It is the question we hear most from new business owners: "I've registered my company with ACRA, so the name is mine. Do I still need a trademark?" The short answer is yes, if the name is also your brand. A company or business name and a trade mark are registered with different authorities, for different purposes, and only one of them gives you rights you can enforce.
Two registers, two different jobs
ACRA, the Accounting and Corporate Regulatory Authority, registers companies and business names. Registering lets you carry on business in Singapore under that name. An approved name tells you the name is available on ACRA’s register, not whether someone holds a trade mark for it. ACRA itself says that a name registered with it gives you no exclusive rights in the name and no intellectual property protection.
IPOS, the Intellectual Property Office of Singapore, registers trade marks. A trade mark is registered for particular goods or services, sorted into classes. Once registered, it gives you the exclusive right to use the mark for those goods or services, and lets you stop others using an identical or confusingly similar mark for the same or similar ones. A registration lasts 10 years from the filing date and can be renewed for further 10-year periods.
IPOS makes the same point from its side: a business name registered with ACRA, or a domain name, is not trade mark protection. If you use the name on your goods or services, it should be registered as a trade mark.
Your brand may not be your company name
Many businesses trade under a name that is different from the company on their invoices. Lim Family Holdings Pte Ltd might run a chain of coffee stalls called KOPI LANE. Customers know KOPI LANE, not the company, and it is the brand that a trade mark protects. Registering the company with ACRA does nothing for KOPI LANE, and registering KOPI LANE as a business name only records that the company trades under it.
The risks of relying on the company name
Someone else files the trade mark first
On the trade marks register, it matters who files first. IPOS examiners compare a new application with earlier trade marks, not with company names on ACRA's register.
Suppose you incorporate MAPLEWAY Pte Ltd and start selling cakes under that name. A competitor then applies to register MAPLEWAY for bakery goods. Your company name is not an earlier trade mark, so the examiner is unlikely to raise it. Your chance to object comes when the application is published: you have two months to oppose it, and you must prove your grounds, typically that you had built up goodwill under the name before the other party filed, or that they filed in bad faith. Miss that window and the remedies left are slower and more expensive. If the other side's mark is registered, you may also be asked to stop using MAPLEWAY as a brand for your cakes.
Stopping a copycat is harder without a registration
Without a registered mark, the usual claim against a business using a confusingly similar name is passing off. To succeed, you must prove three things in court: that your business has goodwill in Singapore, that the other party's use misleads the public into thinking there is a connection with you, and that this damages you. Goodwill is proved with evidence such as sales, advertising and customer recognition, which a new business may not yet have.
With a registered trade mark, the registration itself is your evidence of ownership. The question is whether the other party's mark and goods or services are close enough to yours, compared with what is on the register. That is usually a much simpler case to make.
An ACRA complaint is not a substitute
ACRA does accept complaints about names, but a complaint must be filed within 12 months of the other entity's registration, and it concerns the other party's registered name, not its use of a brand. It gives you no trade mark rights.
Growth and investment
Investors, buyers, franchisees and licensees will ask what your business owns. A registered trade mark is an asset that can be licensed, assigned and valued.
What to do
- Search before you name. Check the name on ACRA's register for availability, and check the trade marks register for earlier marks covering similar goods or services. Our trade mark search and assessment starts with a basic clearance search that is free before you engage us.
- Decide what your brand is. It may be the company name, a shorter trading name, a product name or a logo. A word mark usually gives the broadest protection, so it is often the first to file.
- Pick the right classes. You register for the goods and services you actually provide or plan to provide. Our guide to trade mark classes and the Nice Classification explains how to choose.
- Decide who owns it. Usually the company files. If the company does not exist yet, the founder can file now and the mark can be transferred to the company later.
When to file
As soon as you have settled on the name and the search is clear: before you spend on signage, packaging, a website or marketing, and before you pitch to investors or announce the launch. Once the filing date is secured, a later application by someone else for a similar mark cannot take priority over yours.
We file with IPOS within the same business day of your filing instructions. IPOS takes up to 9 months from filing to registration for a straightforward application, and the registration then counts from your filing date. You can use the ™ symbol from the day you file.
If you plan to sell overseas, a Singapore application can also serve as the basis for an international application under the Madrid Protocol.
What it costs
Singapore trade mark registration with JK Marcam is S$600 per class, all-inclusive: the IPOS official fee, our professional fee, drafting of your goods and services, a full clearance search and registrability report with our written opinion, filing, monitoring and agent-on-record services, where the goods and services are fully taken from IPOS's pre-approved terms (S$200 more per class where they are not). The consultation, online, by phone or by video call, and a basic clearance search are free. Book a free consultation and send us the name you have in mind.
Questions
Does registering my company with ACRA protect my brand name?
No. ACRA registration lets you carry on business under the name. ACRA itself says it gives no exclusive rights in the name and no intellectual property protection. To own the name as a brand, register it as a trade mark with IPOS.
Can someone else register my company name as a trade mark?
It can happen, because IPOS examiners compare applications with earlier trade marks, not with company names. If you have grounds, such as earlier goodwill under the name or the other party's bad faith, you can oppose the application within two months of its publication. Filing your own application first avoids the dispute.
Do I need a trade mark if my business is small?
You do not need one to trade. You need one to stop others using your brand without proving your reputation in court, and so that no one else registers it first. The smaller and newer the business, the harder passing off is to prove, which makes a registration more useful, not less.
Should the trade mark be in my name or my company's name?
Usually the company's, if it already exists, since the company owns the business that uses the mark. If the company is still being set up, the founder can file now and transfer the mark to the company later.
How much does a Singapore trade mark cost?
With JK Marcam, S$600 per class, all-inclusive, IPOS official fee included, where the goods and services are fully taken from IPOS's pre-approved terms; S$200 more per class where they are not. The consultation and a basic clearance search are free before you engage us.
Questions about your own mark? The first consultation and a basic clearance search are complimentary, with no obligation.
Written by the JK Marcam team. General information, not legal advice; IPOS practice and fees change, so check the date above.