• TM Registration

Are trademarks first come first serve


Before the trademark laws were established, established companies were protected by common law based on their influence, years of operation, and recognition of the public. This idea is still applicable even to unregistered trademarks as long as they can prove that they are the first to use the brand or logo, however, it does not guarantee that your company will be recognized as the exclusive owner if the other party has registered the trademark. The burden usually falls on the party that owns the unregistered trademark to prove that it is not a cop or imitation.


First to File versus First to Use

When it comes to cases like these, the issue usually comes down to this statement: first to file versus first to use. One of the most controversial cases involves the trademarking of the word “superhero” by both DC Comics and Marvel. Both claim that they own the words, but both are granted the rights to use the same words. Other parties that want to use the term to publish their works, however, are prevented from doing so because it is already trademarked. Recall the case as well involving Polaroid in 1961 where the main points of the case boiled down to the distinctness of the senior trademark over the junior adopted trademark. In Singapore, however, the trademark process operates on the first to file rule regardless of how long the trademark has been used. But there are some complicated issues one of which is discussed below.


Well-Known Trademarks

It is not mandatory to register a trademark in Singapore, but well-known marks are still offered protection under common law. But there are conditions that must be met such as the following: the use of the trademark has a connection to the trademark, goods and/or services of the well-known trademark; the other party is taking advantage of the familiarity of the well-known mark; and there is an unfair dilution of the well-known trademark. But how can you determine if the unregistered trademark is well-known and takes priority over the other trademark? It must fulfill the following conditions: degree of recognition by the public, duration of the use of the trademark, trademark is already registered in another country, successful enforcement of the trademark, and the high value of the trademark.


Proof of Use and Intent to Use

A registered trademark will always be the priority of the intellectual property and civil laws over an unregistered trademark. But to register the trademark, you need to prove that you are using it and will continue to use it. One of the requirements of trademark application is to submit a statutory declaration that states when the trademark was first used, who owns that company that uses the trademark and how long the person ahs held the position, what are the goods and/or services listed under the trademark and when they were first sold/rendered, and provide samples that the said goods and/or services have been sold and marketed before the application was written.