The Importance of a Trade Mark Clearance Search
(Written by: Priti Kaur Saini)
Trade marks are “badges of origin” for a business. They are valuable intellectual property (IP) assets, being signs such as words, names, devices and logos which serve to identify the source or origin of goods or services, thereby distinguishing the goods or services of one trader from those of another.
In Singapore, the Intellectual Property Office of Singapore (IPOS) is the national authority responsible for the registration and administration of Intellectual Property rights. An application for trade mark registration filed with IPOS generally paves the way for the possibility to enjoy an exclusive right to use the mark, as well as the right to prevent others from using a similar or identical mark without the owner’s consent, both subject to the scope of products (goods) and/or services claimed for protection in the application. However, before a trade mark can be registered successfully, among other things, IPOS conducts a search for relevant prior conflicting trade marks in its system to assess whether registration of the application mark should be allowed. A potential reason for IPOS to object to registration of a trademark application is the existence of prior conflicting mark rights which IPOS considers as giving rise to a “likelihood of confusion” between the application mark and the prior mark.
A preliminary trade mark clearance search on the Singapore Trade Marks Register serves to study and assess the availability of a proposed mark by uncovering any barriers to registration of the mark, such as assessing the risk of the application mark being considered confusing similar to any relevant prior marks in the register.
In the event that use of the mark is commenced without a proper search, the user of the mark may possibly be infringing someone else’s rights in a prior identical or similar mark. This opens up the possibility of such a third party asserting trade mark rights against the infringer by sending a cease-and-desist letter to discontinue the usage of the infringing trade mark, or even by filing a trade mark infringement lawsuit.
It may however come as a surprise to many that it is not mandatory in Singapore to register for a trade mark before it can be used. Goods and services can be marketed to consumers under a particular adopted mark without any trade mark registration. This, however, does not mean that the user of a mark should not conduct a trade mark search prior to application. In fact, unregistered marks are particularly vulnerable to the rude surprise of a trade mark infringement attack. Firstly, it may not cross the mind of the business owner using the unregistered mark that it is infringing another party’s registered trade mark. Secondly, as mentioned above, there are marks out there which are used without registration, and such marks may acquire unregistered trade mark rights over time under the “common law”, thus attracting the additional risk of what is known as a “passing off” action. A comprehensive trade mark search prior to use and/or registration of the mark would operate as a due diligence exercise to help the business minimise or manage risks.
It takes time and effort to create and register a mark. A proper trade mark clearance search conducted by an IP professional would help brand owners to avoid potential registration obstacles and legal issues before they arise, thereby sparing them the agony of expending time, money and resources on the costly re-branding of their marks.