Maintaining Trade Marks

Maintain Your Singapore Trade Mark

If you have submitted a trade mark application in Singapore or have a Singapore-registered trade mark, learn more about the possible remedies, amendments and registrable transactions available for your application or registration.

Change Details of Applicant, Proprietor, Agent or Other Persons

Some possible scenarios involving a change in details of the applicant, proprietor, agent or other persons are shown below.

Different forms may be required based on the type of change(s) and whether there is a change in business constitution or legal entity. The determination of a change in business constitution or legal entity is dependent on the laws of the country where the proprietor company was incorporated.

Form required:	Form CM1	Form CM2	Form CM8	Form CM4
For change of details in relation to:	Agent	Any person, such as Applicant Proprietor Agent Other Interested Parties (e.g., Grantee of a security interest, Licensee etc) Initiator in a contentious proceeding	Applicant Proprietor	Any person, such as Applicant Proprietor Agent Other Interested Parties (e.g., Grantee of a security interest, Licensee etc) Initiator in a contentious proceeding
Possible scenarios:	Appointment of an agent Notice of intention to cease to act as an agent Change (not correction) of an agent This includes the scenario where there is a change in legal entity of an agent (e.g. from ABC LLP to ABC Pte Ltd)	Change (not correction) in: Name; Address; Singapore Address for Service; Sole Proprietor Name or Partners’ Names; Country/Region/State of Incorporation; Country/Region of Residency; Country/Region of Citizenship; or Other Particulars, strictly where there is no change in the legal entity of the applicant / proprietor / agent / other interested parties on record. Change in the name of an applicant/proprietor on record who no longer trades as his sole proprietorship, but in his own name (e.g. Paul Tan trading in the name of Paul Tan Chicken Rice to be updated as Paul Tan).	Transfer of ownership of a trade mark application or registration (e.g. from ABC Pte Ltd to XYZ Pte Ltd) Change (not correction) in legal entity of the applicant or proprietor (e.g. from ABC LLP to ABC Pte Ltd) Addition or removal of partners in a partnership (e.g. from “Jonathan Low, Timothy Tan” to “Jonathan Low”) Merger and division (e.g. Merger of “Kelly Corporation” and “ABC Corporation” to “Kelly Corporation”) Reincorporation of business entity in a new country, or in another state of the United States of America (e.g. from ABC Ltd in Singapore to ABD Ltd in France, or from ABC Ltd in Delaware, USA to become ABC Ltd in California, USA)	Correction in the ownership of a trade mark application or registration (e.g. details of the applicant was inserted wrongly at the point of filing – applicant should have been DEF Pte Ltd instead of FGH Pte Ltd Correction in relation to a recorded change of ownership Correction of a person’s particulars relating to: Name; Address; Singapore Address for Service; Sole Proprietor Name or Partners’ Names; Country/Region/State of Incorporation; Country/Region of Residency; Country/Region of Citizenship; or Other Particulars
General note(s)	Notice of intention to cease to act as an agent: An agent who intends to cease to act on behalf of the principal for any application or proceedings before IPOS, must provide the following in Form CM1: a notice of such intention; the party’s latest address (including any email address) on the agent’s records; a statement that the agent has given reasonable notice to the party of such intention, and has informed the principal of the consequences of not having a Singapore address for service in Singapore in respect of the application or proceeding in question. In relation to point (iii), the agent should have served a notice to their principal of: the intention to cease to act on their behalf; the need to furnish a new Singapore address for service; and the consequences of not furnishing it. If a new Singapore address for service is not furnished in the Form CM1 above, the Registrar will issue a notice to the principal to request a new address for service. The relevant consequences will apply if no address for service is provided within three months after the date of the Registrar’s notice.	For changes pertaining to a sole proprietor’s name or partners’ names: If the change pertains to the addition or removal of partners arising from an assignment, please file Form CM8 to effect the assignment. If the change pertains to the addition or removal of partners arising from a clerical error or mistake in the details submitted to IPOS, please file Form CM4 to correct the error or mistake.	To request a correction of error(s) in a Form CM8 (regardless of whether it is pending processing by the Registrar, or has been processed by the Registrar and recorded on the Register), please file Form CM4. Instead of Form CM8, an Assent by Personal Representatives may be required for scenarios involving the death of a co-proprietor of a trade mark or the death of a sole proprietor. An assent is made by the personal representative(s) to a person entitled under the deceased person’s will or intestacy. For more information on the assignment or transfer of trade mark ownership, please refer to the Trade Marks Work Manual Chapter on Assignment.	For an application to correct a recorded change in ownership: In the scenario where the trade mark applicant or proprietor wishes to correct a recorded change in ownership (e.g., the Form CM8 should have been filed to transfer the trade mark from ABC Pte Ltd to XYZ Pte Ltd, but was wrongly filed to transfer to DEF Pte Ltd), a Form CM4 will be required to nullify the relevant recorded change in ownership details. A fresh application to transfer the ownership to the rightful applicant/proprietor may then be lodged for the Registrar’s re-examination and processing. Please also refer to Trade Marks Circular No. 3/2003 (dated 1 February 2008). For an application to correct the name or other particulars of an applicant or a proprietor: The Registrar may publish such application for opposition purposes before it is approved. In deciding whether to exercise the discretion to publish the proposed correction, the Registrar will consider factors such as whether the erroneous information to be corrected was publicly available on the Register, and if so, the duration that the information has been on the Register, to decide whether the interests of third parties may be affected. Upon publication of the proposed correction, any person can file a notice of opposition against the proposed correction within two months.

Amend Your Trade Mark Application or Registration

Form TM27 should be filed with IPOS to amend a trade mark application, or alter or rectify a registration.

Details in a trade mark application or registration where Form TM27 may be filed to amend include:

Goods and/or services

Priority claim
Mark representation
Number of series marks
Mark type
Claims to non-conventional mark type
Disclaimer or limitation

Form TM27 cannot be used for the purposes of a change/correction of name, address or address for service and the scenarios covered by Form CM1, Form CM2 and Form CM4.

Form CM4 should be filed to request a correction of error(s) in a form other than Form TM4. For example, Form CM4 is to be used to correct an error in forms such as Form CM7 or Form CM8, regardless of whether that form is currently being processed or has already been processed by the Registrar and recorded on the Register.

General Note(s) on Amendment of Trade Mark Application / Registration:

In general, an amendment to any information in a Form TM4 is allowed only if it does not substantially affect the identity of the mark representation or broaden the scope of protection of the trade mark. In the case of a rectification of a registration, the rectification may not be made in respect of a matter affecting the validity of the registration of the trade mark.
One allowable exception relates to the alteration to the mark representation of a registered mark, where the alteration of a mark is limited to that of the name/address of the proprietor appearing in the mark and that the alteration does not substantially affect the mark identity. If the Registrar finds the application to alter the mark representation acceptable, the Registrar will publish the mark representation as altered in the Trade Marks Journal for two months for opposition purposes.
An application to amend or rectify the details of a priority claim may be published by the Registrar for opposition purposes before it is approved. In deciding whether to exercise the discretion to publish the proposed correction, the Registrar will consider factors such as whether the erroneous information to be corrected was publicly available on the Register, and if so, the duration that the information has been on the Register, to decide whether the interests of third parties may be affected. Upon publication of the proposed correction, any person can file a notice of opposition against the proposed correction within two months.

Request for Extension of Time to Respond to IPOS

Form CM5 should be filed with IPOS to request for extension of time in relation to a deficiency/objection letter.

General Note(s) on Extension of Time

Requests for extension of time should be filed by the deadline to respond to IPOS.
No fee is applicable for the first and second requests for extension of time, however, a fee is required for the third and subsequent requests for extension of time. The third and subsequent requests for extension of time must be accompanied by reason(s) and are subject to the Registry’s approval.
If the same reason is repeatedly used to request for extension of time, supporting documents may be required to justify the reason provided.
Please note that a request for extension of time to renew or restore a trade mark registration is not allowed under Rule 77(6)(e) and (f) of the Trade Marks Rules.

Request for Continued Processing of Application

When an applicant fails to respond to IPOS’ examination report within the stipulated deadline, the status of the TM4 application or the objected goods/services (as the case may be) will be regarded as “Treated as Withdrawn (Continued Processing Possible)”.

When this happens, the applicant has another two months to request via Form CM13 for the continued processing of the TM4 application or the objected goods/services (as the case may be). The request for continued processing must be accompanied by a response to IPOS’ examination report.

What happens if no request for continued processing is filed within time:

(i) If the application is filed before 26 May 2022, it will become treated as withdrawn.

(ii) If the application is filed on or after 26 May 2022 AND

a. If all of the claimed goods/services in the application are being objected, the entire application will become treated as withdrawn and can no longer proceed to registration.

b. If some of the claimed goods/services in the application are being objected, only the objected goods/services will be treated as withdrawn and can no longer proceed to registration. The remaining non-objectionable goods/services in the application will proceed to the next processing stage.

Note: For application forms whose statuses are regarded as “Treated as Withdrawn (Reinstatable)” before 26 May 2022, they can be reinstated via Form CM13 within a period of six months. The request for reinstatement must be accompanied by a response to the objection/deficiency letter issued under the relevant application form.

File a Statutory Declaration

A statutory declaration may be required:

To file evidence of distinctiveness acquired through use.
- Refer to our Trade Marks Work Manual Chapter on Evidence of Distinctiveness Acquired Through Use for more information.

To file evidence to show honest concurrent use of your trade mark
- Refer to our Trade Marks Work Manual Chapter on Relative Grounds for Refusal of Registration for more information.

A statutory declaration is a declaration sworn before a Commissioner for Oaths or a Notary Public. You may arrange an appointment with our Commissioner of Oaths before submission of your statutory declaration to IPOS*.

For guidance on how a statutory declaration should be presented, please refer to our Sample Statutory Declaration to File Evidence of Use.

File a Letter of Consent

A letter of consent may be required:

To overcome a citation by obtaining consent from the cited mark applicant/proprietor to the registration and use of the mark.
- Refer to our Trade Marks Work Manual Chapter on Relative Grounds for Refusal of Registration for more information.

To overcome an objection raised by obtaining consent to the registration and use of the mark from (i) a famous personality or his/her legal representative or (ii) the owner or developer of a famous building.
- Refer to our Trade Marks Work Manual Chapter on Names and Representation of Famous People, Buildings, etc. for more information.

To overcome an objection raised by obtaining consent to the registration and use of the mark from the relevant authorities.
- Refer to our Trade Marks Work Manual Chapter on Other Grounds for Refusal of Registration for more information.

For guidance on how a letter of consent should be presented, please refer to the Sample Letter of Consent.

Divide Your Trade Mark Application

An applicant can request to divide the goods and/or services in his trade mark application (“parent mark”) into separate applications (“child marks”). This procedure may be useful to an applicant whose application faces an objection from IPOS or opposition from third parties. The acceptable goods and/or services could proceed to publication and/or registration without delay, while the objectionable goods and/or services in the application could be divided out and dealt with separately.

Form TM8 should be filed with IPOS to divide an application for registration.

Scenario for Illustration Purposes

Trade mark application no. 40202112345A was filed in Classes 1 and 2. An objection has been raised only for all the goods in Class 1. trade-mark-application

The applicant may consider filing Form TM8 with the relevant fee to divide the application into two (i.e. Class 1 remains in one of the applications, and Class 2 will be divided out into another application). Upon the Registry’s approval of the division, each child mark on IPOS' Register will bear a similar IPOS application number as the parent mark, except that they will each have a suffix added (e.g. 40202112345A-01 and 40202112345A-02).

The mark status of the parent mark (40202112345A) will updated as “Divided”. The mark status of 2 child marks (40202112345A-01 and 40202112345A-02) will be reflected as “Pending (Under Examination)”.

Trade mark application no. 40202112345A-02, where only Class 2 is claimed, will be accepted for publication since there is no outstanding objection against the application. The applicant will still have to overcome the objection in trade mark application no. 40202112345A-01, where only Class 1 is claimed, as Form TM8 is not considered to be a response to our objection letter and the objection remains outstanding.

General Note(s) on Division of a Trade Mark Application

Division of a trade mark application may be made at any time before registration. Once a trade mark is registered, it cannot be divided.
A request for division would not be applicable to divide out the objected series mark(s) in bid to overcome a series mark objection.
The goods and/or services requested to be divided out must still fall within the scope of the goods and/or services claimed in the parent mark.

Withdraw Your Trade Mark Application

Form CM9 should be filed with IPOS to withdraw a trade mark application.

After the withdrawal of a trade mark application, the mark and/or class status(es) will be updated as “Withdrawn”. A mark or class that has been withdrawn cannot be requested for continued processing, reinstatement or restoration.

Cancel Your Trade Mark Registration

Form CM3 should be filed with IPOS to cancel or partially cancel a registered trade mark.

The proprietor should declare in Form CM3 that there is no pending Court proceeding and all parties affected by the cancellation request have been notified of the intended cancellation 3 months prior to the filing of cancellation, and that there was no objection to the cancellation.

After the cancellation of a trade mark registration, the mark and/or class status(es) may be updated as “Cancelled”. A trade mark cannot be reinstated or restored once it has been cancelled.

File or Amend Regulations Governing the Use of a Collective Mark or Certification Mark

A collective mark serves as a badge of origin to distinguish goods or services of members of a particular association from those who are not members of the association. Meanwhile, a certification mark serves as a badge of quality, which is not used by the proprietor of the mark, but by his authorized users, as a guarantee to the relevant public that the goods or services have been certified to possess a particular characteristic or contain certain qualities.

Applicants seeking registration of a collective mark or certification mark must file a copy of the regulations governing the use of the collective mark or certification mark with IPOS within 9 months after the date of application of the collective mark or certification mark.

Form TM10 should be submitted for the filing or amendment of regulations governing the use of a collective mark or certification mark.

For more information on content requirements of the regulations, please refer to the Trade Marks Work Manual Chapters on Collective Marks and Certification Marks.

A trade mark proprietor can give permission to another party to use his trade mark. This can be done by granting that person a licence over the trade mark.

Although the grant of a licence is not invalidated due to failure to record the licence with IPOS, it is advisable for licensees to record their interest to ensure that third parties are aware of the existence of the licence. Recording the licence also serves as prima facie evidence of the transaction.

Form CM6 should be filed with IPOS to register, amend or terminate a licence.

General Note(s) on Licence:

Correct error(s) in Form CM6 via Form CM4.
Instead of Form CM6, an Assent by Personal Representatives may be required for scenarios involving a person entitled under the deceased person’s will or intestacy.
For more information, please refer to the Trade Marks Work Manual Chapter on Licences.

Form CM7 should be filed with IPOS to register, amend or terminate a security interest.

General Note(s) on Security Interest

Correct error(s) in Form CM7 via Form CM4.
Instead of Form CM7, an Assent by Personal Representatives may be required for scenarios involving a person entitled under the deceased person’s will or intestacy.

Maintain Your International Registration Designated to Singapore

Requests to be presented to IPOS

The following requests may be presented to IPOS for an international registration designated to Singapore.

Change Details of Agent and Holder

Apart from the scenarios listed in the table below, all other scenarios have to be effected via requests directly presented to WIPO.

Form required:	Form CM1	Form CM2	Form CM4
For change of details in relation to:	Agent	Holder	Holder
Possible scenarios:	Appointment of an agent Notice of intention to cease to act as an agent Change of an agent This includes the scenario where there is a change in legal entity of an agent (e.g. from ABC LLP to ABC Pte Ltd)	Change (not correction) in Singapore Address for Service	Correction of Singapore Address for Service
General note(s)	Notice of intention to cease to act as an agent: An agent who intends to cease to act on behalf of the principal for an application or registration, should serve a notice to the principal of: the intention to cease to act on their behalf; the need to furnish a new Singapore address for service; and the consequences of not furnishing it.	-	-

Request for Extension of Time to Respond to IPOS

Form CM5 should be filed with IPOS to request an extension of time to respond to a Provisional Refusal of Protection or examination report issued in respect of an international registration designated to Singapore.

The general notes on Extension of Time for Singapore Trade Marks also apply to international registrations designated to Singapore.

Request for Continued Processing of International Registration Designated to Singapore

When a holder fails to respond to IPOS’ Provisional Refusal of Protection or examination report within the stipulated deadline, the status of the international registration designated to Singapore or the objected goods/services (as the case may be) will be regarded as “Treated as Withdrawn (Continued Processing Possible)”.

When this happens, the holder has another two months to request via Form CM13 the continued processing of the international registration designated to Singapore or the objected goods/services (as the case may be). The request for continued processing must be accompanied by a response to IPOS’ Provisional Refusal of Protection or examination report.

What happens if no request for continued processing is filed within time:

If all of the claimed goods/services are being objected, the entire international registration designated to Singapore will become treated as withdrawn and can no longer be protected.
If some of the claimed goods/services are being objected, only the objected goods/services will be treated as withdrawn and can no longer be protected. The remaining non-objectionable goods/services in the international registration designated to Singapore will proceed to the next processing stage.

Note: For international registrations or the objectionable goods/services (as the case may be) whose statuses are regarded as “Treated as Withdrawn (Reinstatable)” before 26 May 2022, they can be reinstated via Form CM13 within a period of six months. The request for reinstatement must be accompanied by a response to the Provisional Refusal of Protection or examination report.

File a Statutory Declaration

The procedures on the filing of a statutory declaration for Singapore Trade Marks also apply to international registrations designated to Singapore.

File a Letter of Consent

The procedures on the filing of a letter of consent for Singapore Trade Marks also apply to international registrations designated to Singapore.

Withdraw Your International Registration Designated to Singapore

Form CM9 may be filed with IPOS to withdraw an international registration designated to Singapore, provided that the entire international registration and/or the relevant class(es) are the subject of an objection in the Provisional Refusal of Protection issued by IPOS. Otherwise, the holder should present the relevant form to the International Bureau of WIPO to request the limitation, cancellation or renunciation (as the case may be) of the international registration.

After the withdrawal of an international registration designated to Singapore, the mark and/or class statuses (as the case may be) will be updated as “Withdrawn”. A mark or class that has been withdrawn cannot be requested for continued processing, reinstatement or restoration.

File or Amend Regulations Governing the Use of a Collective Mark or Certification Mark

Holders seeking registration of a collective mark or certification mark must file a copy of the regulations governing the use of the collective mark or certification mark within 9 months after the Date of Notification of International Registration or Subsequent Designation (as the case may be).

Form TM10 should be submitted for the filing or amendment of regulations governing the use of a collective mark or certification mark.

For more information on content requirements of the regulations, please refer to the Trade Marks Work Manual Chapters on Collective Marks and Certification Marks.

Licences may be recorded against an international registration. However, as Singapore has declared that the recording of licences in the International Register has no effect in Singapore, a holder of an international registration wishing to record a licence of an international registration designating Singapore has to file Form CM6 with IPOS, instead of Form MM13 to the World Intellectual Property Organization (WIPO).

Transform an International Registration into a National Application

Where the international registration (IR) designating Singapore is cancelled whether for all or some of the goods and/or services at the request of the Office of Origin, the IR holder is given the possibility to obtain protection of his mark in Singapore by transforming it into a national application within 3 months from the date of cancellation of the IR. This procedure may be useful to a holder as the filing date of the IR will be preserved, and the transformed national application will be treated as though it had been filed on the date of the IR or the date of the subsequent designation (SD). The transformed national application will also enjoy the priority which was enjoyed by the IR.

A holder of an IR designating Singapore may file Form MP1 with IPOS to request for a transformation.

For a successful transformation, the following conditions must be fulfilled:

Form MP1 is filed within 3 months from the date on which the IR was cancelled.
Goods and/or services requested to be transformed must be identical or narrower in scope than the cancelled goods and/or services.
The cancellation request is at the request of the holder’s Office of Origin (and not at the request of the holder).

For more information on transformation of an IR, please refer to the Trade Marks Work Manual Chapter on International Registrations / Subsequent Designations Designating Singapore.

Replacement of Registered Trade Mark with International Registration

If the holder of an international registration (IR) designating Singapore already owns an existing Singapore national registration, the holder has the option to replace the national registration with the IR if the conditions below are fulfilled.

Both the national registration and the IR are in respect of the same mark;
Both the national registration and the IR are under the same holder;
All the goods and/or services listed in the national registration are also listed in the IR. While the IR need not have an identical list of goods and services, the IR list cannot be narrower in scope than the national registration; and
The IR is extended protection in Singapore on a date later than the date of the national registration.

The holder may file Form MP2 with IPOS to replace the registered trade mark with an international registration. IPOS will record the replacement on its Register and also notify the World Intellectual Property Organization (WIPO) of the replacement request.

As replacement is deemed to take place automatically as long as the above conditions are met, there is, technically, no action required by the holder. However, such replacement will only be recorded by a particular designated country if a request to record is made. Such a recordal is necessary for the information of the third parties. As such, the holder is advised to request IPOS to record on the national Register the fact that the national registration has been replaced by the IR.

For more information on replacement of a registered trade mark, please refer to the Trade Marks Work Manual Chapter on International Registrations / Subsequent Designations Designating Singapore.

Division of an International Registration

A holder of an international registration (IR) designating Singapore can request to divide the goods and/or services in an IR (“principal registration”) into 2 separate IRs (“divisional registrations”). This procedure may be useful to a holder whose IR faces a partial refusal from IPOS. The acceptable good and/or services could proceed to publication and/or registration without delay, while the objectionable goods and/or services in the IR could be divided out and dealt with separately.

Form MM22(E) should be filed with IPOS to divide an IR designating Singapore.

After the request has been examined by IPOS, it will be forwarded to the International Bureau of the World Intellectual Property Organization (WIPO) for further examination. If the request meets the formal requirements set out by WIPO, WIPO will create a divisional registration (with a new IR number) in respect of the goods and/or services to be divided out, and issue an official notification to IPOS and the holder. Upon receipt of the notification, IPOS shall proceed to record the division and notify the holder accordingly.
divisional_registration

One divisional registration will contain the goods/services which the holder requests to remain, under the IR number of the principal registration prior to division.
The other divisional registration will contain the goods/services which the holder has requested to be divided out, under a new IR number.
Each divisional registration on IPOS’ Register will bear a similar IPOS application number as the principal registration, except that they will each have a suffix added (e.g. “40202112345A-01”, “40202112345A-02”).

For more information on the requirements and effects of the division of IRs, please refer to WIPO’s website here.

General Note(s) on Division of IRs

The principal registration must not be a registered trade mark at the point of filing the request.
The goods and/or services requested to be divided out must still fall within the scope of the goods and/or services claimed in the principal registration.

Merger of an International Registration

IPOS accepts requests to merge divisional international registrations (IR) designating Singapore, regardless of whether they have proceeded to registration in Singapore or not. This procedure may be useful to a holder who has previously divided his IR in an attempt to overcome a partial provisional refusal issued by IPOS. The divisional registrations could be merged into the principal registration that they were divided from, thereby enabling the holder to continue managing them under the same IR number as reflected on the International Register of the World Intellectual Property Organization (WIPO).

Form MM24(E) should be filed with IPOS to merge divisional IRs designating Singapore.

After the request has been examined by IPOS, it will be forwarded to the International Bureau of WIPO for further examination. If the request meets the formality requirements set out by WIPO, WIPO will issue a notification to IPOS and the holder of the IR. Upon receipt of the notification, IPOS shall proceed to amend the IR number of the divisional registration back to the original IR number of the principal registration and notify the holder accordingly.

tm_international-merger

Following the completion of the merger recordal process, the divisional IRs will bear the same IR number but will continue to exist under separate IPOS application numbers on IPOS’ Register.
Any existing deadlines applicable to the divisional registrations will continue to be effective after the merger is recorded by IPOS.

For more information on the requirements and effects of the merger of divisional IRs, please refer to WIPO’s website here.

General Note(s) on Merger of IRs

The divisional registrations can only be merged into the principal registration on the International Register.

Requests to be presented to WIPO

Apart from the requests to be presented to IPOS listed above, all other requests for recordals in relation to international registrations designating Singapore filed under the Madrid Protocol, should be presented to WIPO.

Please refer to WIPO’s website on How to Manage Your International Registration for the possible IR transactions, as well as the Forms Required for the International Registration of a Mark.

You may also wish to refer to our Trade Marks Work Manual Chapter on International Registrations / Subsequent Designations Designating Singapore.

TRADE MARKS