- Background
A Dutch SME is developing nature-inspired textiles and technologies that enable designers and companies to develop and scale cutting-edge bio-based products. Through intensive R&D, the company has created mycelium-based material technology offering a novel solution – a new type of leather – to lower the fashion industry’s environmental footprint (known for intensively consuming resources and generating waste). In the process of internationalisation to South-East Asia (SEA), the company tried to protect its trademark in Singapore using the WIPO (World Intellectual Property Organization) Madrid System. i.e. the international trademark route. However, the SME was surprised to receive an official notification from the IP Office of Singapore (IPOS) stating its trademark could not be registered. The CEO of the SME reached out to the SEA IP SME Helpdesk (SEA HD) via email for clarification and support as it was key for them to secure their rights locally in Singapore.
- IP issue raised
Having received an official notification from IPOS (Letter of Provisional Refusal), the SME wanted to understand the content, the risks for their trademark, and how to resolve this new situation for them.
- Results & actions taken
First, the IP Business Advisor (IPBA) advised verifying the authenticity of the notification, as scam notifications are frequent, and offered to review the formal document for verification. The IPBA listed the key information contained in an official Letter of Provisional Refusal, such as the basic data of the trademark and the deadline for filing a response to the refusal. The IPBA highlighted the importance of docketing that date to avoid missing out on the deadline.
Following the examination phase of international trademark registration, it is very common for national offices to issue notifications of refusals (also called Office Actions) based on the way goods or services are mentioned in the classes of goods/services applied for. The IPBA explained how this situation could be easily overcome by highlighting important elements of the notification:
- The IPOS considered that the goods for which the trademark was going to be registered were imprecise and incorrectly classified under class 25 (International Nice Classification of goods and services). Based on that, the Office could not accept the trademark as filed and required the applicant to amend the goods at issue.
- Assuming the veracity of the notification, the IPBA addressed the cited grounds of refusal. Although the SME had used the 2024 version of the Nice Classification when indicating the goods for the application, this system is annually updated and therefore, that version may not correspond to the one currently in force. More importantly, the IPBA informed the SME that national IP offices retain the authority to examine the application according to their own practices and classifications, requiring the application to follow their precise wording.
- The IPBA then provided some examples on how to overcome the refusal by removing or modifying the goods at issue or transferring them to a different class, following IPOS’ criteria. The SME was also informed that these changes would only apply for Singapore (one country designation) and would not affect the scope of protection of the international trademark in other countries.
- To reply to the Office Action, the IPOS required an Address of Service. The IPBA explained that this is a common issue in SEA yet also a standard practice when replying to an Office Action. Unless the applicant has a local address in such country (i.e. registered office in Singapore), they are required to appoint a local IP agent to reply to the Office Action. This was particularly relevant in this case, as the SME did not have an office with a registered address in Singapore and needed to swiftly appoint a local representative. To ease the work of the SME, the IPBA shared a list of the SEA HD External IP Experts including some based in Singapore.
Result: Having duly received advice from the IPBA, the owner of the SME contacted several local IP experts to handle the Office Action, bearing in mind the need to comply with the deadline and provide the Address of Service. This IP expert would also help to follow up the registration procedure of their international trademark in Singapore and serve as the intermediary with IPOS until getting the registration confirmation.
- Lessons Learnt:
Even though the Madrid System is a convenient and recommended route for registering trademarks worldwide, any designation of a country means that the corresponding national IP office will still run its own examination and will also follow its own practice. As a result, examination outcomes vary as some IP offices have a stricter approach than others. When receiving notification of provisional refusal or any official communication from an IP office including a deadline, SMEs should docket and monitor such deadline. A few countries may allow an extension (or several extensions) of time to reply but this should be discussed with your local IP expert.
For an international trademark, it is important for the SME to familiarise itself with the various stages of the examination procedure (international phase first, followed by national phases where more issues may arise for your trademark) and act promptly to avoid your trademark to be partially or totally refused registration in a country, i.e. due to lack of response or by simply missing a deadline.
An Address for Service is often required but frequently overlooked by SMEs filing a trademark abroad – notably for SEA countries:
- For the national route, this requirement is met by filing an application via a legal representative (from your company if you have a local office or from a local law firm).
- For the international route, a local legal representative is usually needed to handle a notification of provisional refusal issued by the local IP office (provided your company does not have any local office with legal representative).
Acting via local IP agents before an IP office is not only useful for complying with the local legislation and practice, but also to receive further expertise based on the complexity of the case, as well as to monitor the application and docket the corresponding deadlines.
Usually, an official notification from an IP office requires an applicant to react swiftly by contacting and appointing a local IP expert in due time. Having a local IP expert in mind already can help you to handle any issue faster or you may rely on your usual European IP lawyer to manage your IP portfolio internationally.