Jurisdiction - Singapore
Reports and Analysis
Singapore – Series Trade Mark Applications: Pay A Single Fee For Multiple Variant Marks.

3 July, 2014

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

 

Series mark applications are a cost effective way to maximise the scope of protection in Singapore. A series mark filing allows the applicant to file variants of a mark in a single application, rather than filing separate applications for each mark, thereby saving costs.

General Principles

 

As the guidelines and practices on what qualifies as a series has not been clear, the Intellectual Property Office of Singapore (“IPOS”) recently released several general principles on what types of marks qualify as a series.
We briefly summarise these below:

 

  • each mark in the series must resemble the others in their material particulars. In making this assessment, the marks must be compared side by side, paying full attention to detail;
  • the differences between the marks must be non-distinctive in nature. In particular, the visual, phonetic and conceptual identity of each of the marks must be substantially the same;
  • the overriding requirement is that the differences between the marks must not substantially affect their identity. IPOS has given the following examples of marks which qualify/do not qualify as a series:

 

atmdchart

 

In our recent experience, IPOS appears to have taken a stricter approach towards colour series marks. IPOS has now provided the following guidelines:

 

  • differences in colour are acceptable in a series only if colour is a subordinate and non-distinctive element of the mark; 
  • where simple geometric shapes are concerned, and where the addition of colour to the mark confers distinctiveness to an otherwise non-distinctive mark, the marks will not qualify as a series, on the basis that colour is a material feature of the mark.

As marks filed in black and white may not show shading or toning differences, and as such may not reflect important features of a mark (see example below), these would not qualify as a series of marks.

 

atmdchart2

 

In the example above, Marks 1 and 3 will constitute a series, but Mark 2 will not, as it does not reflect the dimples visible in Marks 1 and 3. Given this, when filing for both non-coloured and coloured marks in a single application, IPOS has requested that applicants lodge the non-coloured mark in greyscale, rather than in black and white.


Prior to filing your marks, our team can assist to provide strategic advice on a suitable filing strategy to provide the best form of protection in as cost effective a manner as possible.

 

ATMD Bird & Bird

 

For further information, please contact:

 

Adele Lim, ATMD Bird & Bird

adele.lim@twobirds.com

 

ATMD Bird & Bird Intellectual Property Practice Profile in Singapore

 

Homegrown Intellectual Property Law Firms in Singapore 

 
 

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