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Branding: How to Pick a Strong Trade Mark

Posted by on Aug 27, 2015 in General | 0 comments

Brands are highly valuable business assets, and their worth cannot be underestimated. As of May 2015, Apple, the world’s most valuable brand, is worth an astounding US$145.3 billion. You can protect your brand by registering trade marks. However, not everything can be registered as one. These include: Signs which are not trade marks; Trade marks which are indistinctive; Trade marks which consist exclusively of signs that designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; and Trade marks which consist exclusively of signs which have become generic amongst the general public or the relevant trade. The common theme of these four grounds is that a mark must be distinctive to be registered as a trade mark. However, an exception is made for marks which are not inherently distinctive but have become distinctive through use. An example of such a mark is Sharp Corporation’s “Sharp” logo (for various goods such as televisions). The word “sharp” is commonly used to describe the quality of television displays and is thus not inherently distinctive. However, Sharp Corporation’s use of “sharp” for its televisions over time had caused the general public to associate “sharp” with its televisions. As such, “sharp” had become distinctive through use and could be registered as a trade mark. Generally, there are 5 types of trade marks: Inventive marks; Arbitrary marks; Suggestive marks; Descriptive marks; and Generic marks. A strong trade mark is one that is highly distinctive. The spectrum of distinctiveness is as follows: Thus, you should choose an inventive or arbitrary mark to increase your chances of it being registered as a trade mark. The 5 types of trade marks will now be discussed (in order of strongest to weakest marks). Inventive marks An inventive mark is one that is made up and has no meaning at all. Such marks are extremely strong and are registrable as trade marks. Examples include “Nutella” (for cocoa-based hazelnut spreads) and “Volvo” (for automobiles).  Arbitrary marks An arbitrary mark is one that has a dictionary definition, but that definition is unrelated to the goods and/or services covered. Such marks are very strong and are registrable as trade marks. An example would be “APPLE” (for computers). Suggestive marks A suggestive mark is one that suggests, but does not describe, the characteristics of the goods and/or services covered. Such marks are weak and are less likely to be registered as trade marks. An example would be “PlayStation” (for computers). Descriptive marks A descriptive mark is one that describes the characteristics of the goods and/or services covered. Here are some examples of relevant characteristics: Kind; Quality; Intended purpose; Value; Geographical origin; and Time of production of goods or of rending of services. Descriptive marks are very weak and cannot be registered as trade marks, unless they have become distinctive through use. Examples include “BREATHABLE” (for sanitary napkins) and “LOVE” (for jewellery, as “LOVE” alludes to one of the intended purposes of jewellery, which is for them to be bought as gifts of love).  Generic marks A generic mark is one that has become a common name in the trade for the good(s) and/or service(s) for which registration is sought. Such marks are extremely weak; they are seen as “undeserving of protection” and cannot be registered as trade marks, unless they have become distinctive through use. An example of a generic mark would be “gramophone” (for...

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3 Unusual Things You Can Trade Mark

Posted by on Aug 12, 2015 in Case Study | 0 comments

Many things can be registered as trade marks. They include words, names, signatures, numerals, devices, brand headings, labels and tickets. Registering a trade mark will give you the exclusive right to use it for the relevant goods and/or services for which it is registered. Some of the more unusual things you can register as trade marks are shapes, colours and sounds. However, do remember that some conditions must be met before you can register them as trade marks. One of the most important conditions is that generally, the mark must be distinctive. Shapes Two- and three-dimensional shape marks can be registered under the Trade Marks Act. Examples of well-known two-dimensional shape marks that have been registered as trade marks are: 1) McDonald’s clown mascot (for restaurant services);     2) Apple’s apple logo (for retail services in the field of computers, computer software and computer peripherals); and     3) Penguin Book’s penguin logo (for a variety of goods such as books and printed matter).           Examples of well-known three-dimensional shape marks that have been registered as trade marks are: 1) McDonald’s cardboard packaging with the McDonald’s logo printed on it (for a variety of goods such as foods prepared from meat, pork and fish);           2) Box with the “FERRERO ROCHER” logo printed on top (for a variety of goods such as chocolate);   and         3) Chupa Chups’ wheel display with Chupa Chups lollipops and a flag with the “Chupa Chups” logo (for confectionary).   Do note that shapes that are commonly used in the relevant industry are indistinctive and thus cannot be registered as a trade marks. An example of such a shape is a three-dimensional square shaped tablet for washing machines. Also, where the shape mark is based on the shape of a certain good, registering it as a trade mark only protects the visual appearance of that good, but not its function. Do contact us for enquiry if you have any questions on trademark, and if this article helps you do share this on your website/blog/social...

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What Are The Types Of Intellectual Property Rights In Singapore?

Posted by on Jun 1, 2014 in General | 0 comments

What Are The Types Of Intellectual Property Rights In Singapore?

  TRADE MARKS A trade mark is a recognisable word, slogan, design or combination thereof, used by to distinguish the goods and services of one business from those of their competitors. The sign must fulfil certain conditions in order to be protected as a trade mark or other type of mark. It must be distinctive, and must not mislead or deceive customers. It must also not violate public order or morality. Further, the sign that is to be registered as a trade mark must not be identical or similar to that of existing trade marks. In this regard, a trade mark can be used as a marketing tool as customers will relate it to a badge of origin for goods and services offered. Using a trade mark is essential in the aspect of building goodwill and reputation, and it conveys to customers a certain assurance to the nature of the products and services they purchase. Trade mark protection ensures that the owners of marks have the exclusive right to use them to identify goods or services, or to authorize others to use them in return for consideration. Period of protection: indefinite. Renewal due: every 10 years from date of application. Some examples of famous trade marks are Starbucks, Macdonalds, MTV, and Volkswagen. PATENTS A patent essentially protects how a product works, what the product does, how a process is done, or what a product is made of. For an invention to be patentable it must satisfy the following criteria, the invention must be novel and not known publicly, the invention must have an inventive step over an existing product or process and lastly, the invention must be capable of industrial application. A patent grants the owner of an invention the exclusive right to prevent others from unauthorised manufacturing, using, importing or selling of their invention. Patent owners may give permission to, or license, other parties to use their inventions on mutually agreed terms. Owners may also sell their invention rights to someone else, who then becomes the new owner of the patent. Period of protection: Up a maximum of 20 years. First annuity due: for the 5th year of the patent, and must be paid prior to the expiry of the fourth year from the date of filing of the patent. Annuities due: annually from the 5th year of the patent. Thereafter, renewal fees are payable within the 3 months before the anniversary of the date of filing the patent. Note: However where a patent is granted after 45 months from the date of filing of the patent, any renewal fees which have become due are payable within 3 months from the date on which the patent is granted. Some examples of patents: 1. A process that gives a technical solution to a problem; 2. New method of doing things; 3. The composition of a product; 4. A technical improvement on how certain products work. INDUSTRIAL DESIGNS Industrial design refers to the shape, configuration, colours, pattern, ornament, texture of a product. An industrial design right protects the overall or part of the visual appearance of a product and protection can be said to be given to the way the product looks. To qualify for registration, a design must be new and non-functional and must not be registered or published in the public domain. Period of protection: maximum of 15 years. Renewal due: every 5 years. Some examples of a design: You can register a three-dimensional product, such as the shape of a Coca-Cola bottle, or design of a jewellery set. You can also register a two-dimensional ornament, for example...

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Which Class Should I File My Trade Mark In?

Posted by on May 24, 2014 in FAQs | 0 comments

The scope of goods or services (the “specification”) claimed in each trade mark application must be clearly defined in order for the application to be approved and for the trade mark to be registered. trade mark  To this end, reference to the classification of goods and services set out in the International Classification of Goods and Services for the Purposes of the Registration of Marks (the “ICGS”) is vital. First established in 1957, the ICGS applies to all member countries of the Nice (pronounced as “niece”) Agreement.  The use of the ICGS is mandatory for national registrations of trade marks in member countries.  Over the years, the ICGS has gained popularity and is now used by a number of non-member countries as well as in the international registration of marks effected by the WIPO, the African Intellectual Property Organisation, the African Regional Intellectual Property Organization, the Benelux Organisation For Intellectual Property and the European Union Office For Harmonization In The Internal Market (Trade Marks And Designs). The latest edition of the ICGS recognises trade mark 34 distinct classes of goods and 11 classes of services in which all goods and services can be classified under.  Classification is guided by the material and purpose in which the goods or services is usually applied towards.  While it is true that 2 identical trade marks can co-exist if they are filed in different classes, much will also depend on the trade channels in which the goods are sold or services are rendered as well as whether these goods are sold or services rendered side by side. If you offer more than one type of goods and services you may need to cover multiple classes for adequate protection. Sometimes, business owners also cover the goods and services of classes that are ancillary to those that your company offers. It is however cost prohibitive for the average business to cover all 45 classes. Finding out which class or specification to claim is a question of strategy as much as it is a question of cost. Consider the following factors: 1. Which are your primary markets and secondary markets? A primary market refer to the countries and jurisdictions in which your goods are sold or services are rendered mainly or predominantly. It can also refer to the jurisdiction in which your manufacturing base or primary work force is located.  Essentially, it is a country or jurisdiction of financial importance to your business. A secondary market refer to the countries and jurisdictions where you plan to enter next or where your business already entered but has yet to either gain substantial sales or commenced operations. It is sensible to prioritise the protection of your trade mark in your primary markets.  However, consider if there could be strategic business decisions which may compel you to seek protection in any secondary market ahead of a primary market. Such reasons could include pre-empting a competitor or laying the foundation for a franchise. 2. Present and future considerations Specifications once filed in an application can only be amended at the direction of the examining authority.  Even so, amendments cannot have the effect of extending the scope originally claimed for.  Decide for yourself the level of specificity in the specification but bear in mind that the specification must be clear and not vague. 3. What is your budget? Filing multiple trade mark applications can be costly.  It is prudent for you to count your costs before embarking on any trade mark registration exercise.  Find out whether your business is eligible for grants and subsidies. Contact us if you are thinking of...

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45 Different Classes of Trademark in Singapore

Posted by on May 20, 2014 in General | 0 comments

The classification of goods and services is according to the International Classification of Goods and Services under the Nice Agreement to which Singapore is a signatory (“Nice Classification”). The class headings of the Nice Classification give general information about the types of goods and services which belong to each class. A specification indicating the class heading does not amount to a claim for all the goods or services in that class. This list is not exhaustive and serves as a quick reference to help you locate the correct class. For the registration of your trade mark, you are required to state the exact class number and appropriate specification according to the Nice Classification. 34 Classes of Goods Class 1 Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry Class 2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists Class 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices Class 4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting Class 5 Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides Class 6 Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores Class 7 Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines Class 8 Hand tools and implements (hand-operated); cutlery; side arms; razors Class 9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus Class 10 Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes Class 12 Vehicles; apparatus for locomotion by land, air or water Class 13 Firearms; ammunition and projectiles; explosives; fireworks Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments Class 15 Musical instruments Class 16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks Class 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and...

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