12 months, meaning that the applicant has up to 12 months from the disclosure date of the design to submit his design application in Singapore. However, it is worth noting that not all countries adopt this kind of exception, so a disclosure can impede the future registration of the design in other countries because of the lack of novelty. Thus, in case you wish to obtain protection overseas for the same design, it is advisable to maintain confidentiality around the design until the first application has been filed.

The amendments also included changes to allow for filing a single application for multiple designs (up to 50 designs) of articles or non-physical products, provided that the designs are classified in the same or related class(es).  
Singapore has a first-to-file system. The first person to file an application in respect of a design will have priority over others. In other words, regardless of the actual inventor of a particular design, whoever first registers it is the legal owner, and any subsequent application will be rejected under the grounds that it is not new. Therefore, you should consider applying for a registered design as soon as possible.
It is possible to claim the filing date of an earlier application filed in a country that is a member of the Paris Convention for the Protection of Industrial Property (https://www.wipo.int/treaties/en/ip/paris/) or the WTO in order to protect the same design, provided that the Singaporean application is filed within six months of the earlier application.

Singapore is a member of the Hague Agreement Concerning the International Registration of Industrial Designs and the Hague System for the International Registration of Industrial Designs (https://www.wipo.int/hague/en/). The Hague System makes it easier for an applicant to obtain design protection in many countries simultaneously by filing only one application, in one language and paying one set of fees to one office.

How LONG does legal protection last?

The initial period of registration for a design is five years from the date of registration. The period of registration for a design may be extended for a second and third period of five years, by applying for an extension and paying the prescribed extension fees. The protection, therefore, could last for a maximum of 15 years.

HOW do I register?

The completed request form and the prescribed fee must be submitted to the IPOS either online via https://www.ip2.sg/RPS/RPSLogin/SPLogin.aspx or by hand/post to the Registry of Designs at the IPOS.
The application must contain, inter alia:

  • A Statement of Novelty describing the features of the design which the applicant considers to be new.
  • Disclaimers — if the design contains generic elements such as numerals or letters, the applicant is encouraged to disclaim these elements in the Statement of Novelty (to avoid the delays and costs related to possible objections). 
  • Representations of the design showing the various views of the design. Designs can be two- or three-dimensional and each design should be shown graphically in representations.

For non-physical products, the representation of the design should show the design applied to the non-physical product and not the device for projecting the non-physical product. Applicants are encouraged to prepare and submit as many views of the design as possible, such as front view, back view, right view, left view, bottom view, top view and perspective view, with the application to enhance the chances of registration. Photos of the design are also acceptable under certain conditions.

  • The appropriate class and sub-class of the article under the Locarno Classification (i.e. the international classification system used to classify goods for the purposes of the registration of industrial designs, for more information: https://www.wipo.int/classifications/locarno/en/).
  • Details of a priority claim, if applicable.
  • The application fee.

You can file up to 50 designs within a single application if the designs relate to the same class or similar classes.  The IPOS will assess the application to ensure that all requirements are met. In accordance with Circular No. 1/2019 (checks on Declaration of Novelty in Design Applications), examiners have deepened the examination of the Novelty Statement and are now conducting substantive examinations of this aspect, meaning that they will verify the novelty of the design before granting protection.
It takes around four months to register a design in Singapore when things go smoothly (no rejections or deficiencies).  Once registered, details of the design will be published in the Designs Journal and maintained by the Registry of Designs.  You are able to request that the publication of the design is delayed for up to 18 months from the filing date of the application, provided that the request is submitted when applying for registration and an additional fee is paid.
 

WHO can register?

The designer(s) of the design or persons entitled to the design (e.g. by virtue of employment or an assignment) may apply to register the designs in Singapore. There are no restrictions regarding nationality or residency. However, an address in Singapore must be provided.

Which LANGUAGES can I use?

Applications must be in English.

How much does it COST?

The basic filing fee (official fee charged by the IPOS) for lodging a design application is around SGD 250 for each design contained in the application (approximately EUR 166).
If you wish to include a request for Deferment of Publication, an additional fee of SGD 40 (approximately EUR 27) is required.
 

Registered Design TIPS and things to WATCH OUT for in Singapore

  • Where the design has been registered and copyright subsists in the corresponding design, there will only be protection under the Singaporean Registered Design Act. This is to prevent dual protection under both the registered design and copyright regimes. However as soon as the 15-year protection period lapses, the design will be entitled to copyright protection under the Singaporean Copyright Act again.
  • Where the design is registrable, all steps should be taken to register it. Otherwise, neither copyright protection nor registered design protection are available when the design is industrially applied and exploited commercially.
  • A grace period is applied in Singapore. If you wish to obtain protection for your design in Singapore and other countries, it is advisable to keep the design secret until the first application has been filed.
     

For more information on design protection in Singapore, check out our South-East Asia IPR SME Helpdesk Guide on Industrial Designs Protection in South-East Asia, which is available to download from our website, https://www.southeastasia-iprhelpdesk.eu/sites/default/files/publications/industrial_designs_protection_in_south-east_asia.pdf.
 

D. Trade Marks

WHAT are trade marks?

A trade mark is a sign such as a letter, word, number, device, brand, three-dimensional shape, colour, hologram, sound, scent or a combination of these elements, which is capable of being graphically represented and being used in the course of trade to distinguish your goods or services from those of others.

The law provides a number of circumstances under which a mark is not eligible for protection, such as when it is identical with or confusingly similar to national flags or emblems, or when it would cause misunderstanding or confusion as to the origin, properties, quality, or other characteristics of the goods or services. It also cannot be identical or confusingly similar to another person’s mark that has already been registered or used for identical or similar goods or services.  Trade marks in Singapore: What you need to know Registered trade marks enjoy additional statutory protection under the Trade Marks Act and the registered proprietor has certain remedies available to them in the event of an infringement.

In the absence of a registration under the Trade Marks Act, a mark which is used by a trader in the course of his trade may still be protected under the common law ‘tort of passing off’.  The ‘law of passing off’ essentially prevents other traders from unfairly riding on the reputation and successes that you have built for your trade mark. Three factors need to be proved before a claim of passing off can succeed: (i) that you have established ‘goodwill’ or a good reputation for your trade mark within Singapore; (ii) that the defendant has made a misrepresentation to the public, suggesting that their goods or services are in some way associated or connected with you; (iii) as a result, you have suffered damage to your brand’s reputation. However, the legal remedies available to you are more limited than if you had registered the trade mark.  A trade mark does not have to be in use before it can be applied for or registered, this is especially important to note, as Singapore adopts a strict first-to-file rule. However, all applications for registration should be filed with a clear intention to use the mark in the course of trade (considering that registered trade marks are vulnerable to a cancellation action if they are not put into genuine use for five consecutive years).

As provided by the EUSFTA, in cases where registration for a trade mark is refused, the Registry of Trade Marks at the IPOS shall give reasons in writing. The applicant shall have the opportunity to appeal before a judicial authority.

How LONG does legal protection last?

Once a trade mark is registered, it will be protected for 10 years and the registration can last indefinitely if it is renewed every 10 years.

HOW do I register?

An application for trade mark registration must be made using the official form, which can be downloaded at https://www.ipos.gov.sg/resources/trade-mark and submitted to the IPOS.

Your trade mark application must include:

• The name and address of the applicant.
• A clear graphical representation of your trade mark.
• A list of goods and/or services in relation to which you wish to register your trade mark. The goods and services need to be listed in class(es), conforming to the International Classification of Goods and Services as prescribed by the Nice Agreement (https://www.wipo.int/classifications/nice/en/).
• A declaration of your use of, or intention to use, the mark.
• Priority claim details, if any.
• The application fees.

The application can be sent online on the IPOS website IP2SG (E-services portal by IPOS). Since mid 2019 it has also been possible to submit the application using a smartphone application called IPOS Go.

Please find more information here:
https://www.ipos.gov.sg/e-services/

Registrations in person can also be made at this address:

Registry of Trade Marks
Intellectual Property Office of Singapore
1 Paya Lebar Link, #11-03, PLQ 1, Paya Lebar Quarter
Singapore 408533

The IPOS will assess the application to ensure that all formalities are met before conducting the relevant searches and examinations to ensure that the mark is registrable. After that, the application will be published in the Trade Marks Journal for public inspection, and if no oppositions are filed against the application within two months, the trade mark will proceed to registration. It usually takes six to nine months to register a trade mark in Singapore when everything goes smoothly.
Please refer to the IPOS website (www.ipos.gov.sg) for further details and information on the application and registration process.

WHO can register?

Any individual, firm or company claiming to be the owner of a trade mark may file for registration. Whilst there are no restrictions regarding nationality or residency, an address in Singapore must be provided.

Which LANGUAGES can I use?

Applications for registration must be in English.

How much does it COST?

The basic filing fee (charged by the IPOS) for lodging a trade mark application in one class is SGD 341 (approximately EUR 226) for online filing and SGD 374 (approximately EUR 248) for manual filing. Fees are discounted if the items are included from the pre-approved database available on the website.
Please refer to the IPOS website (www.ipos.gov.sg) for further details and information on the application forms and fees.
 

Trade mark TIPS and things to WATCH OUT for in Singapore

• Before filing a trade mark application, conducting pre-filing searches to ascertain the availability of your trade mark for registration in Singapore is highly recommended. You can run a trade mark search via IPOS’s IP search portal, https://www.ip2.sg/RPS/WP/CM/SearchSimpleP.aspx?SearchCategory=ip. Simultaneous searches can also be made at regional/ international aggregate database portals such as ASEAN TMview (http://www.asean-tmview.org/tmview/welcome), TMview (https://www.tmdn.org/tmview/welcome) and the WIPO’s Global Brand Database (https://www3.wipo.int/branddb/en/).
• It is possible to use the IPOS Go Mobile App (https://www.ipos.gov.sg/e-services/#mobileapp) to apply, renew, and search for trade marks in Singapore. You also can follow your application status updates and read correspondence from the IPOS, and view and manage a portfolio of your trade mark applications.

 

For more information on trade mark protection in Singapore, check out our South-East Asia IPR SME Helpdesk Guide to Trade Mark Protection in South-East Asia, which is available to download from our website, https://www.southeastasia-iprhelpdesk.eu/sites/default/files/publications/sea-trademarks-ea-02-20-035-en.pdf.pdf
 

E. Geographical Indications

WHAT are GIs?

A GI is a distinctive sign used to identify a product as originating in the territory of a particular country, region or locality, where its quality, reputation or other characteristic is linked to its geographical origin. Champagne from France, Parmigiano Reggiano from Italy, Scotch Whisky from the United Kingdom and Φέτα/Feta from Greece are all examples of European GIs.
Singaporean law provides a number of circumstances under which a GI is not eligible for protection, such as when it is not protected in its country of origin, is identical, similar or could be confused with earlier trade marks, shares an identical common name with other goods, contains the name of a plant variety or animal breed, or is not within the scope of the 14 prescribed categories of goods below. In cases where there might be possible confusion with a registered trade mark, a letter of consent from the registered proprietor or the applicant of a trade mark might be requested.

1. Wines
2. Spirits
3. Beers
4. Cheese
5. Meat and meat products
6. Seafood
7. Edible oils
8. Non-edible oils
9. Fruits
10. Vegetables
11. Spices and condiments
12. Confectionery and baked goods
13. Flowers and parts of flowers
14. Natural gum

GIs in Singapore: what you need to know

Singapore recently strengthened its existing GI protection regime by setting up a system (effective from 1 April 2019) that allowed GIs to be registered. Originally, the EUSFTA included a list of 196 European GIs that could apply for registration in Singapore (http://trade.ec.europa.eu/doclib/docs/2013/september/tradoc_151762.pdf) mainly covering wines, spirits, foodstuffs and agriculture products. As of 1 February 2020, a total of 139 European GIs have been registered in Singapore.
In Singapore, GIs may be protected in various ways, as unregistered GIs, registered sui generis GIs, collective marks, and certification marks. Singapore committed to protect GIs under the WTO TRIPS Agreement, which allows unregistered GIs to enjoy prescribed protection. However, when a GI is registered with the IPOS, it can enjoy a higher level of protection than unregistered GIs, e.g. the producers, traders, or associations of such producers and/or traders of any registered GI may request Singapore Customs to detain goods suspected of infringements that are expected to be imported into or exported out of Singapore. Enhanced border enforcement measures for counterfeited GIs will be implemented within three years of the entry into force of the EUSFTA, in accordance with EUSFTA obligations.  GIs may be registrable as collective marks where, for example, the applicant is the association of producers of the goods protected by the GI. In addition, GIs can be registered under the Trade Marks Act in the form of certification marks.  This sends the message to the consumer that the goods are certified as being the produce of a particular location.

How LONG does legal protection last?

A registered GI will be protected for 10 years. The registration can be renewed every 10 years, subject to the payment of a renewal fee.

HOW do I register?

Currently, there is no online system for filing GI applications. A GI application must be made using the official form, which can be downloaded from the IPOS website at https://www.ipos.gov.sg/resources/geographical-indication and filed in hard copy to:

Registry of Geographical Indications
Intellectual Property Office of Singapore
1 Paya Lebar Link, #11-03, PLQ 1, Paya Lebar Quarter
Singapore 408533

The following information must be provided in an application for the registration of a GI (Form GI1):

• The name, address, address for service in Singapore, and nationality of the applicant;
• The capacity in which the applicant is applying for registration;
• The representation of the GI for which registration is sought;
• The geographical area to which the GI applies;
• The goods to which the GI applies;
• The quality, reputation or other characteristic of the goods and how that quality, reputation or other characteristic is essentially attributable to the place from which the goods originate;
• Evidence that the GI has obtained recognition or registration as a GI in the qualifying country of origin (for countries other than Singapore);
• The application fees.

The address for service in Singapore is the address to which correspondences relating to the application will be sent to the applicant.
After the filing, the GI Registry will conduct a formality check and, if all the requirements are met, the application will proceed to the examination stage. When the conditions for the registration of the GI have been satisfied, it will be published in the Geographical Indications Journal for opposition purposes for six weeks. If no opposition is raised during this period, a certificate of registration will be issued to the applicant. It usually takes about two months for a GI to be registered in Singapore, if the application does not contain any deficiencies or face any objection. Otherwise, the total processing time may be longer.

WHO can register?

An application for the registration of a GI can only be filed by the following people:

a. Someone carrying out an activity as a producer of the goods specified in the application and working in the geographical area specified in the application;
b. An association of people referred to in (a);
c. A competent authority bearing responsibility for the GI for which registration is sought.

Which LANGUAGES can I use?

Applications for registration must be in English.

How much does it COST?

The application fee for registering a GI for sui generis protection in Singapore is SGD 1 000 (approximately EUR 663).  As of 18 November 2019, IPOS launched a new online payment platform on IP²SG for GI applications.
 

Geographical Indications (GIs) TIPS and things to WATCH OUT for in Singapore

• Before you apply to register a GI, it is advisable to conduct a search to ascertain the availability of your GI for registration in Singapore. You might need a consent letter for the registration of a GI if it conflicts with an earlier GI or trade mark.
• After the GI is registered in Singapore, it should be put into use in commercial activities to avoid the risk of cancellation by the registrant or any third parties who may allege a failure to maintain commercialisation, promotion or market monitoring in relation to the GI.

 

F. Trade Secrets

WHAT are trade secrets?

Trade secrets are defined by Singaporean law as confidential business information by which an enterprise can obtain an economic advantage over its competitors, for example, a secret manufacturing process, customer information, trade volumes, a secret recipe, etc. Arguably the most famous example of a trade secret is the Coca Cola™ recipe, which has been closely guarded by the company for over one hundred years.
Trade secrets in Singapore: What you need to know Trade secrets are protected under Singaporean law, however, the trade secret must be ‘confidential’, meaning that the information is not freely available in the public domain. SMEs must also be able to prove that an obligation of confidence was clearly stated during dealings with third parties, such as by signing non-disclosure agreements or having a confidentiality clause within signed agreements. This is common practice and, unlike the EC, there is no specific legislation for the protection of trade secrets.

How LONG does legal protection last?

Trade secrets can be protected for an unlimited period of time as long as they do not become common knowledge or become generally available to the public.

Trade secret TIPS and things to WATCH OUT for in Singapore

• Exercise caution when sharing your trade secrets with potential trading partners or investors. Any trade secret should only be shared with a recipient after he has signed a non-disclosure agreement. In addition, it is always advisable to sign a non-disclosure agreement with your employees.
• It is good practice to mark all documents containing trade secrets as ‘Confidential’ or ‘Trade Secret’ in order to prove, if needs be, that it was made clear to all parties that the piece of information you were seeking to protect was secret.

For more information on trade secret protection in Singapore, check out our South-East Asia IPR SME Helpdesk Guide to Protecting Your Trade Secrets in South-East Asia, which is available to download from our website, https://www.southeastasia-iprhelpdesk.eu/sites/default/files/publication....
 

Using CUSTOMS to Block Counterfeits

WHAT are Customs?

HOW can customs help in protecting IP?

Singapore Customs is a governmental agency run by the Ministry of Finance. Their objective is the implementation of customs and trade enforcement measures, including the checking and detainment of suspected infringing goods crossing the border.
Singapore’s port is a major transit point for imports and exports travelling between Europe and East Asia. EU exporters in a number of sectors have set up distribution centres in Singapore’s harbour to serve the wider region. To promote vigilance and bolster the safety and security of legitimate trade, the EUSFTA contains provisions to strengthen cooperation in the field of customs. In particular, the EUSFTA will facilitate the granting of assistance based on reasonable suspicions about any operation being in breach of customs’ legislation and will promote a greater exchange of information between authorities.
 

Customs in Singapore: What you need to know

There is no official recordal system in Singapore via which SMEs can request that customs monitor suspected infringing goods being imported into Singapore and notify interested parties.

WHAT can be registered?

There is no official IP recordal system for Singapore Customs.
However, border enforcement can be activated by giving written notice to customs about the suspected importation of IPR-infringing goods.
This protection can only be activated for registered trade marks and copyrighted materials. Singapore Customs do not have the power to search for and detain goods thought to be infringing a patent. Occasionally customs may also act ex officio and detain goods mported into or exported from Singapore, and goods which are in transit in Singapore and consigned to a local person.

How LONG does legal protection last?

The IP owner must file a written notice to customs to inform them of each suspected shipment. For seizure requests, the notice granted by the Director General is valid for 60 days, during which the infringing items will be seized. The claimant must institute an action for copyright or trade mark infringement within 10 days of the date specified in the notice of seizure as issued by the Director General (extendible once for 10 more working days).
As with ex-officio seizures, customs will inform the right holder shortly afterwards. The said right holder must give notice of their intentions in writing within 48 hours if the seized items are to remain in detention.
 

HOW do I register?

If you have details about a suspected illegal shipment in advance, you can activate border enforcement by giving written notice (the official form can be found here) to customs of a suspected importation of IPR-infringing goods.

The notice must be accompanied by:

  • A statutory declaration that the particulars in the notice are true.
  • A prescribed fee.
  • Evidence of the authority of the person giving the notice (when the notice is given by an agent).
  • A copy of the certificate of registration in relation to the Singapore-registered trade mark (in the case of goods that are suspected of infringing on a trade mark).
  • Security, in the form of a deposit of money or a guarantee issued by a bank, finance company or insurance company in Singapore. Please contact Operations Management Branch, Singapore Customs, on the specifics. Guarantees remain in force (a) until 31 December of the following year in the case of annual security, or (b) for one year in the case of one-time security.
  • A Letter of Undertaking to bear all costs relating to the seizure, transportation, storage and disposal of the infringing copies or goods.
  • A copy of the registration certificate and evidence that the registration has been duly renewed (for trade marks, if applicable).

The notice may be sent via email: customs_intelligence@customs.gov.sg, or delivered by hand/post to:

Singapore Customs,
(attention: Operations Management Branch)
55 Newton Road #10-01,
Revenue House,
Singapore 307987

Notice given to the Director General is valid for 60 days.  Within this period, Singapore Customs will seize the infringing copies or goods if they are being imported into Singapore.  The objector and the importer or consignee will be informed of the seizure.  The objector has to institute an action for copyright or trade mark infringement and notify the Director General accordingly within 10 working days of the issue of the notice of seizure by the Director General. The time limit for initiating infringement action may be extended by a further 10 working days at the request of the objector.

WHO can register?

The IPR owner, its licensee, or their agents can give written notice to customs of a suspected importation of IPR-infringing goods.

Which LANGUAGES can I use?

The written notice must be lodged in English.

How much does it COST?

The official fee for lodging each written notice is around SGD 200 (approximately EUR 133).

Customs TIPS and things to WATCH OUT for in Singapore

Customs protection can only be activated for registered trade marks and copyright.

SMEs should not rely on customs to discover or monitor the shipments in question on their behalf, and instead will need to be proactive about monitoring this by themselves. However, should the SMEs have details about a suspected illegal shipment in advance, it is possible to activate border enforcement by giving written notice to customs of a suspected importation of IPR-infringing goods. Border enforcement can be only activated for IP that is registered in Singapore.  You must institute legal proceedings for trade mark or copyright infringement within 10 working days of the date of detention.

 

ENFORCING your IP

Enforcing your IP

In the case of IP assets being infringed in Singapore, besides using customs to block counterfeits (customs are described separately, in Part 4 above), there are two other main avenues of enforcement: civil litigation and criminal prosecution. In many cases however private mediation via legal professionals is more effective. This should be considered as a viable option, particularly for SMEs that are often faced with budgetary constraints. Unlike most ASEAN countries, there are no administrative actions available in Singapore.

Civil Litigation

In general, civil litigation proceedings may be instituted for patent, copyright, trade mark or GI infringements, and breach of contract cases involving trade secrets and confidential information. The remedies the courts may award in such proceedings include damages (or an account of profits), statutory damages, an injunction, and the disposal of infringing goods.

Criminal Prosecution

This applies mainly to the Copyright Act and the Trade Marks Act, which provide criminal penalties for infringers. As an IPR owner, you may initiate a private criminal prosecution against an infringer for such offences. Alternatively, the Intellectual Property Rights Branch of the Criminal Investigation Department may prosecute the infringer on its own initiative.  At the end of a successful criminal prosecution case, the infringer will be ordered by the courts to pay a fine and/or serve an imprisonment term.

 

Enforcement TIPS and things to WATCH OUT for in Singapore

As you will not receive any compensation from the infringer through the criminal process, you may simultaneously commence civil litigation proceedings to claim monetary compensation.

The Patents Act, Copyright Act, Trade Marks Act and GI Act contain provisions against groundless threats of infringement. Therefore, any proposed demand letter should be carefully drafted to clarify the legal basis upon which your potential infringement claim is premised. A statement which merely notifies the other party of the existence of a patent, copyright, trade mark or GI does not constitute a threat of proceedings.

 

RELATED LINKS and Additional Information

IPR Helpdesk Blog

TEAR-OUT supplement

Tear-out Supplement

In the case of IP assets being infringed in Singapore, there are two other main avenues of enforcement, civil litigation and criminal prosecution. In many cases however, private mediation via legal professionals is more effective and should be considered as a viable option, particularly for SMEs which often are faced with budgetary constraints. Unlike in most South-East Asian countries, there are no administrative actions available in Singapore.

Civil Litigation

Civil suits under the Trade marks, Patents and Registered Designs Acts are required to be commenced at the High Court of Singapore. Copyright, passing off and breach of confidential information civil suits may be commenced at either the High Court or the Subordinate Courts dependent on the value of the claim. Decisions of a lower court may be appealed to a higher court with the Court of Appeal being the final appellate court. The relevant documents to initiate a civil lawsuit in Singapore would need to be drafted on an ‘ad hoc’ basis by lawyers licensed to represent clients in the country.

Criminal Prosecution

A proprietor may commence criminal proceedings against an infringer for offences under the Trade marks and Copyright Acts under a fiat from the Attorney-General’s chambers. An IPR owner may initiate private criminal prosecution against an infringer for such offences. Alternatively, the Intellectual Property Rights Branch of the Criminal Investigation Department may prosecute the infringer on its own initiative. No official standard forms are publicly available.