To TM or not to TM..?

We were involved in a legal dispute that lasted almost 2 years. It was a last ditch attempt to protect our “The Patissier” trade mark, which we had registered since 2005, against infringement after all non-legal avenues were exhausted. This was very much a “David vs Goliath” contest, given that the counterparty is a large company backed by a Singapore-listed conglomerate.  Although we eventually won the case on all counts, the whole episode had left a somewhat sour taste in our mouths. And we wish to highlight our experience as a cautionary tale to small businesses (like ours) who are contemplating using trade mark as a form of intellectual property protection in Singapore.

1. Successful registration of a trade mark with IPOS (i.e. the Stat Board that administers intellectual property laws in Singapore) does not automatically protect owners against infringement. IPOS will accept all applications for trade mark registration as a first basis. Although all new trade mark submissions are supposedly vetted by IPOS to check if the mark is registrable (which should include ensuring that the new mark does not infringe on other existing marks), such examination is rather subjective. Or at least in our experience.                                                                                                                                                                                
2. Once a new trade mark is deemed acceptable for registration by IPOS, it is put up for public inspection in the IPOS Trademark Journal for a period of 2 months. And it is up to existing trade mark owners to vet and raise an objection if they deem that the new mark may have infringed on their existing marks. If an existing trade mark owner is not aware of this self-policing policy and no objection is raised, the new mark will be granted IPOS approval (and be registered) after the inspection period.                                                                                                                                                                                                                                                                    
3. Once the new (infringing) trade mark is deemed acceptable and put up for public inspection by IPOS, the only recourse for existing trade mark owner is to raise an objection via legal redress.                                                                                                                                                                                                                                                                                      
4. Any trade mark dispute that involves lawyers is going to be both costly and energy draining. This is especially if you are a small entity up against a much bigger counterparty. And the opposing counsel may try, as part of their defence strategy, to raise a counter dispute; in our case, by trying to invalidate our existing trade mark. This means fighting legal battles on multiple fronts, which will further compound the resources/costs involved.                                                                                                                                                   
5. Even if the legal case is eventually ruled fully in your favor, you will still have to shoulder a substantial portion of the legal cost incurred. The judge (or hearing officer) may award you some of the cost, but it will not be 100%. And it is almost impossible to seek damages in such trade mark dispute, unless you have rock solid evidence to prove that you have suffered significant financial loss as a result of the infringement.

So why will anyone even want to register their trade mark? In our humble opinion, you will want to do this under two circumstances:

•      If you are a large corporation with an established brand, financial muscle and a fleet of lawyers on retainer. These companies tend to be very successful in exacting damages for infringement on their brand. Just one letter from their lawyers is sufficient intimidation.                                                                                                                          
•       If you are a small business outfit like us, to protect the rights of continual use of your brand. So it is more to ensure that you do not lose your brand. But do not think for a moment that once your trade mark is registered with IPOS, you may now sleep soundly at night because you are automatically protected from possible infringement/invalidation by a new trade mark registration. And be prepared to invest significant resources (both financial and otherwise) to police/defend your trade mark.