Received an IPOS office action? What it means and what to do next

An office action is a letter from IPOS about your pending trade mark application. It is not a refusal. It means the examiner needs something from you, or disagrees with something in the application, before the mark can go further. Here is how to read one, and the options that usually work.

Check the deadline first

Before anything else, find the date by which IPOS needs your response. For an examination report, IPOS gives four months from the date of the letter. Other letters, such as a notice that the application is missing a formal requirement, can carry a shorter period. The date that counts is the one on your letter.

More time is available. An extension is requested on Form CM5, and it must be filed before the deadline runs out. From the third request onwards, you must give reasons and IPOS decides whether to allow it.

If the deadline passes with no response, the application is treated as withdrawn: the whole application if all the goods and services were objected to, or only the objected items if the objection was partial. There is a second chance. You have two months to ask IPOS for continued processing on Form CM13, but the request must come with the full response. It is a safety net, not a plan.

So send the letter to us the day it arrives, even if you have not decided what to do.

Non-substantive: a question about the application

Many office actions are about form rather than the mark itself. Typical examples:

• the wording of the goods or services is too vague, or does not belong in the class claimed;
• the applicant's name or details need correcting;
• the image of the mark is unclear, or its description needs amending.

These are resolved by amending the application, often by adopting wording IPOS has already approved. For marks we filed, we prepare and file the response at no charge for our work, as part of monitoring your application until completion. If the response needs an official form that carries an IPOS fee, that official fee is payable by you; we will tell you the amount before we file. A carefully drafted specification avoids most of these actions in the first place.

Substantive: an objection to the mark itself

A substantive office action says the examiner does not think the mark can be registered as it stands. There are two broad kinds.

The mark describes the goods or is not distinctive. Suppose a bakery applies for GOLDEN CRUST for bread. The examiner may say it simply describes a quality of the product, so other bakers should remain free to use the words. These are called absolute grounds.

The mark conflicts with an earlier mark. Suppose you apply for LUMA for skincare, and someone already owns LUMA for cosmetics. The examiner will cite the earlier mark and say the public could be confused. These are called relative grounds.

A substantive objection is the start of a discussion with the examiner, not the end of the application, but it needs argument, evidence or a change to the application.

The options that usually work

Depending on the objection, the realistic routes are:

• Narrow the goods or services. If the conflict is with only some of your goods, removing or restricting those items often clears the way for the rest. It is usually the quickest and cheapest route, but it reduces what the registration covers.
• Withdraw a class. Where one class is blocked and the others are not, dropping it lets the others proceed to publication now. You can apply again for the dropped class later, for example once the conflict has been resolved.
• Argue the point. We put written submissions to the examiner explaining why the mark is distinctive, or why the marks or the goods are not similar enough to cause confusion.
• Show use. A mark that started out descriptive can become distinctive through use. That needs solid evidence of how long, how widely and how heavily the mark has been used in Singapore.
• A letter of consent. In some cases the owner of the earlier mark will agree to your registration, and IPOS may then accept it.
• A hearing. If the examiner maintains the objection, you can ask to be heard by IPOS before a final decision.

Two arguments rarely help on their own. Adding a logo to a word that someone else has registered does not usually avoid a conflict, because the word is what customers remember. And having used your mark for longer than the owner of the earlier registration is generally not an answer to an examiner's objection; it may support other routes, but it needs careful handling.

What we do when you send us one

1. We read the letter and tell you, in plain terms, whether it is non-substantive or substantive and what the options are to overcome the office action.
2. We recommend the best option to proceed.
3. For a non-substantive action on a mark we filed, we prepare and file the response at no charge. Official fees, if any, are payable.
4. For a substantive action, we set out the options, what each would cost you in scope, and our fee, and act only on your instruction.

The first review is part of our free consultation. More detail is on our office actions and oppositions page.

If your mark was filed by someone else

We regularly take over applications filed elsewhere, including ones that already face an objection. Send us the application number and the IPOS letter, and we will tell you whether it can be saved and what it would take.

After acceptance: the opposition window

Once accepted, the mark is published and anyone has two months to oppose it. A thorough search before filing reduces the risk of both objections and oppositions.

Talk to us

If an IPOS letter has landed on your desk, forward it to us with the application number. We will explain it, confirm the deadline and recommend a route before anything is charged. Book a free consultation.

Written by the JK Marcam team. General information, not legal advice; IPOS practice and fees change, so check the date above.