20 January 2022
Companion trade marks can be assigned to the same examiner
The trade mark legislation in Singapore does not define companion trade marks, but they are referred to in circulars of the Intellectual Property Office of Singapore (IPOS) as multiple trade marks filed by an applicant on the same day for identical or similar marks, or in connection with identical or similar goods and services.
A concern with the filing of companion trade marks is the risk of inconsistencies in the examination reports when the applications are assigned to separate examiners. This may lead, for instance, to the acceptance of the specification of a claimed good or service in relation to one application and its refusal in relation to a companion application. Addressing this concern, IPOS issued a first circular in 2013 allowing applicants to notify IPOS of the filing of companion trademark applications and request the assignments of the applications to the same examiner.
Trade Marks Circular 1/2022 dated 6 January 2022 goes on to specify that any request for assignment of companion trade mark applications to the same examiner must be submitted by way of an ad-hoc correspondence through IPOS online portal. The request is free and will be accepted on a “best effort basis”. It is noteworthy that the Circular does not specify a deadline by which the request should be submitted, although it seems advisable to submit it shortly after the trade mark filing numbers become available.
Nearly-identical companion trade marks can be filed as a series of marks in Singapore
The concepts of companion trade marks and series of trade marks are distinct, but series of marks may be relevant to applicants when filing nearly-identical companion trade mark applications in Singapore.
While applicants acquainted to trade mark legislations influenced by the English legal system may be familiar with them (besides Singapore, territories enabling the filing of series of marks include the likes of the United Kingdom, Hong Kong S.A.R., Australia, or New Zealand), series of marks are not available in most jurisdictions.
Series of marks allow an applicant to file in the same application “a number of trade marks which resemble each other as to their material particulars and which differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark” (Section 17(2) of the Trade Marks Act (cap 332, 2005 Rev. Ed.)). In other words, applicants can file as trade marks in one single application several variations of a sign, to the extent that all the marks in the series share the same distinctive features.
Applications for series of marks are frequent in Singapore as they provide applicants with greater flexibility and enable them to file slightly-differing samples of the same mark at the cost of a single application.
The list of acceptable variations between trade marks contained in a series is extensive and include among others the use of different conventional fonts, colours, positioning of elements, or spellings (such as American and British spellings or simplified and traditional Chinese characters).
Series of marks are also commonly used to protect cartoon characters: the samples can show the characters with various facial expressions and positions.
By way of a simple illustration, the 5 marks below would constitute a valid series in Singapore:
Flint & Battery LLC
Flint & Battery LLC
Flint & Battery LLC
Flint and Battery LLC
FLINT & BATTERY LLC
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We hope this update is useful and you have found it of benefit to you. Please contact our team at Flint & Battery LLC (website: www.flintbattery.com) if you wish to consult us. Flint & Battery LLC is an international law practice licensed by and registered with the Legal Services Regulatory Authority, and is the Singapore office of the Cicero international law firms. #intellectualpropertylaw#singaporelaw#trademarkregistration#trademarklaw#singapore