trademark assignment agreement singapore

• Practical Law

Intellectual Property Transactions in Singapore: Overview

Get full access to this document with a free trial.

Try free and see for yourself how Practical Law resources can improve productivity, efficiency and response times.

About Practical Law

This document is from Thomson Reuters Practical Law, the legal know-how that goes beyond primary law and traditional legal research to give lawyers a better starting point. We provide standard documents, checklists, legal updates, how-to guides, and more.

650+ full-time experienced lawyer editors globally create and maintain timely, reliable and accurate resources across all major practice areas.

83% of customers are highly satisfied with Practical Law and would recommend to a colleague.

81% of customers agree that Practical Law saves them time.

• Trade Marks
• Confidentiality
• Cross-border - IP&IT
• Outsourcing and commercial contracts

Singapore IP Law Firm | Ella Cheong LLC

Chapter on Trademarks in Singapore

By Kevin Wong and Denise Loh (Ella Cheong LLC)

Reproduced with permission from Law Business Research Ltd. This article was first published in Getting the Deal Through: Trademarks 2016 , (published in September 2015) For further information please visit www.gettingthedealthrough.com .

1    Ownership of marks

Who may apply?

Any natural or legal person may apply for and own a registered trademark under the Trade Marks Act (the Act). In addition, joint ownership of a trademark registration is also possible under the Act, subject to any agreement to the contrary, with each co-owner being entitled to an equal undivided share in the mark.

2    Scope of trademark

What may and may not be protected and registered as a trademark?

Under the Act, a trademark is defined as any sign capable of being represented graphically and that is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. The requirement of being capable of being represented graphically does not mean that the mark must be visually perceptible. Instead, it must be possible for the mark to be precisely identified and presented on the trademark register. Hence, it is possible for ‘non-traditional’ marks that can be represented graphically, such as sounds, to be registrable.

3    Common law trademarks

Can trademark rights be established without registration?

In the absence of trademark registrations, a trader may still rely on the tort of passing off at common law to prevent others from using the trader’s marks or other aspects of the trade get-up to represent that their goods or business are those of the trader’s. This tort is independent of, and can co-exist, with protection under the Act. To succeed in an action for passing off, three elements must be proven, namely, goodwill; misrepresentation; and damage. The claimant has to show that his or her business has goodwill by proving that the mark adopted by the claimant has become associated or identified exclusively with his or her goods or services. Reputation per se may not constitute goodwill in that the element of goodwill requires the claimant to prove that there is a business within Singapore to which goodwill can attach. Second, the claimant must establish a false representation by the defendant that led to, or is likely to lead, to deception or confusion among the public that the trade source or quality of the goods or services offered by the defendant are the same as that of the claimant. Third, the claimant must show that he or she has suffered, or is likely to suffer, damage to his or her goodwill as a result of the defendant’s misrepresentation.

Under the Act, well-known trademarks are entitled to certain protection even if such marks are not registered.

4    Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration? What additional documentation is needed to file a trademark application?

In general, a straightforward national trademark application in Singapore (for which no objections are raised during the examination and no opposition proceedings arise) will take between six to eight months to reach registration. In the event that any objections are raised or oppositions are commenced by third parties, the application process may be delayed. Powers of attorney or certificates of corporate good standing are not required for the filing of trademark applications in Singapore.

5    Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Singapore adopts the 10th edition of the Nice Classification of Goods and Services and multi-class applications are available. In relation to the official filing fees, there are no cost savings for multi-class applications.

6    Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? May applicants respond to rejections by the trademark office?

The trademark office will examine trademark applications for registrability on absolute grounds (eg, the mark is devoid of distinctive character, the mark consists exclusively of signs or indications that may serve in trade to designate the characteristics of the goods or services) and also on relative grounds (ie, conflicts with other trademarks). The objections are communicated by letter with stipulated deadlines by which the applicant must respond, failing which the application will be deemed withdrawn. If the applicant successfully overcomes the objections and the registrar accepts the application for registration, the application will proceed to publication in the Trade Marks Journal.

7    Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

While a trademark or service mark generally does not have to be in use before it can be registered, the examiner may request for evidence of use during the course of examination, for example, to demonstrate acquired distinctiveness for the purposes of overcoming absolute objections.

If the registration is granted without use, the registered owner (or its licensee) must put that mark to genuine use in the course of trade within the period of five years following the date of completion of the registration or run the risk of having the registration revoked. Further, a registration may also be revoked if the use of a mark ceases or is suspended for an uninterrupted period of five years.

It is possible to file priority claims based on corresponding applications filed under the Paris Convention or in World Trade Organization member countries within six months of the first application in any such country for the registration of the same trademark and in respect of the same goods or services.

8    Appealing a denied application

Is there an appeal process if the application is denied?

Any appeals against a decision of the Registrar (in relation to the registrability of the mark or the outcome of opposition proceedings) are to be made to the High Court. The appeal procedures are mainly governed by the rules in the Rules of Court. Further appeals from the High Court to the Court of Appeal, the highest appellate court in Singapore, are only possible with leave of court.

9    Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

After an application has been accepted by the Registrar for registration, the application will proceed to publication in the Trade Marks Journal. During the two-month period following the publication of the application, any person may oppose the registration of the mark by lodging a notice of opposition. The grounds of opposition available under the Act include the mark’s lack of inherent distinctiveness, bad faith, confusing similarity to an earlier trademark and where use of the mark is liable to be prevented by virtue of any laws protecting an unregistered trademark (such as the law of passing off). A person can oppose a bad-faith application without having first obtained the registration of its mark in Singapore.

After registration, a mark may also be cancelled, revoked or invalidated. The cancellation of a trademark can only be made by the registered proprietor by application to the Registry. In contrast, applications for revocation and invalidation may be made by any person to the Registry or to the court. Applications for revocation may be made on grounds such as non-use, deception or loss of distinctiveness, while applications for invalidation are typically made on the basis that the registrability requirements have not been met.

10  Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The registration of a trademark remains in effect for an initial period of 10 years from the date of registration. Thereafter, the registration may be renewed for further periods of 10 years. While evidence of use of the mark does not need to be filed to maintain the registration, a registration may be revoked for non-use. Where required, proof of use should consist of evidence of genuine use of the mark in the course of trade in Singapore. The Act provides that use of a trademark includes use in a form differing in elements which do not alter the distinctive character of the mark in the manner in which it was registered. The Act further provides that use in Singapore includes applying the trademark to goods or to materials for the labelling or packaging of goods in Singapore solely for export purposes.

11  The benefits of registration

What are the benefits of registration?

The proprietor of a registered trademark has the exclusive right to use the trademark and to authorise other persons to use the trademark in relation to the goods or services for which the trademark is registered. Registration also provides the proprietor with the right to obtain relief under the Act for infringement of his registered trademark. Unlike passing-off claims, an action for trademark infringement does not require the claimant to prove goodwill associated with the mark. Further, border enforcement measures against infringing goods are also available under the Act in relation to registered trademarks.

12  Licences

May a licence be recorded against a mark in the jurisdiction? Are there any benefits to doing so or detriments to not doing so?

The grant of a licence under a registered trademark may be recorded, but such a recordal is not mandatory. The main benefit of recording the licence is that it provides notice of the licensee’s interests under the registered mark to third parties.

13  Assignment

What can be assigned?

A registered trademark or a trademark application may be assigned with or without the goodwill of a business. In addition, an assignment of a registered trademark or trademark application may be for all or only some of the goods or services covered by the registration or application.

14  Assignment documentation

What documents are required for assignment and what form must they take?

An assignment of a registered trademark or an application for the registration of a trademark is not effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative.

15  Validity of assignment

Must the assignment be recorded for purposes of its validity?

Until an application has been made for the registration of the assignment of a registered trademark or any right in it, the assignment is ineffective as against a person acquiring a conflicting interest in or under the registered trademark in ignorance of the assignment. In addition, a person who becomes the proprietor of a registered trademark through such an assignment is not entitled to damages, an account of profits or statutory damages in respect of infringement of the mark occurring after the date of the assignment and before the date of the application for the registration of the assignment.

16  Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

A registered trademark may be the subject of a charge in the same way as other personal or moveable property. An assignment by way of security of a registered trademark is not effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative. Until an application has been made for the registration of the granting of a security interest over a registered trademark or any right in or under it, it is ineffective as against a person acquiring a conflicting interest in or under the registered trademark in ignorance of the transaction. A person who becomes the proprietor of a registered trademark through the grant of a security interest over a registered trademark, or any right in or under it, is not entitled to damages, an account of profits or statutory damages in respect of infringement of the mark occurring after the date of the assignment and before the date of the application for the registration of the granting of the security interest.

17  Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The symbol ® can be used to indicate that a trademark is registered while the symbol ™ may be used to indicate that a sign is used as a trademark. It is not mandatory for such symbols to be used. A person who falsely represents that a mark is a registered trademark and knows or has reason to believe that the representation is false shall be guilty of an offence under the Act and shall be liable on conviction to a fine not exceeding S$10,000. In this regard, the use of the word ‘registered’ or any other word or symbol importing a reference (express or implied) to registration shall be deemed to be a representation as to registration under the Act unless it is shown that the reference is to a registration elsewhere than in Singapore and that the trademark is in fact so registered for the goods or services in question.

18  Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

A proprietor must bring any claims for infringement of his or her registered trademark in the High Court. The Act contains provisions on offences that include counterfeiting a trademark, falsely applying a registered trademark to goods or services, importing or selling goods with falsely applied trademark and making or possessing of an article specifically designed for making copies of a registered trademark. Border enforcement measures are also available in Singapore.

19  Procedural format and timing

What is the format of the infringement proceeding?

In general, civil actions for trademark infringement are commenced by writ actions and will involve the filing of pleadings, discovery, the exchange of evidence via affidavits and eventually trial in open court. The trial would involve the cross-examination of witnesses and the filing of submissions. As there are no jury trials in Singapore, the judge at first instance will decide the case based on the facts and applicable law. It may take around 12 to 18 months for the proceedings to be concluded, depending on the complexity of the matter and the interlocutory applications taken out.

20  Burden of proof

What is the burden of proof to establish infringement or dilution?

In Singapore, the claimant in civil cases generally has the legal burden of proving its case and the relevant standard is on ‘the balance of probabilities’.

21  Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A trademark owner may bring proceedings in his or her own name. A licensee is generally entitled to call on the proprietor of the registered trademark to take infringement proceedings in respect of any matter which affects his or her interests. If the proprietor refuses to do so or fails to do so within two months after being called upon, the licensee may bring proceedings in his or her own name as if he or she were the proprietor. Where infringement proceedings are brought by a licensee, the licensee may not, without the leave of the High Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant. Notwithstanding the above, an exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment. In such circumstances, the exclusive licensee is entitled, unless subject to the provisions of the licence or the Act, to bring infringement proceedings against any person other than the proprietor in his or her own name. There is no requirement in relation to standing for bringing a criminal complaint.

22  Foreign activities

Can activities that take place outside the country of registration support a charge of infringement or dilution?

Activities which take place outside of Singapore may amount to infringement to the extent that such leads to the use of a registered trademark in Singapore, for instance through the import of infringing goods into Singapore or export of infringing goods out of Singapore.

23  Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

In a trial, parties have to give discovery of evidence which are relevant to the issues in the case and which are in their possession, custody or power. If one party believes that the other has given inadequate discovery, it may apply to the court for specific discovery of evidence. There are some exceptions, which are mainly for evidence covered by legal privilege. It is also possible to apply for pre-action discovery to compel a party to provide evidence prior to the commencement of an action.

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

Such proceedings may last between 12 to 18 months. It is possible for an application for an interim injunction to be heard by the court within a few days. In certain cases where there is no arguable defence to the claims at issue, it may be possible to seek summary judgment, without the need for a full trial. Appeals for infringement or dilution proceedings are to the Court of Appeal and the appeal process can range from a few months to a year.

25  Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The costs would vary depending on the complexity of the issues and evidence involved, as well as the nature of the proceedings. In general, a successful party may recover at least part of its costs from the losing party but the award of costs is ultimately at the discretion of the court.

26  Appeals

What avenues of appeal are available?

Appeals against the decisions of a Registrar are to the High Court, and the leave of court must be obtained for any further appeal to the Court of Appeal. Infringement proceedings are heard in the High Court at first instance, and appeals from such proceedings are to the Court of Appeal. Claims for passing off may be brought in the State Courts or the High Court depending on the quantum of the claim. Appeals from the State Courts are to the High Court and any further appeals would be to the Court of Appeal.

27  Defences

What defences are available to a charge of infringement or dilution, or any related action?

The defences available under the Act include the following, namely that the infringing use:

• involves the use by the defendant of his or her name or name of his or her place of business if such use is in accordance with honest practices;
• is descriptive of the characteristics or intended purpose of the goods or services;
• is use which first began before the earlier of the registration of the mark or the first use by the registered owner of the mark and has been continuously used since then;
• is use of the defendant’s registered mark;
• constitutes fair use in comparative commercial advertising or promotion; and
• is in relation to parallel imports.

Other defences may be available, depending on the facts, such as arguments relating to the owner’s trademark registration being subject to a limitation or disclaimer.

28  Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The remedies available under the Act for infringement of a registered trademark include:

• an injunction;
• an account of profits;
• statutory damages;
• an order for erasure of the offending sign; and
• an order for delivery up and disposal of the infringing goods.

Monetary awards are generally assessed on a compensatory basis and the claimant must prove the losses claimed. Preliminary and final injunctions may be available. Preliminary injunctions are generally granted when the balance of convenience lies in favour of granting the injunction. A preliminary injunction may be granted subject to the plaintiff’s undertaking to pay damages to the defendant in the event that the defendant is absolved, or the court subsequently decides that the injunction should not have been granted. A final injunction is granted after a trial on the merits of the case.

Criminal remedies are typically in the form of fines, imprisonment, orders for forfeiture and destruction of goods or articles.

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR techniques are available subject to the parties’ consent or agreement to submit their dispute to such procedures. In addition, the Intellectual Property of Office of Singapore (IPOS) and the WIPO Arbitration and Mediation Centre have established a joint mediation procedure. This mediation option applies to all trademark proceedings before IPOS with effect from 3 January 2012.

Arbitration is also another option for the resolution of trademark disputes which offers confidentiality. However, as a result of the consensual nature of arbitration, any award rendered will only be binding on the parties involved and will not affect third parties. Hence, an arbitral tribunal cannot make findings in relation to matters such as the validity of intellectual property rights.

30  Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

A well-known trademark can be protected under the Act, regardless of whether the mark has been registered in Singapore and whether the trademark owner has any business or goodwill in Singapore. Further, the Act provides for two different types of well-known marks:

• well-known marks (namely marks that are well known to a relevant segment of the public in Singapore); and
• marks that are well known to the ‘public at large in Singapore’.

A trademark that is well known to the public at large enjoys broader protection than a trademark that is only well known to a particular segment of the public. The standard of proof in relation to proving that a mark is well-known is high and relevant factors include the duration and extent of use, publicity or advertising as well as independent public recognition of the fame of the mark. The protection granted to well-known marks under the Act is limited to injunctions.

UPDATE & TRENDS

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

A notable development in case law is the shift from the European “global appreciation” approach to the “step-by-step” approach in the assessment of the likelihood of confusion, which is a key element for establishing trademark infringement. In assessing the likelihood of confusion, the approach previously applied in Singapore was to take into account all factors relevant to the marks and goods and services in issue, along with the interdependence between the relevant factors, in particular, the similarity between the marks and between the goods or services. In Fox Street Wear Pte Ltd v Fox Racing, Inc. [2014] SGIPOS 13, the Hearing Officer clarified that the applicable test should be the “step-by-step” approach in light of the Court of Appeal decision in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911. Under the “step-by-step” approach, two threshold requirements must first be fulfilled, namely the similarity or identity of the marks and the similarity and identity of the goods or services. Once these threshold criteria have been met, the issue of the likelihood of confusion then arises and the court will then examine how similar the marks are; how similar the goods or services are; and given this, how likely the relevant segment of the public will be confused.

Another interesting development in recent case law relates to the scope of the “own name” defence to trademark infringement. In Singapore, a person does not infringe a registered trade mark when he uses his name or the name of his predecessor in business or the name of his or his predecessor’s place of business. In The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd [2015] SGHC 77, the High Court confirmed that the “own name” defence extends to use of the name as a trade mark. The court also clarified that the defence extends to the use of a company’s name and held that a company is entitled to rely on either its registered corporate name (without indications of incorporation like “Ltd” or “Pte Ltd”) or its trading name as a defence to trademark infringement, provided that certain conditions are met for the latter.

• Awards & Recognitions
• Prosecution of Trade Marks, Patents, Registered Designs and Copyright
• Dispute Resolution and Enforcement
• Corporate and Commercialisation
• Data Protection
• Soh Kar Liang
• Ella Cheong
• Prabhuram Otharam
• Nadhirah Shaarani
• Maisarah Azlyza
• Tiffany Ang
• Muhammad Alwi
• EC Reporter

• 62065186 | [email protected]
• 69 Ubi Road 1 #05-29B Singapore 408731

Home     Blog Post

• Trademark FAQ

How does one transfer a trademark?

One of the benefits of having a registered trademark is enjoying the exclusive rights given to the proprietor in the use of the mark and the goods and/or services that are protected by it. As an intangible property, it can also be transferred another party to generate more profit. There are two ways to transfer a registered trademark: licensing and assignment.

Licensing of a Trademark

Licensing refers to the giving of the same rights and protection to another party, allowing them to sell the same goods and/or services under the brand. The third-party also has the full legal rights to file for an infringement in case there is a violation of the intellectual property laws by another company. It is the responsibility of the original trademark owner to record the licensees in the register.

A form and corresponding fees must be submitted to the Intellectual Property Office of Singapore (IPOS). The documentation and fees are done per one trademark. It is within the right of the trademark owner to license and terminate the license based on their agreement with the licensees. A licensing document or agreement should contain the following information: pertinent details about the licensor and licensees; trademark details; usage scope and terms; standards and quality control; financial terms; and details of the exclusivity of the license.

Assignment of a Trademark

Assignment of a trademark refers to the legal transfer of the owner’s title, rights, and interest in a trademark. In Singapore, the Trade Marks Act Cap. 332 gives the new owner the responsibility to apply and record in the Register. The original trademark owner, regardless if the application for the trademark is pending or already approved, is also responsible for recording the change of ownership in the registry. The record of the assignment needs a correspondent document and fees filed at IPOS. Before the transfer of an intellectual property such as a trademark can be completed, however, the original owner must update all the necessary information first.

Once completed, an Assignment Agreement or a Deed of Assignment or a Sale and Purchase Agreement must be written once the negotiations for the assignment are done. These documents, however, may only be applicable within the Singapore jurisdiction, so the assignment of trademarks registered internationally will require more documents. The assignment is then recorded by the assignee or new owner. If the new trademark owner fails to record the transfer of intellectual property, the procedure is not considered valid.

It is necessary to consult local and foreign counsel when undertaking an assignment of the trademark to avoid problems in the future regarding the transfer.

Recent News

How Can Trademark Act in Singapore Protect Your Business?

July 19, 2019

Nice Classification: Which TM Class is your Goods and Services Under

Madrid Protocol - Protect Your Brand Internationally

July 15, 2019

Is using an acronym of a trademark an infringement?

May 03, 2019

• TM Registration
• Identity Theft
• Transfer of TM Ownership
• Registrar Objections
• Foreign Languages for TM
• International Trademark
• Trademark Removal
• Trademark Infringement

Step-by-Step Guide to Drafting a Trademark Assignment Agreement

Try our Legal AI - it's free while in beta 🚀

Genie's Legal AI can draft , risk-review and negotiate 1000s of legal documents

Note: Want to skip the guide and go straight to the free templates? No problem - scroll to the bottom. Also note: This is not legal advice.

Introduction

Drafting a trademark assignment agreement is an important part of protecting your business and its associated trademark rights. By clearly outlining the rights and responsibilities of both assignor and assignee, this document helps ensure that the trademark remains in your control and safe from potential infringement or competition.

For business owners, a trademark assignment agreement sets out the obligations of the assignor to protect and maintain the trademark, as well as granting exclusive rights to use it to the assignee. It also establishes any applicable fees or royalties due for using the mark, making sure that you are properly compensated should others wish to use it for their own purposes. This document can be used to prevent such unauthorised uses from occurring in the first place.

A properly drafted agreement also makes sure that you have legal title over your mark - enabling you to use it across multiple products, packaging and advertising without fear of being challenged for its ownership status. Furthermore, by having a legally binding contract in place between yourself (the assignor) and another party (the assignee), any potential infringers are made aware that using your mark without permission would carry legal consequences.

At Genie AI we understand how difficult drafting this kind of document can be - so we’ve created an open source legal template library with millions of datapoints teaching us what a market-standard trademark assignment agreement looks like. With our community template library at hand, anyone can draft and customise high quality legal documents without having to pay an expert lawyer - meaning you don’t need a Genie AI account just yet! Read on below for our step-by-step guidance on how to create your perfect draft agreement today!

Definitions (feel free to skip)

Lanham Act: A federal statute in the United States which provides for the registration and protection of trademarks in interstate commerce. Assignor: The person or entity transferring the trademark. Assignee: The person or entity receiving the trademark. Jurisdiction: The geographical area where a court has authority to hear a legal case. Non-compete clause: A clause in an agreement that restricts one or both of the parties from entering into a similar agreement with a competing entity. Confidentiality agreement: An agreement between two or more parties that requires them to keep certain information private. Consideration: Something of value given in exchange for something else. Indemnification clause: A clause in an agreement that protects one or both of the parties from certain legal liabilities. Specific performance: A court order that requires one or both of the parties to a contract to fulfill their obligations under the agreement.

• Outline the purpose of the trademark assignment agreement
• Explain the purpose of the agreement
• Identify the trademark to be assigned
• Discuss the relevant trademark law and regulations
• Identify the applicable laws and regulations
• Discuss how the laws and regulations will affect the agreement
• Describe the parties involved in the agreement
• Identify the assignor and assignee
• Describe the relationship between the parties involved
• Explain the scope of the agreement
• Discuss the scope of the rights and obligations of the assignor and assignee
• Outline the geographic extent of the assignment
• Discuss the terms of the agreement
• Outline the financial terms of the agreement
• Identify any additional obligations or restrictions
• Outline the obligations of each party
• Describe the assignor’s obligations
• Describe the assignee’s obligations
• Detail the process for registration of the trademark
• Discuss the process for filing of the trademark application
• Explain the process for registration of the trademark
• Discuss the grounds for termination of the agreement
• Outline the grounds for termination of the agreement
• Specify any notice requirements
• Describe the remedies for breach of the agreement
• Explain the remedies available to each party in the event of a breach
• Outline the process for enforcement of the agreement
• Explain the process for dispute resolution
• Describe the process for resolving disputes
• Discuss the parties’ rights and obligations during the dispute resolution process
• Detail how to obtain the executed agreement
• Explain the process for obtaining the signed agreement
• Outline any additional steps required to complete the agreement

Get started

Q: what is the difference between uk and us trademark assignment agreement.

Asked by Aiden on 11th May 2022. A: UK and US trademark assignment agreements are similar, but there are some important differences. In the UK, assignment agreements are governed by the Trade Marks Act 1994, which provides for the transfer of one party’s exclusive rights in a trademark to another party. In the US, assignment agreements are governed by the Lanham Act, which is a federal law setting out the rules for registering and protecting trademarks. The Lanham Act also provides for the transfer of ownership of a mark from one party to another. The key difference between the two jurisdictions is that in the US, an assignor must be registered in order to assign their trademark rights to a new owner. In the UK, registration is not required for an assignment agreement to be valid.

Q: Are there any specific industry-related considerations when drafting a trademark assignment agreement?

Asked by Landon on 15th August 2022. A: Yes, it is important to consider industry-specific issues when drafting a trademark assignment agreement. For example, if you are in the technology sector, you may need to include provisions regarding software updates, compatibility with other technologies, or any other industry-specific considerations that may be relevant to your particular business model or sector. Additionally, it is important to consider any applicable laws or regulations in your jurisdiction regarding trademark use and protection, as these may impact your agreement’s terms and conditions.

Q: How detailed should a trademark assignment agreement be?

Asked by Emma on 9th November 2022. A: A trademark assignment agreement should be as detailed as necessary to ensure that all parties understand their respective rights and obligations under the agreement. This should include details such as who will own the mark after the assignment takes place; what kind of license(s) will be granted; any restrictions on how the mark can be used; and any other details necessary to ensure that all parties understand what is expected of them under the agreement. It is also important to ensure that you include all necessary details so that both parties can enforce their rights if needed in the future.

Q: Is it possible to assign a trademark without registering it?

Asked by Ethan on 2nd February 2022. A: Yes, it is possible to assign a trademark without registering it depending on jurisdiction. In some jurisdictions such as the United States, registration of a mark is required for an assignor to transfer their rights in the mark to another party via an assignment agreement. In other jurisdictions such as the United Kingdom, registration of a mark is not required for an assignor to transfer their rights in the mark via an assignment agreement. It is important to research applicable laws and regulations in your particular jurisdiction before attempting to assign a trademark without registration.

Q: How do I protect my intellectual property (IP) when drafting a trademark assignment agreement?

Asked by Mason on 5th July 2022. A: It is important to protect your intellectual property (IP) when drafting a trademark assignment agreement by including provisions that clearly state who has ownership rights over any IP associated with the transferred mark and how it can be used. Additionally, you should consider including provisions that set out how disputes involving IP will be handled and any applicable time limitations on filing claims related to IP rights associated with the transferred mark. By doing so, you can ensure that both parties are fully aware of their respective rights and obligations under the agreement and that your IP is adequately protected from potential misuse or infringement by third parties.

Example dispute

Possible lawsuits involving trademark assignment agreements.

• Plaintiff may sue if their trademark was assigned without their knowledge or consent.
• Plaintiff may sue if the trademark assignment agreement was not honored or followed.
• Plaintiff may sue if the trademark assignment agreement was not properly executed.
• Plaintiff may sue if the trademark assignment agreement contains unfair or one-sided provisions.
• Plaintiff may sue if the trademark assignment agreement contains ambiguous or vague language.
• Plaintiff may sue if the trademark assignment agreement was obtained through fraud, misrepresentation, or duress.
• Plaintiff may sue if the trademark assignment agreement was breached.
• Plaintiff may sue if the trademark assignment agreement was not properly registered.
• Plaintiff may sue if the trademark assignment agreement was not properly enforced.
• Plaintiff may sue if the trademark assignment agreement was used to unfairly compete with them.
• Plaintiff may sue if the trademark assignment agreement was used to infringe on their trademark.
• Plaintiff may sue if the trademark assignment agreement was used to commit deceptive trade practices.
• Plaintiff may sue if they have suffered damages as a result of the trademark assignment agreement.
• Plaintiff may sue to seek an injunction to prevent further violations of the trademark assignment agreement.
• Plaintiff may sue to seek monetary damages, including lost profits and/or attorney’s fees.

Templates available (free to use)

Trademark Assignment Contract Simple

Helpful? Want to know more? Message me on Linkedin

Links to get you started

‍ Our Legal AI Assistant (free while in beta) Contract Template Library Legal Clause Library

Try the world's most advanced AI Legal Assistant, today

IP Assignment and Licensing

IP rights have essentially transformed intangibles (knowledge, creativity) into valuable assets that you can put to strategic use in your business. You can do this by directly integrating the IP in the production or marketing of your products and services, thereby strengthening their competitiveness. With IP assignement and IP licensing, IP owners can also use your IP rights to create additional revenue streams by selling them out, giving others a permission to use them, and establishing joint ventures or other collaboration agreements with others who have complementary assets.

  Expert tip: Assignment, license and franchising agreements are flexible documents that can be adapted to the needs of the parties. Nevertheless, most countries establish specific requirements for these agreements, e.g. written form, registration with a national IP office or other authority, etc. For more information, consult your IP office .

IP rights assignment

You can sell your IP asset to another person or legal entity.

When all the exclusive rights to a patented invention, registered trademark, design or copyrighted work are transferred by the owner to another person or legal entity, it is said that an assignment of such rights has taken place.

Assignment is the sale of an IP asset. It means that you transfer ownership of an IP asset to another person or legal entity.

IP for Business Guides

Learn more about the commercialization of patents, trademarks, industrial designs, copyright.

Read IP for Business Guides

IP licensing

You can authorize someone else to use your IP, while maintaining your ownership, by granting a license in exchange for something of value, such as a monetary lump sum, recurrent payments (royalties), or a combination of these.

Licensing provides you with the valuable opportunity to expand into new markets, add revenue streams through royalties, develop partnerships etc.

If you own a patent, know-how, or other IP assets, but cannot or do not want to be involved in all the commercialization activities (e.g. technology development, manufacturing, market expansion, etc.) you can benefit from the licensing of your IP assets by relying on the capacity, know-how, and management expertise of your partner.

  Expert tip: Licensing can generally be sole, exclusive or non-exclusive, depending on whether the IP owner retains some rights, or on whether the IP rights can be licensed to one or multiple parties.

Technology licensing agreements

Trademark licensing agreements, copyright licensing agreements, franchising agreements, merchande licensing, joint venture agreements, find out more.

• Learn more about Technology Transfer .

Trade Mark Assignment

Create a trade mark assignment contract in less than 5 minutes with zegal's document builder. easy to use. no legal knowledge required..

Easy to Use Legal Templates

Quickly and easily create any legal agreement for you or your team.

Affordable Plans

Straightforward pricing plans and bespoke packages built to simplify all your legal demands.

Vast Document Library

Zegal’s comprehensive collection of agreements means you always have what you need at your fingertips.

Trade Mark Assignment FAQ

Table of contents, what is trademark assignment.

A Trademark Assignment allows a trademark owner to transfer the rights, title, and interest in a trademark. It is the assignment of a trademark to another party in writing under the supervision of an attorney. It includes transferring trademarks such as words, phrases, and logos from one entity to another.

A Trademark Assignment differs from a Trademark License Agreement, which grants permission to use a mark in some manner but does not transfer any rights in the trademark.

A Trademark Assignment helps ensure that the rights in a trademark are clearly identified and transferred and that both parties are clear on their rights and remedies.

What is the purpose of a trademark and trademark assignment?

The basic purpose of a trademark is to distinguish the goods and products provided by a business from another business. It is not mandatory to register a trademark; however, in some cases, it can add great value to a business. For example, the image and goodwill of any company can be reduced if any other company tries to copy or misrepresent their products as yours, in such case trademark can help distinguish your goods & Products from theirs and hence play an important role in the growth of your business. It also helps to create a brand value in front of your customers that helps them to distinguish your products and services by the use of trademarks whereas a trademark assignment helps in transferring the rights, title, and interest in a trademark.

Can a trademark be bought or sold?

Yes, a trademark can be bought or sold with the consent of the existing owner and interested parties, often referred to as a trademark assignment. Trademarks frequently get exchanged from one proprietor to another and the transfers can be both short term as well as indefinitely transferred. Generally, the owner of a trademark, who wants to sell it is known as the assignor and the interested party who is willing to buy the trademark is known as the assignee. The transfer process usually takes anywhere between 6 to 12 months and needs to be recorded with the trademark registrar.

Is a trademark the same as a service mark?

A trademark is basically done for distinguishing your goods and products from another business whereas a service mark is done for distinguishing your services from another service provider.

What is the difference between trademark and copyright?

Trademarks help to distinguish your goods and products from another business whereas copyright protects original work. Copyright includes protecting your original content like songs, movies, and books whereas trademarks are more focused on distinguishing your goods and products from another business by protecting brand names, logos, and slogans.

How is a trademark assigned temporarily and indefinitely?

A trademark assignment is used when the ownership and the trademark registration need to be transferred from one owner to another. This is an indefinite handover of ownership. It is a must to sign the Trademark Assignment Agreement before assigning trademarks.

On the other hand, a trademark license agreement is just a temporary transfer of a trademark, and ownership is still held by the original owner.

Types of Trademark Assignment

There are four types of Trademark Assignment:

Complete Transfer or Complete Trademark Assignment Here, all rights associated with the trademark including, privileges to collect royalty, sell and transfer it, and others are completely handed over to another party. With this type of trademark agreement, the original owner will no longer hold any of the rights following the transfer of the trademark.

Limited Trademark Registration Transfer This trademark assignment limits the use and ownership of the trademark to only some goods/services. Here, the rights to the trademark are transferred partially and is restricted to specific goods and services only. So, owners can keep some rights to themselves and transfer rights for only specific goods or services.

Trademark Assignment including Goodwill When transferring trademark rights, this type of assignment allows the new owner to make use of the goodwill associated with the brand that has been supplied with the trademark. The new owner can utilize the trademark for new companies, or products that they create and sell.

Trademark Assignment without Goodwill

Also known as Gross Assignment, Trademark assignment without goodwill restricts the new proprietor’s ability to use Trademark Registration for new goods or services created by them in association with the trademark’s brand.

What should be included in the trademark assignment?

A trademark assignment should be drafted carefully, and it is important to mention the specific details of the trademark(s) to be transferred.

It should include:

• The name and contact details including the address of the new owner (assignee).
• In cases where the assignee is a company, details of the type of entity and state of incorporation should be included.
• Specific details of the trademark application(s) and/or registration(s) along with limitations of the transfer should be clarified.
• All information about the transfer including the goodwill associated with the marks should be clarified.
• If there are multiple marks involved, a single trademark assignment can include a schedule with the list of all the trademarks to be transferred.
• It is important to note and understand that the license to use a trademark is different from transferring ownership of the mark. In a trademark license, the licensor will still have ownership of the mark.

What are the benefits of Trademark Assignment?

Valuation of Trademark: A lot of effort is put into creating a brand and the process of assignment of a trademark slows the owners to cash in on the value created by the brand and get monetary returns for the same.

Trademark Assignment Agreement acts as legal proof : if a dispute ever arises with regards to the trademark, the Trademark assignment agreement can act as evidence of ownership and rights assigned.

Already established brand: someone who is using a trademark of another, they benefit by being able to enjoy the value that has already been created and is associated with the brand.

Conclusion: Trademark Assignment

So, trademark assignment or transfer of trademark registration is a process where the ownership, rights and registration of a trademark is given to another party. Although it is not mandatory to register a trademark for any business, having one does give you a stronger legal footing if any issues come up in the future. So, it is very important for any kind of business to register a trademark, which will help them to distinguish their goods and products from the others to take competitive advantage and grow their business to the next level.

You Might Also Like

Along with this document, make sure you see these other templates in our library:

• Shareholder Agreement
• Option Agreement
• Employee Option Repurchase Agreement
• Share Appreciation Rights Plan
• Share Option Plan

Stay compliant with the Zegal template library

Zegal  legal template  are meticulously crafted with the precision of AI and the expertise of seasoned human lawyers, providing a unique blend of speed and reliability.

You can trust that Zegal agreements are legally sound and fully compliant with current regulations.

Whether you're a  startup ,  SME , or a larger  enterprise , Zegal  contract management  will  automate  and speed up your legal processes.

Using Zegal will  reduce risk, save money, and improve efficiency . Let us take care of the paperwork so you can focus on running your business.

Don’t compromise on speed or compliance. Stay secure, compliant, and efficient with Zegal.

Related Documents

If you're creating a Trade Mark Assignment, you may also be interested in the following documents:

Assignment of Intellectual Property Rights (IP Rights) Template

Assignment of rights in software, copyright assignment (literary works), copyright assignment (photographs), trademark license agreement.

Choose from 1000+ legal templates and draft contracts with ease and confidence.

Contract and document management made easy..

• Collaborate

Pay As You Go

All-Access Plans

Dragon Law Limited, 1507, 18 Trang Lung Street

Causeway Bay, Hong Kong

+852 5801 9997

Dragonlaw (Singapore) Pte Ltd, 56A Boat Quay

049845, Singapore

+65 6589 8923

United Kingdom

Zegal Limited, 1 Throgmorton Avenue

EC2N 2JJ, London

+44 20 3617 6787

© Zegal 2013-2024. All Rights Reserved.

Grow Your Business with Zegal

Lawyer-Reviewed Templates

Seamless Integration

Time-Saving Automation

Flexible Pricing Plans

Your Business

Startup SME Enterprise

User Details

Please leave this field empty.

Already have an account? Log in

• Skip to primary navigation
• Skip to main content
• Skip to primary sidebar
• Skip to footer

Legal Templates

Home Business Assignment Agreement Trademark

Trademark Assignment Agreement Template

Use our trademark assignment agreement to transfer a trademark to a new owner.

Updated February 5, 2024 Reviewed by Brooke Davis

A trademark assignment agreement is a written document that transfers a legally recognized word, phrase, symbol, and design (the “trademark”) from the current owner (the “assignor”) to the future owner (the “assignee”).

What Is a Trademark Assignment Agreement?

When is a trademark assignment agreement necessary, consequences of not using a trademark assignment agreement, common situations for using a trademark assignment agreement, what to include in a trademark assignment agreement, changing ownership of federally registered trademarks, trademark assignment agreement sample.

A trademark assignment agreement allows the owner to properly transfer a business’s trademark to another party. Although intangible, a trademark is valuable because customers instantly associate certain qualities with a recognized brand.

The term trademark usually refers to both a trademark and a service mark [1] . Trademarks identify products or goods, while service marks identify services a company provides.

Remember that a  trading name is different from a trademark. A trading name is the actual name under which you conduct your company, while a trademark is some kind of symbol that represents your business.

In addition to words, phrases, or logos, a trademark can include a slogan, scent, logo shape, or a distinctive combination of musical notes. For example, even color can be a trademark if it acts purely as a symbol, according to the 1995 US Supreme Court case Qualitex Co. v. Jacobson Products Co., Inc. [2]

A trademark assignment agreement is commonly used to document a trademark or service mark transfer of ownership. A transfer of ownership is often necessary when another person or organization sells or purchases a product or company.

Two types of trademarks can be transferred:

Without a trademark assignment agreement, there is no clear record of who owns the symbol. Trademarks are often part of a company’s valuable assets and should be treated like property.

Some of the consequences of not using this agreement for both assignors and assignees include the following:

These are some common situations in which a trademark assignment agreement is important:

If you don’t want to transfer complete ownership of the mark, consider a trademark license agreement. A license grants the licensee temporary permission to use the trademark in a limited way. For example, a license allows you to use the trademark for a certain amount of time or a particular use or region of the country.

A simple trademark assignment agreement will identify the following essential elements:

• Effective Date: when the trademark is officially transferred to the new owner
• Trademark: a description of the legally recognized word, phrase, symbol, and/or design, including the official trademark number if the mark has been registered with the US Patent and Trademark Office (“USPTO”)
• Assignor: the current owner giving up ownership of the mark
• Assignee: the future owner giving money to obtain the mark
• Consideration: how much money the assignee is paying for the mark
• Warranties: a guarantee from the assignor that they’re the proper owner and have the authority to transfer the mark
• Signatures: the signatures of the assignor and the assignee
• Notary Public: the agreement should be notarized to maintain its validity

Ask yourself the following questions when creating a trademark assignment agreement:

• Who currently owns the trademark, and who will be the new owner
• What the trademark consists of and any associated registration numbers
• Where any future disputes will be handled (“Governing Law”)
• When the trademark is officially transferred to the new owner
• Why the assignor has the right to transfer the mark and associated goodwill
• How much will the assignee pay to be the new owner of the mark

If the trademark is federally registered, be sure to record the change of ownership with the USPTO Assignment Recordation Branch . A fee of $40 is required to record an assignment based on the USPTO Fee Schedule .

The USPTO Recordation Form Cover Sheet for Trademarks is strongly recommended when submitting your trademark. Additional questions about registering a trademark assignment with the USPTO may be answered by their  Transferring Ownership/Assignments FAQs .

View our sample trademark assignment agreement below so you can get an idea of what it looks like. When you’re ready to create your own, download it in PDF or Word format.

Legal Templates uses only high-quality sources, including peer-reviewed studies, to support the facts within our articles. Read our editorial guidelines to learn more about how we keep our content accurate, reliable and trustworthy.

• United States Patent and Trademark Office. Trademark, patent, or copyright. https://www.uspto.gov/trademarks/basics/trademark-patent-copyright
• United States Supreme Court. Qualitex Co. v. Jacobson Products Co., INC. https://scholar.google.com.tw/scholar_case?case=17905304466595211702&hl=en&as_sdt=6&as_vis=1&oi=scholarr&sa=X&ved=0ahUKEwjo5eKYnKbJAhXIoJQKHZvIDAsQgAMIGygAMAA
• Legal Resources
• Partner With Us
• Terms of Use
• Privacy Policy
• Do Not Sell My Personal Information

The document above is a sample. Please note that the language you see here may change depending on your answers to the document questionnaire.

Thank you for downloading!

How would you rate your free template?

Click on a star to rate

TRADE MARKS

A trade mark can help you differentiate your products and services from others. Read on to learn more about registering and managing your trade marks.

How to Register

Read on for more information on the registration process – including registration criteria, application options, forms and fees, as well as our service commitment.  Here is a quick example of the registration process. Your registration process may vary, depending on your application requirements or if there are opposition proceedings.

Before applying to register your trade mark, you should check if your trade mark fulfils the registration criteria. Here are four quick questions to guide you in determining the registrability of your trade mark:

• Be capable of being represented graphically
• Be distinctive and capable of distinguishing your goods or services from other traders
• Not consist entirely of signs which are descriptive of your goods or services (e.g. best, cheap)
• Not consist entirely of signs which are customary in current language or established practices of trade (e.g. the mark “Escalator” has become so well-accepted that it is used to describe power-driven staircases for carrying passengers, and can no longer be used to distinguish the trader selling such goods)
• Not be identical or confusingly similar to existing trade mark(s)

Before applying for a trade mark, you are encouraged to conduct a Similar Mark Search  on IPOS Digital Hub (our e-services portal) to ensure that there are no existing marks on our Register belonging to another party, that are identical or similar to yours.

If there is a similar or an identical mark found and this mark is protected for similar/identical goods and/or services as specified in your trade mark application, it is possible that your application will face an objection. In certain circumstances, you may be able to overcome the objection by providing us with a letter of consent from the other party.

For more information on refusal of a trade mark application due to conflict with another party’s earlier trade marks or rights, please refer to the Trade Marks Work Manual chapter on Relative Grounds for Refusal of Registration .

You are strongly encouraged to use IPOS’ Classification Database of pre-approved descriptions of goods and services  to search for the appropriate descriptions to avoid facing an objection against your trade mark application and reduce the processing time. Further, a class which contains entirely of descriptions from IPOS’ classification database will enjoy a discounted application fee of S$280 per class if the application is filed online via IPOS Digital Hub .

For more information on the classification of goods and services, please refer to our resources below:

Guide on Classification of Goods and Services

Trade Marks Work Manual chapter on Classification of Goods and Services

Circulars on Classification of Goods and Services

Pre-filing Checklist

• Check that your mark fulfils the trade mark registration criteria in Singapore.  
• Check that you have prepared the prerequisites for the submission of application form.
• Find out the required form and fee  for filing to register a trade mark in Singapore

From Application to Registration of a Trade Mark in Singapore 

• At this stage, your application will be examined to check if the application fulfils the requirements for registration. A filing date is accorded if essential filing requirements are met. If the mark is registrable, it will proceed to the publication stage.
• If the registration requirements are not met, you will receive an examination report. The examination report will state the grounds for objection and also the claimed goods/services that are being objected to. You will be required to respond to the report within 4 months (extendable via Form CM5 ) by carrying out one of the following actions where appropriate:
• make representations in writing or provide any necessary information/evidence;
• amend the application via Form TM27 , where relevant;
• apply to the Registrar in Form HC4  for a hearing.
• What happens if I do not respond within the deadline?
• If your application is filed before 26 May 2022, it will become treated as withdrawn.
• If your application is filed on or after 26 May 2022 AND

(i) If all of the claimed goods/services in your application are being objected, your entire application will become treated as withdrawn. (ii) If some of the claimed goods/services in your application are being objected, only the objected goods/services will be treated as withdrawn. The remaining non-objectionable goods/services in the application will proceed to the next processing stage.

• Should your application be accepted, your application will be published in the Trade Marks Journal  for public inspection for 2 months. Any interested party may oppose to the registration of your mark during this period.
• If there is no opposition, your application will proceed to registration.
• If your trade mark application faces an opposition, you will receive a copy of the notice of opposition from the opponent. The application process will be suspended pending the outcome of the opposition proceeding.
• If the outcome of the hearing is in favour of the opponent, the application will be refused. If it is in your favour, the application will proceed to registration.

If you wish to register a trade mark in countries outside of Singapore, you may either make separate applications by filing directly with the IP offices of the respective countries or file a single international application via the  Madrid Protocol . 

The Madrid Protocol is a treaty administered by the World Intellectual Property Organization (WIPO) which governs the international registration of trade marks. It allows applicants to enjoy the convenience of obtaining protection for a trade mark in several countries through one application with a single office, in one language, with one set of fees and in one currency.

Check that you have fulfilled the following criteria: 

• You have filed a Singapore application for the same trade mark.
• The countries in which you wish to protect your trade mark are  contracting parties  to the Madrid Protocol. You may wish to refer to WIPO’s website on  Madrid Members Profile  for more information on the practices, procedures and contact details of the respective contracting parties.
• You must satisfy at least one of the following entitlement criteria to file an international application from Singapore:
• The applicant is a national of Singapore (Applicable for Companies/individuals);
• The applicant is domiciled in Singapore;
• The applicant has a real and effective industrial or commercial establishment in Singapore. For more information, please refer to the  Guidelines for the Determination of a Real and Effective Industrial or Commercial Establishment .
• Find out the required  form and fees  for filing an international application via the Madrid Protocol.

Examination Process for an International Application

The steps below outline the stages following the filing of an application through IPOS to register a trade mark outside of Singapore.

• At this stage, IPOS will examine your international application to check that the requirements are complied with.
• If all is in order, IPOS will certify your application and forward it to World Intellectual Property Organization (WIPO) within 2 months from the application filing date. This secures the filing date as the date of your international registration. IPOS will notify you when the application has been forwarded to WIPO.
• If there are deficiencies in your application, you will be notified to remedy them within a stipulated deadline. If you fail to do so, IPOS may not be able to forward your application to WIPO within 2 months from your application filing date. Thus, you may fail to secure the filing date as the date of your international registration.
• At this stage, your application will be further examined by the International Bureau (IB) of the World Intellectual Property Organization (WIPO).

If all is in order, your application will be recorded in the International Register and published in the WIPO Gazette . WIPO will issue a certificate of the international registration to the Applicant and notify the designated contracting parties (DCPs). The certificate issued by WIPO informs that the international application conforms to the applicable requirements under Article 3 of the Madrid Protocol , and is not a confirmation that the mark is registered in the DCPs. 

If there are irregularities in your application, you will be notified by IB to address them within a stipulated deadline. If you fail to do so, your application will be deemed as abandoned. 

• At this stage, the designated contracting parties (DCPs) will conduct substantive examination of your international registration according to their domestic law, within 12 or 18 months from their receipt of your application from the International Bureau.
• If your international registration conforms to the requirements of the DCP(s) and did not face any opposition in the DCP(s), your trade mark will be granted protection in the DCP(s). Otherwise, you will receive a Provisional Refusal of Protection from the IP Office(s) of the DCP(s). The provisional refusal will state the grounds for refusal with a stipulated deadline for you to file a response or make amendments.

Examination Process for an International Registration/Subsequent Designation

• At this stage, IPOS will examine the application to check if the application fulfils the requirements for registration. If the mark is registrable, it will proceed to the publication stage.
• If the registration requirements are not met, you will receive a Provisional Refusal of Protection stating the grounds for refusal. You will be required to respond to the Refusal within 4 months (extendable via Form CM5 ) by carrying out one of the following actions where appropriate:

[Note: You are required to provide an authorised address for service in Singapore when you file a response via IPOS Digital Hub .]

(i) If all of your claimed goods/services are being objected, your international registration designated to Singapore will become treated as withdrawn.

(ii) If some of your claimed goods/services are being objected, only the objected goods/services will be treated as withdrawn. The remaining non-objectionable goods/services in the international registration designated to Singapore will proceed to the next processing stage.

• At this stage, your application will be published in the Trade Marks Journal  for public inspection for 2 months. Any interested party may oppose to the registration of your mark during this period.
• If there is no opposition, your application will proceed to registration. 
• If your application faces an opposition, you will receive a copy of the notice of opposition from the opponent. The application process will be suspended pending the outcome of the opposition proceeding.
• If the outcome of the hearing is in favour of the opponent, the application will be refused. If it is your favour, a grant of protection will be issued. 

Possible modes of filing for Form TM4:

Via the IPOS Go Mobile App

Via our e-services portal, IPOS Digital Hub

Your trade mark application to be submitted via Form TM4 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

A declaration of your use of or intention to use the mark

The relevant application fee (as indicated below). See our payment modes available here  

Your international application to be submitted via Form MM2(E) must be accompanied with:

Administrative fee of S$250 which is payable to IPOS. 

Fees payable to the World Intellectual Property Organization  (WIPO) (in Swiss francs). You may find out on the amount using the WIPO Fee Calculator , and refer to the  payment methods accepted by WIPO .

The fees payable to WIPO is dependent on:

whether the mark applied for is in black & white or in colour

the contracting party/parties designated

the number of classes of goods and/or services applied for

Timeliness of First Office Action 90% within  4 MONTHS  from application Adjudication of Cases Within  3 MONTHS  from date ready for full hearing Issuance of Grounds of Decision Within  3 MONTHS  from hearing Quality of Decision Assessed When accepting a mark for registration

Due to a continuing high volume of applications, the issuance of the first office action and registration of straightforward applications may take longer. IPOS is taking measures to manage the volume of applications and we seek your patience.

You may also like:

Acceleration Programmes

Accelerate the IP registration process and get your products and services to market faster

Search Similar Trade Marks

Check if there are marks that are similar or identical to yours

Classification Search

Search for appropriate descriptions of goods and/or services

Trade Mark FAQs

Refer to commonly asked questions

Managing Trade Marks

• Monitor Your Application
• Renew or Restore Your Trade Mark
• Enforce your Singapore Trade Mark
• Monetise Your IP
• Resolve Disputes
• Maintain Your Singapore Trade Mark
• Maintain Your International Registration Designated to Singapore
• Other Requests for Trade Mark Documents

Forms & Fees

Access documents required for filing

Find useful information on filing and examination practices

Circulars & Practice Directions

Read latest updates from IPOS