Office actions and oppositions

What we do

• Overcoming objections by regulatory bodies. Responding to IPOS examination reports and office actions, from clarifying the goods and services to arguing registrability.
• Overcoming objections by the public. Defending your application when a third party opposes it after publication.
• Filing objections. Opposing a conflicting application before it registers, or acting against a registration that should not be on the register.
• Recovery of objected registrations. Picking up applications that have been objected to, including matters started elsewhere.

Non-substantive and substantive office actions

A non-substantive office action is a formality: IPOS asks for a clearer specification of goods and services, a correction to the applicant details, or a better image of the mark. For marks we filed, we deal with these free of charge, as part of monitoring your application until completion.

A substantive office action is an objection to the mark itself: IPOS considers it descriptive or not distinctive, or it conflicts with an earlier mark. These need argument, evidence or negotiation with the owner of the earlier mark. We handle them at preferred rates for marks we filed, and quote before any work starts.

Oppositions: the window is short

Every accepted application is published in the IPOS Trade Marks Journal. A notice of opposition must be filed within two months of publication, extendable within that window to a maximum of four months. Miss it and the cheaper route closes; the mark registers and can only be challenged by the longer invalidation route. The official fee for a notice of opposition (Form TM11) is S$420 per class, in addition to our professional fee.

This is why we offer a trade mark watch: we read each journal issue against your marks and tell you about a conflicting filing while there is still time to oppose it.

What happens first

Send us the IPOS letter or the details of the conflicting mark. We review it, tell you whether it is non-substantive or substantive, what the deadline is and what we recommend, and quote any substantive work before we start. The review is part of our free consultation.