Protect Your Brand: How to Oppose Registration of Copycat Trade Marks

Victor Looi
Updated

Say your business owns several Singapore-registered and/or well-known trade marks in respect of your business’ goods and/or services. You realise one day from the Trade Marks Journal of the Intellectual Property Office of Singapore (IPOS) that a competitor has applied to IPOS to register a “copycat” trade mark (that is, a trade mark identical or similar to your business’ trade mark) without any authorisation from you.

Why Should You Apply to Oppose Registration of Copycat Trade Marks?

In such a situation, your business will likely want to oppose your competitor’s registration of their trade mark. This is because the registration of a trade mark with IPOS confers that trade mark with protection under the Trade Marks Act (TMA). This protection is more comprehensive than protection conferred under the law of passing off (for unregistered signs).

For instance, your competitor will be able to leverage border enforcement measures and seek recourse through a wider range of remedies under the TMA to protect its trade mark. These remedies can include order(s) for delivery up and/or disposal of infringing goods.

Additionally, your competitor may enjoy exclusive use of its trade mark, which may increase the likelihood of public confusion that its goods or services originate from or are connected to your business. If so, this would likely divert sales and/or deprive your business of opportunities to licence the use of its trade marks, thereby reducing profits.

Further, your competitor’s use of its copycat trade mark may dilute the distinctiveness of your business’ trade mark(s) over time. This is especially if your competitor uses its mark on goods of inferior quality, for instance.

How to Commence Trade Mark Opposition Proceedings

Before opposing your competitor’s registration of the copycat trade mark, your business should first inform your competitor of its intentions to do so. If your competitor decides not to contest the opposition, its application for registration of its trade mark in respect of the opposed classes will be regarded as being withdrawn.

However if your competitor intends to contest your opposition, your business should consider engaging lawyers to assist it with the opposition process. This is because the preparation of an opposition case would require legal analysis and the crafting of legal arguments, and it would be best to leave such work to experienced trade mark lawyers.

The trade mark opposition process can be summarised as follows:

All the forms mentioned in this article (except for those relating to filing of evidence, written submissions and bills of cost) may be downloaded from the IPOS website here.

Filing of Notice of Opposition

To oppose the registration of a trade mark in Singapore, your business must first file a Notice of Opposition with IPOS through its IP2SG e-services portal. This Notice of Opposition has to be filed within 2 months from the date on which the trade mark was published in the IPOS Trade Marks Journal.

The Notice of Opposition must include a Statement of Grounds stating the grounds of opposition that your business seeks to rely on.

Grounds of opposition

The grounds upon which an opposition may be based can be found in sections 7 and 8 of the TMA. Section 7 covers the absolute grounds for refusal of registration, which concern the intrinsic characteristics of the opposed trade mark, while section 8 covers the relative grounds for refusal of registration, which concern the opposed trade mark’s conflict with already-registered trade mark(s) such as yours.

(a) Absolute grounds for refusal of registration

  • The sign to be registered does not fulfil the definition of a trade mark in the TMA;

  • The opposed trade mark lacks distinctiveness;

  • The opposed trade mark consists only of signs descriptive of the goods or services to which the trade mark is to be applied;

  • The opposed trade mark consists only of signs which have become customary in the current language or in genuine established trade practices;

  • The opposed trade mark consists only of a shape that is a result from the nature of the goods, that is required for the goods to have a technical function, or that gives substantial value to the goods;

  • The opposed trade mark contravenes public policy or morality, or causes public deception;

  • The use of the opposed trade mark violates any laws in Singapore; and

  • The application of registration of the opposed trade mark was made in bad faith.

(b) Relative grounds for refusal of registration

  • The opposed trade mark to be registered is identical with your business’ trade mark, and the goods or services for which the opposed trade mark is to be registered are identical to those protected under your business’ trade mark;

  • The opposed trade mark is identical with/similar to your business’ trade mark, and the goods or services for which the opposed trade mark is to be registered are similar to/identical with those protected under your business’ trade mark, thereby resulting in a likelihood of public confusion;

  • Your business’ trade mark is well known in Singapore, and the opposed trade mark (or an essential part of it) is identical with/similar to your business’ trade mark. Also, the use of the opposed trade mark would:

    • Indicate a connection between the goods or services for which the opposed trade mark is to be registered and your business, and is likely to damage your business’ interests; or

    • Unfairly dilute or unfairly take advantage of the distinctiveness of your business’ trade mark, should it be well known to the public at large in Singapore; and

  • The opposed trade mark cannot be registered because it could amount to the passing off of your business’ trade mark, among other possible contraventions of the law.

The Notice of Opposition should also include:

  • A representation of your business’ trade mark

  • The application/registration number of your business’ trade mark (where applicable)

  • The class number(s) and specification(s) of the goods or services your business’ trade mark is registered in

Additionally, should your business want to prove that its trade mark is well known in Singapore or well known to the public at large in Singapore, it should include evidence to substantiate this claim.

Such evidence could include your business’ sales figures, distribution channels, and advertising expenditure and channels in Singapore. In this regard, it is advisable that your business provides its appointed lawyers (if it has hired lawyers) with such information to facilitate their preparation of the Notice of Opposition.

Your business will have to pay a fee of S$374.00 x the number of classes opposed when filing the Notice of Opposition. Your business should also send a copy of the Notice of Opposition to your competitor simultaneously.

Competitor’s Filing of Counter-Statement

If your competitor intends to contest your business’ opposition, it must file a Counter-Statement Form within 2 months from its receipt of the Notice of Opposition. It will also have to send a copy of the Counter-Statement to your business.

Completion of Notification to Registrar Form

After the filing of the Counter-Statement, both your business and your competitor will receive a Notification to Registrar Form. This form is to be completed and submitted to IPOS within 1 month of the filing of the Counter-Statement.

The Notification to Registrar Form will include a Request for WIPO Mediation Form, which is for the parties to indicate whether they would like to resolve their dispute through mediation.

If both parties refuse to mediate or are unable to reach a consensus during mediation, the Registrar will instruct parties on how the case will proceed, as well as the deadlines for both parties to file their evidence, either in writing or in a Case Management Conference.

Filing of Evidence

If your business intends to provide evidence, it should file a statutory declaration in the Evidence by Initiator Form by the deadline stated by the Registrar. The evidence provided should substantiate your business’ grounds for opposition. Your business is also required to send a copy of the filed statutory declaration to your competitor.

Your competitor can then file a statutory declaration in the Evidence by Respondent Form stating the evidence that it seeks to rely on to support its own case. Your business will also receive a copy of this form.

After that, your business may file a statutory declaration in the Evidence-In-Reply by Initiator Form, within the given deadline, if it intends to adduce evidence to counter your competitor’s evidence. Your business also has to send a copy of this filed statutory declaration to your competitor.

Requesting for Extension of Time (If Required)

Any party to the opposition proceedings may request for an extension of time at any point of the proceedings. The procedure is as follows:

  • File a Request for Extension of Time Form with IPOS. The form has to include the reason(s) for requesting an extension.

  • Make payment of S$100.00 x the number of classes opposed.

  • Send the Request for Extension of Time Form to all parties likely to be affected by the extension, including the other party to the proceedings.

Pre-Hearing Review

After your business and your competitor have filed their evidence, the Registrar may require both sides to attend a pre-hearing review.

During this review, the Registrar may ask both parties to provide further information on certain matters and/or explore the option of settling the matter.

Preparation for Hearing

After the Registrar informs both parties of the hearing date, both parties will have to prepare for the hearing by:

  • Filing their written submissions and bundle of authorities (e.g. statutes, cases) that they intend to rely on in the Written Submissions & Bundle of Authorities Form at least a month before the hearing date;

  • Exchanging their respective written submissions and bundle of authorities at least a month before the hearing date; and

  • Filing a Notice of Attendance at Hearing Form (together with payment of S$715.00) before the hearing to indicate that they intend to be present at the hearing.

Dealing with Post-Hearing Matters

Decision

After the hearing, the Registrar will notify the parties of its decision and the grounds for it as soon as practicable.

Appeal

Should your business intend to appeal the Registrar’s decision, it will have to file the appeal with the High Court within 28 days of the decision.

What if your business’ opposition is unsuccessful?

If your business does not succeed in opposing your competitor’s registration of its trade mark, your competitor will enjoy the exclusive right to use its trade mark.

However, this does not prevent your business from using its own trade mark(s) in its own course of trade.

Costs

Costs of the hearing are usually awarded to the winning party, and parties are encouraged to agree between themselves on the sum to be paid. However, if both parties cannot agree on this, then the party entitled to costs may file a Bill of Cost Form within 1 month from the date of decision for a taxation hearing. A copy of the form should also be served on the other party at the same time.

If the other party objects to the sum proposed, it may file a Marked Bill of Cost Form within 1 month after receipt of the Bill of Cost Form.

At the taxation hearing, the Registrar will award costs based on the Scale of Costs found in the Fourth Schedule of the Trade Mark Rules. The party entitled to costs will then file a Request to Extract Registrar’s Certificate of Taxation Form (together with payment of S$80.00 x the number of classes opposed) to obtain a taxation certificate that is enforceable in court.

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While the procedure for opposing the registration of a trade mark may seem relatively straightforward, much analysis will be required in selecting and proving the grounds of opposition that your business may rely on.

If your business would like to engage a trade marks lawyer to assist with the opposition of registration of copycat trade marks, your business may get in touch with one of our experienced trade mark lawyers.

The post Protect Your Brand: How to Oppose Registration of Copycat Trade Marks appeared first on SingaporeLegalAdvice.com.

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