Trademark law amendments to come into force on July 1

The amendments to the Singapore Trademarks Act 1998, introduced among other reasons to comply with the Singapore Treaty on the Law of Trademarks, will come into force on July 1 2007.

The main changes are as follows:

• The introduction of a multi-class system - a single application may be filed in multiple classes of goods or services, and this will lead to one registration.
  
  Under the new system, trademark rights in multiple classes may be bundled into a single application or registration. Proprietors can then enjoy the administrative convenience of assigning or licensing those rights as a collective whole.
  
  Partial assignments and licences are recognized in Singapore, and proprietors have the flexibility of assigning or licensing their mark in respect of specific goods, services or classes. This is already the case under the current system whereby an assignment or licence may cover only some of the goods or services within a class.
  
  A multi-class registration is maintained as one, but the proprietor has the option to renew the mark for selected classes only.
  
  Filing and renewal fees remain the same and will continue to be charged on a per class basis. Unlike jurisdictions such as United Kingdom and Hong Kong, there is no reduction of fees for subsequent classes.
  
  There are fee savings for some ancillary applications, including certain types of amendments, recordal of assignments and licences, which will now be charged on a per trademark basis.
  
  
• The possibility to divide a trademark application - to complement a multi-class system, an applicant will be allowed to divide a trademark application into two or more applications by distributing among the latter the goods and/or services listed in the original application.
  
  Division is restricted to the specification of goods or services. There is no provision for division of a series of marks.
  
  Division can take place within a class or between classes, that is, it can relate to (i) the entire class, or (ii) some of the goods/services in a class. Division is available to both multi-class and single-class applications.
  
  Division can be useful in expediting the registration process. For instance, an application that is facing objections or opposition in respect of some classes may be divided so that registration in the other classes can proceed without being held up.
  
  Division fees are based on the number of new (additional) divisional applications created. There is no limit to the number of times an application may be divided.
  
  A request for division can only be made before the mark is registered. There is no provision for division of registrations. This was considered unnecessary since Singapore has a pre-registration opposition procedure.
  
  There is no provision for merger of applications and hence the original application cannot be merged with the divisional application(s) to result in a single registration. This has no bearing on renewal fees which are charged on a per class basis, but the proprietor may not enjoy the fee savings on ancillary applications such as recordal of assignments and licences which are charged on a per trademark basis.
  
  The Madrid Protocol does not contain provisions on division. As such, an international registration designating Singapore cannot be divided.
  
  
• The possibility to record a licence of a pending trademark - the amendments provide for recordal of licences relating to pending trademarks. Under the current law, only licences relating to registered trademarks can be recorded on the register.
  
  Unlike assignments, non-recordal of a trademark licence does not, per se, render it ineffective against persons acquiring a conflicting interest in ignorance of it.
  
  
• The enhancement of relief measures to alleviate procedural mistakes by applicants, notably missed time limits - subject to certain exceptions, an applicant which has missed a time limit for action before the registry may have its rights reinstated if:
  
  
  • the request for reinstatement is made within six months of the date of expiration of the time limit (currently a request for restoration of a lapsed application has to be made within three months from the date of the registry's notification of that fact);
    
    
  • the omitted act is completed within the same time; and
    
    
  • the failure to comply with the time limit is unintentional.
    
    
The registry may refuse to reinstate an application if there is a good and sufficient reason, for example, where research shows that a conflicting mark has been filed or accepted in the intervening period.

For background information on the changes, see Singapore is first to ratify new Trademark Law Treaty.

Patsy Koh and Regina Quek, One Legal LLC, Singapore