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Mark commercialization agreement

hi everyone so um thank you for coming here today um i'm the webinar we'll be starting now actually so thank you for your patience and i'm benetta a legal associate with our firm and to start off on behalf of our firm ella chong erc i would like to extend our appreciation to each and every one of you for taking the time to support our firm's webinar session today so um by way of introduction we are a boutique ip law practice based in singapore and we have an office in kl malaysia as well so in terms of the services that we provide we do offer a comprehensive range of ip services such as prosecution enforcement commercialization and strategy work and we are specialized in persisting our clients with managing their global i.t portfolios with a particular focus on the southeast asian and indian subcontinent region today so our speaker today as shown on the screen is brian who is a a legal associate with our firm base and he's currently based in our singapore office so brian is experienced in both trademark prosecution and ip commercialization work and has assisted our clients from clients for while from a wide range of industries and with the management of their treatment portfolio so today you'll be presenting on more on the trademark ownership as well as to better commercialize the trademarks for your business so um before we start please note that it is an interactive session and brian will be having live posts along the way so if you have any questions um along the way and during the presentation itself um do ask them in the q a chat box at the bottom of your screens and we do know that we will be having a q a session after the webinar as well and brian will be asking brian will be answering these questions along with our director one of our directors kevin so please stay tuned to the end of the webinar if you have any questions that you want to ask so um for now brian we'll start off with the webinar yeah brian please okay thanks man okay good afternoon everyone i am brian a legal associate with the firm and i will be taking you through a introductory module of sorts looking at the commercialization and ownership of trademarks and what you can do to better further your commercial interests as far as trademarks are concerned okay so if you just give me a moment time okay so this is the title and as title suggests we will be going through trademark ownership and commercialization and how it can benefit you as both as prospective trademark owners as well as current trademark owners so the presentation agenda is as follows we have learning outcomes classified by three categories basically we'll be looking first at the subsistence of trademarks namely the registrability criteria for how trademarks are registered in the respective registries and once we establish that we'll be looking at how to better protect your registered trademarks by exploring options for such protection determining the territory for protection of trademarks for example are we going by a domestic route or are we going by the international route biometric protocol and from there we will be establishing general guidelines for coming out triple filing strategies and once we have an established protection plan we will then move on to review issues common ip issues in the commercialization of trademarks so in that we'll be looking at how trademarks are commonly used how trademarks are commonly assigned and licensed so before we dive into the content problem as a prospective trademark at the gun you might be asking yourself why do i need to register a trademark so from our experience i think there are four key reasons as to why you should seek to register a trademark firstly a trademark is a legitimate proof of ownership of the mark and as such prevents others from registering and using similar marks next having a trademark registered is a proof of ownership on the register and provides ease of enforcement of this registered mark as opposed to an unregistered mark in which there is an evidential burden to overcome in terms of showing either that it is good will subsisting in the mark or there's some reputation that you want to protect the subsidies in the mark third having a registered trademark legitimizes ownership and use of registered mark and by extension prevents others from claiming infringement from use of your registered mark and finally a very big part of this presentation would be looking at the commercial exploitation of the registered mark namely how do you monetize your registered trademarks so looking at the first part of the presentation which uh deals with issues of trademark subsistence we'll be dealing with two key considerations right here firstly we'll be looking at the distinctiveness uh requirement of the trademark both inherent and acquired next we'll be looking at similarities with potential earlier marks earlier marks meaning either earlier marks that are registered on the register or earlier marks that subsist as a result of a reputation so before we dive into the proper uh i would like to engage everyone in the poll and so bern if you can assist me to pull up the poor questions yeah sure so everyone please help to key in your answers whichever that you think is correct yeah so yes there's five options here and i would like to ask for everyone's opinion so which of the following combinations of words are not likely to be registerable as a trademark i'll give everyone about a minute to put in their answers [Music] maybe about 10 seconds more before i launch the poll results okay so i'll end the polling now and maybe and we can take a look at the results and see whether brian has anything to share about it okay thanks bud okay so from the poll results it's quite interesting most of you have said that clean and green for recycling services would not be likely to be registered but this troubles are pretty much and then three of you said save the planet for automobiles and then two and one of you respectively for will smith's and both okay so um yeah let's just comment on the results okay so um each of these five examples of word marks are actually what i would term as a different types of trademarks that are on the spectrum of inherent distinctiveness so what is inherent distinctiveness inherent distinctiveness right here we're talking about the innate quality of a trademark to function as a trade origin to consumers so when consumers look at this mark you'll be thinking oh yes the goods and services represented by this mark must originate from a certain source so there must be a certain element of distinctiveness and uniqueness surrounding these word marks so with this general principle in mind a clean and green falls at the left far end of the spectrum as a rather generic or descriptive mark because clean and green clearly describes some environmental message relating to environmental and cleaning services so for these kind of marks uh it is generally in the public interest to make sure that uh these words can be commonly used by other merchants in the same industry so as we move along the spectrum we look at slogans next so previously there was the safe planet example for automobiles so likewise uh save the planet is quite a generic sort word combination and as such it might not be sufficiently unique or distinctive enough to function as a trademark and then we move on along the spectrum and remove all the suggestive marks suggestive marks in this case for example will smith in my previous example uh suggested mux as the name suggests would be marks that are either imaginative of imaginative and not very descriptive of the goods and services in question and as such may be able to function as a trademark because they might be distinctive from the eyes of the registry and as we move down we look at arbitrary marks and purely invented marks the argument is stronger because there is no relation between the mark in question and the goods and services of the register so and view as a whole this is how inherent distinctiveness is assessed so assuming that your mark is uh somewhere on the left side of the spectrum something that is not so much inherently what can you do so there is a alternative approach which we call inherent required distinctiveness sorry which basically is distinctiveness through extended commercial use so from the singapore registry what they generally look at is at least five years of use prior to the trademark application and this use has to be shown through commercial means what we mean here is application on common commercial documents such as invoices and turnover related documents showing sales as well as an extensive marketing and advertising documents so all of this when you as a whole campaign a picture of showing that the market's been put to use for an extended amount of time so much so that consumers nevertheless come to acknowledge the mark as being representative of the trait origin behind it so that's the entire basic idea of why it is so with these two types of stimulus in mind here are some useful tips for establishing this new business so in the example of queen and green just now just remember to avoid adopting common words trademarks unless you've read together as a whole it makes no sense or it's obviously arbitrary and completely unrelated to the goods and services in which it is represented and or finally it contains some prominent or distinctive logo along with a common word such that the distinctiveness character is shifted from the common word to this prominent and distinctive logo and secondly to deal with the quiet distinctiveness point that i have earlier established uh it is important for trademark owners to keep records of use of the mark in the event that when it comes to registration you are called upon to show that even though the map does not have inherent distinctiveness uh it has quite its new goodness because of its extended usage and its extended interaction with development consumers and finally very importantly do not use your trademark as a verb or a noun with respect to goods and services so example do not use your trademark in a sense like uh let's google this search result or there's a verb or as a noun that's what the escalator so these two are examples very common examples of trademarks that have become generic as a result of their use in common place conversations and everyday life so we have established the stiffness requirements so next we look at another very common objection that registries will raise with regards to registering your marks namely a conflicting mark so what is a conflicting mark actually so firstly it is a mark that is either registered currently on the three months register is well known in the eyes of the local populace or has group will attach that is a local custom that is drawn to this map for well-known and goodwill there is a evidential burden that has to be crossed by the relevant mark owner next we look at visual oral and conceptual similarity between the earlier mark and your current marketplace register so conceptual similarity here will be if they are of similar means and once we establish the three similarities we look at similarity of goods and services namely whether the goods represented services represented are similar or are they different and then taking the mark similarity and the goods and services as a whole whether or not the relevant consumer exercises sufficient care so it's not to be confused or not so this entire uh inquiry is put before the registry will decide in view of the totality or factors to decide whether or not the mark is confusingly similar or rather the earlier mark and the mark 6 register so practically speaking what should you do to prevent the likelihood of computing earlier marks so the first thing is to conduct a conflict search to see if any identical or similar marks exist either on the trademarks register or when you're looking for well-known marks of amongst their goodwill you search for them on the market so what you do here is you generally engage a private investigator and you conduct your own searches on the internet to see if any such marketing cities both of which can be done by engaging i.t specialists to assist you and then you access the risk based on maximility and similar services as well as the reputation of the other mark and if there is no conflicting earlier mark uh generally you should be filing the trademark application asap because your trademark writes and as well as the assessment of the mark is taken at the point of the amplification so summing up this part with subsistence as a whole first things first conduct parent searches to prevent and identify any likely completing marks next obtain registrability opinions that look at whether or not the mark is sufficiently distinctive and whether or not the mark has any completing marks and so what can be done to overcome these completing marks and finally to deal with acquired disney business objections maintain extensive commercial records of your trademark from the point of trademark usage so we have established that trademarks can subsist provided that the requirements of registrability i mean sorry the requirements of distinctiveness and conflicting marks are met so next we'll be moving on to how to protect your marks by availing yourself of proper filing procedures both domestically and internationally so we'll be dealing with two key concepts here firstly the territoriality of ip and next filing and renewal dates so looking at firstly at the territoriality of ip will be comparing national violence through the domestic ip officers as opposed to international filings through madrid protocol so firstly with national filings so national filings what we have here is broadly speaking a rather general structure for what takes place in most domestic ip offices so first you file an application next the office goes through a formality examination we determine the owner of the marks the addresses are correct things like the formal requirements and thereafter the office then looks at the registrability requirements we've gone through in the first part of this presentation and assuming that all is clear the mark will then proceed to publication which is a period of time in which the mark is published to the general public and it is then open to the general public uh whatever interested third party to oppose the mark on registrability criterias and assuming that publication phase is passed which is generally two three months the markdown process registration so now you compare this to an international filing through the madrid protocol so what is this international file including it is basically relying on a base application that is made through the domestic office of a country a member country of the protocol and then transmitting this application to one iphone who will receive it and formally examine it and then forward the application to each of the designated members companies that you want to register in so to give an example i have an application that is domestic in singapore i transmit the application the base application in singapore to iphone and there are designated member countries such as thailand korea japan and their respective registries will deal with the substantive examination of the markets for their own trademark laws so if you compare this major protocol filing in multiple countries as opposed to individually filing your trademarks domestically with the registries themselves the advantages are quite clear so firstly there is only one application to be filed and with that a single set of fees are payable for this application and because you are not going to the domestic offices directly filing with documentation such as statements of mark ownership powers of attorney they're all reduced unless the national office wages objections and with that plus a certain point in the number of marks you want to file there are potential cost savings to be had but bearing all of this in mind because the magic protocol substantially relies on this base registration so and everything is consolidated under this base registration so everything succeeds and fails based on this base registration which leads me to talking about this concept of central attack so within the five years from the registration of the base registration uh all of the sorry the base registration is liable to any if sorry if the base registration is under attack meaning if its registrability criteria is called the question and the mark is then invalidated for example the other designated marks in the other member countries will fail as well so that is something to think about when you're considering filing through the magic protocol so once we've established whether or not to file through protocol and you successfully obtain the registration in each of the countries that you want to file your marks in we look at renewal next so generally for trademarks the term of trademark subsistence is indefinite provided that you subscribe to the renewal period so for trademarks depending on the jurisdiction involved is every 7 to 10 years and finally depending on the jurisdiction you want to file in the use of the trademark might have to be deployed and if you do not declare it the trademark might be revoked by the office so for example philippines philippines has a requirement in which you have to declare use three years after you register the trademark and then subsequently five years after you register a trademark and after that it's within a year of the renewal period so there are quite a few renewal i'm sorry a declaration of users that you have to go through to make sure that the mark subsides on the register so to conclude on this part of the presentation when you want to look at uh filing in certain jurisdictions you look at whether or not these jurisdictions are members of the protocol and then next determine if you can which is whether you can't avoid as a protocol or whether you should utilize the people to call in this case it is important to know that although certain countries allow for major protocol it might not be necessary or even advisable to go under magic protocol because of the difference in specification requirements for google servers for example when you translate because services in the chinese office for example it might not pass master under their own substantive examination requirements so under such circumstances it might be more prudent to go under a domestic group and next you can compare the cost between filing purely domestically purely moderate protocol or mixed domestic and medical protocol and and and view because it's better to see which is more cost effective for you and finally because trademark rights generally subsist from filing date you would want to plan your filing strategy around your intended product services launch so you want to as soon as possible get your trademark rights at the point of the application date and then from there decide on how you want to launch your service of product that is represented by the tree park so after we've established protection of trademark rights under both the domestic and international regimes we look at what you can do with your trademark in terms of commercializing it in terms of monetizing it so the first thing and the most obvious one is to use it yourself for your own commercial purposes and use it in relation to your own services the next is to either assign it which is to sell it or maintain ownership keep ownership for yourself and allow others to use it for a fee which is what we term as licensed so if you want to use it yourself uh here are some useful tips that you should be thinking of so firstly definitely because like i said trademark rights are perpetual generally perpetual as long as you pay your renewal fees on time so always remember to pay your renewal fees for as long as you intend to reap the commercial benefits of the trademark next use your trademark with the relevant markings uh depending on jurisdiction so in singapore it will be a gm siren website your trademark clearly show that you're using it as a trademark and thirdly it's important as a trademark owner a registered trademark owner to watch out for potential ip inventors and to do so actively so this can be done by engaging professional iot services known as watch services where professionals will be scouring the market the relevant market in question to look out for potentially similar trademarks that you might concern yourself with and finally ensure that the trademark is used in the exact form that it is registered as and also in relation to the goods and services that you have registered the trademark for this is important firstly to prevent yourself from unknowingly infringing a potentially similar mark and also uh extensive use of the mark in the form uh as described is extremely important evidence to show that the mark is being used which can be useful in the event that a revocation action is not against the treatment so next we move on to assignment of the market so from our experience why do parties like sign the mark which is the seller so the first thing is we have clients coming to us telling us that we want to consolidate trademark ownership uh within a large corporate group within one company so that it's a lot neater in terms of when we have to renew the trademark when we have to license out the trademark etc so it is important for in terms of corporate governance for some companies and some corporate groups to consolidate these trade markets within a single entity next and probably the most straightforward reason for assigning a trademark would be a one-time realization of the monetary value that you've accumulated in the trademark so any good will any replication any uh attraction of customers all of it will be accumulated in the trademark and when you do sell it you realize this value in one lump sum and finally uh trademark assignments are very common as part of the sale of assets in mergers and acquisitions on the corporate scale so if you want to sell your trademark what are the general steps to undertake so first the most importantly is to obtain valuation for your trademark so in this regard you'll be looking at how much sales as a trademark generated how much google doesn't want generated before arriving at the evaluation of your market and also to note jurisdictional requirements for what constitutes a valid assignment so what do i mean by this in singapore generally an assignment only needs to be in writing and ascended to by the assigner for it to be valid however in countries like indonesia the assignment has to be recorded with the relevant i.t office or it's valid in law next looking at the limitation of assignment you can limit the assignment of the trademark by a assuming that your treatment is registered in multiple territories by the countries in which you assign the treatment so for example you have a child registration that spends asia but you only want to assign it for singapore you can do that and also the assignment can be for in perpetuity or for a fixed term like one or two years for example and finally if you still want to use the trademark question it's always open to you assign it to a third party first and then license it back so we'll be moving on to talk about what licensing of trademarks are but before that here is another poll which i would like everyone to answer but um i'll launch the poll now so i'll give everyone about one minute to answer just like the previous question so yeah i just want to ask everybody based on your general understanding of how global businesses are run which company do you think is a top global license so in terms of the monetary value of licenses credited for parties okay seems like the answers are coming in so maybe about 20 more seconds before i close the poll and launch the results and perhaps brian will want to comment on it later okay i'll be okay i'll share the results now so yep brian if you have any comments oh okay well very interesting so as i can see the results are more or less split halfway between what disney company and microsoft okay the answer is actually what this disney company okay for microsoft they are quite prolific in terms of software licensing copyright licensing but for trademark licensing um it's mostly what disney company in part due to the fact that they've acquired a lot of different trademarks and ips from fox from star wars for marble for example so as we look at the next slide we look at why people trademark license trademarks you can maybe understand why is it world disney that is the top mobile license in terms of licenses okay so why do we license trademarks so in the example of what disney um what they usually do is they want to allow third party usage of friends of their own house brands while preserving some degree of control and as well as absolute ownership of the mark so it's very common for product distribution namely when you have produced a product with your brand on it and you need a third party to distribute it to an external territory and sell it from there next is also merchandising when you want to collaborate with third parties to produce certain goods and services and you want disks and services to be accentuated by the usage of your brand you adopt a merchandising approach and you like inside your trademarks under this merchandising approach and finally if you have certain know-how certain groups and services that you want to franchise out or monetarily you can also trademark lessons so looking at these three examples it's i think it's quite clear to see why this is quite in this case because they have many many different brands many many different characters and with it many many different trademarks to license up 10 minutes and once you do this you engage in a trademark licensing arrangement you generally licensed source get to participate in revenue sharing of these licensed products and services uh through the payment of removes which is usually calculated as a percentage of the revenue that's generated by these products and services so like uh assignment there are some key steps to take note of before you decide to license on your trademark so likewise you look at jurisdiction specific requirements for what constitutes a valid license so like assignment in singapore a license needs only to be in writing and to be signed and assented to by the license so and a bit unlike assignments licenses can be varied quite a bit so they can be varied by the bundle of rights so what we mean here is that the specific use of the license may be in terms of specific usage in terms of goods and services usage in terms of how the trademark can be marketed can be represented to the public and things like that so that is how licenses can be limited next licenses can be limited in terms of operation in the different territories that the licensee can operate in thirdly licenses can be limited by the pump so likewise for assignments you can limit it one two years for example and finally licenses can be neither exclusive or non-exclusive so what i mean here is that the bundle of rights that we run under a license it can be solely for one party only and not to be shared with any other party or it can be shared amongst many many other companies so in the first instance will be an exclusive license and the second instance will be for exclusive license so before you embark on a trademark licensing agreement here are some important causes to consider which i'll be explaining one by one first is to consider the scope of the license which in the previous slide i mentioned talks about bundle objects you want to grant the territories you want to grant it in term of the license as well as whether it's to be exclusive or not exclusive the next thing is to consider payment terms whether or not you want to have an upfront payment a percentage based payment of revenue as per royalties or installment payments of take some time so or any combination of these three different common modes of payment next a very important for license and maybe one of the key reasons why trademark owners license out their trademarks is to ensure that a certain level of quality control is met which helps to protect the trademark owner's reputation uh by specifying the minimum standards that have been met by licensing and these standards generally will be standard that consumers rely on when making their purchasing decisions so in all qc obligations and provisions help to prevent damage to the goodwill trademark and by extension the brand value of the trademark okay so next we look at uh usage obligations oh sorry usage obligations uh basically deal with how the trademark is to be used in relation to the goods and services so in this regard it's generally advisable for the license so to provide the electronic version of the trademark and it artworks designs logos to be used by a licensee so that the license is not creating its own version of the trademark and license agreements should generally state that copies of the mark can only be made by whatever artwork that is provided by license and that any modifications be made by the licensee must be first proved idolizing so so next looking at infringement clauses so infringement is a bit interesting because under our singapore's trademark under section 45 specifically an exclusive trademark licensee has the statutory right to pursue an infringement action on behalf of the license so that's a registered proposition but you contrast this with a non-exclusive licensee there's a lot more leeway to play around with so generally you can vary how in how infringement claims can be pursued by the license or licensee so for example you can give the right to pursue infringement solely into the license or or to allow the licensee to pursue the infringement but only with prior notification and consent from the licensor and next and very very importantly uh representation and warranties uh trademark license agreement is important because it deals with the state of the trademark so these representation and warranties clauses generally deal with things like representing that the owner of a trademark is represented that the mark is not encumbered by any security or lien that the mark is not subject to any infringement revocation invalidation proceedings and the like so it's important to clearly state that the mark is provided in the best condition possible and finally looking at governing law and dispute resolution provisions uh for governing law because as everyone will understand trademarks are generally territorial in nature they are based on the country in which they are registered so generally you'll be advised local parties to have the trademark license agreement to be governed by the law in which the trademark is registered in and then finally about the dispute resolution provisions depending on how the parties would wish to resolve the dispute uh options to refer to arbitration mediation or to a court in a specific jurisdiction is always open and it's always a problem for the parties so with that i have come to the end of my presentation so next up is the q and a session we will be looking to answer some of your burning questions that you might have had during the presentation so with that i'd like to invite burn to help us moderate this yeah um so now we have the q a session and we have kevin um our director who's here to answer some of the questions as well so uh maybe to start the ball rolling um one of our attendees has asked um because this whole presentation is about treatment ownership so they have asked one of them have asked like they have already applied for a trademark but how how do i know what i can do to extend my mark in my business so maybe brian or kevin you want to give some of your comments yeah sorry uh can i can i get a question again uh the second part of the question let's say you already have a trademark application you already applied for a trademark in a specific country but now they want to know how to commercialize it or expand the mark i mean expand the business based on this application so do you have any comments in relation to that okay um so basically the answer would largely rely on the extent to which you have used your trademark so in the case where okay let's take it with two scenarios the first scenario is that your mark is represents something that's a very new and massive business which uh does not may not have accumulated sufficient reputation or goodwill in this case then it might be in your best interest to commercially use the mark first before considering how you might want to either assign or license the trademark because oftentimes licensing arrangements come about when there's sufficient reputation in google that's messed by the mark or in the alternative you can always reach out from a third party to cooperate in terms of a licensing arrangement wherein you engage the services of the third party to help to distribute your product to market your product under the brand and then you get a cut of the royalties whatever that they earn so that it's always open to you so the second scenario would be if your brand is very established already you can always consider a single licensing arrangement where you will probably be able to have greater bargaining power as well as greater flexibility in terms of how you want to license your trademark you can either choose to franchise it if you have certain uh know-how goods and services that you feel is very valuable and can can be scalable in terms of passing it party and operating you can always merchandise depending on what kind of trademark business or you can always rely on alternative third-party distribution channels to distribute goods and services based on your market so it really depends on the nature of your business it really depends on how it's going to be um another question in relation to the previous fund is from a franchise business perspective how do i really know who owns the ip and what should i look out for when i'm operating my business maybe um either yeah friend you want to start yeah sure uh so for a franchise how do you know okay franchise is it's not a okay depending on the jurisdiction in singapore a franchise is not a strict legal term so you can basically choose to run your franchise in the way that your franchise agreement it takes so in this connection whether or not you own the ip will depend on the terms of the franchise improvement so if you want to exert control on your iep and your trademarks then it's always open to you to say that you want to license it out instead of signing it for the term of the franchise so that's the first part of the question second part sorry burn can you remind me on the questions so um from a franchise sorry yeah from uh so how what should they be looking for when they're operating um yeah franchise business maybe from a legal perspective yeah okay so um very importantly and what commonly arises in the franchise agreement which goes back to why i think licenses might be preferable is quality control because when you franchise out your mark naturally you have some expectations in terms of maintaining the quality that your market has been associated with and the reputation that your money is generated so you in your franchise agreement your license agreement you should clearly have quality control provisions to allow a license source to for example routinely inspect manufacturing facilities or routinely inspect the shots that your punches are running and also maybe include a provision that says that there is a franchisor's handbook which with guidelines to follow things like that and and include provisions to enforce uh these quality control uh obligations should the franchisee for profile of this uh obligation so cumulative measures like paying additional costs or forfeiting a portion of the revenue things like that so there are many ways to ensure that quality control is there and you maintain and preserve the reputation that you work so hard to generate for your mark hey thanks ryan um kevin do you have anything that you would like to add in relation to brian's comments yeah hi uh yeah this is kevin here uh just just at the point about um you know i think the uh the the essence of a good uh franchise business operation uh i think really stems from um well [Music] the system for protection of uh the valuable ip or the franchise so having taken place at an early stage when companies you know uh you know first set up and they are developing a business uh model that becomes uh you know potentially franchisable down the road um at that early stage when they are you know developing a business even possibly before they even think about franchising uh it should be at that early stage that they really think about what um what's the value proposition in their business and um how that relates to the various kinds of inaugural assets that they they own or they claim to possess uh as part of their the operations or the business uh or the output of their business so um if it's all you know uh developed at an early stage in terms of uh getting you know applications you know filed for various kinds of ip that relates to their business obviously we're talking about trademarks here every business would have brands to protect so that's uh that's you know one of the uh first few things that uh you know is comes quite quite easy to to come up as uh targets for protection and then you have of course the other uh uh types of ip depending on if it's a high-tech industry then we might be looking at patterns um that could be things like uh trade secrets they're not verifiable but you know that you once you know that they are you have them then you you you know uh find strategies and ways of ensuring that um those kinds of ip and unregistered ip are protected uh then you might have industrial designs uh because you know you're you are selling a product with uh you know an aesthetic uh you know uh appearance that is unique so you get all this protected even before you uh market the products because as you know with certain kinds of ip the moment um you know they are disclosed to the public um you have a huge problem even trying to protect um those kinds of intellectual assets yeah so i think the the the nutshell getting things in place early protection-wise uh puts you in a good step for uh having a good uh franchise uh structure ahead where your franchise agreements really spell out what uh you know you actually are claiming as a franchise so uh to be uh the owner of in terms of ip relating to the franchise business yeah this one kevin so another question that we have um relates to the extent of commercialization of your trademark so if let's say your mark is only applied for certain goods and services so registered for certain goods and services can they then commercialize or license these products i mean the mark for only these goods and services or can they cover more more like other kinds of goods or services as well okay yeah if i can take that um basically a license is something that is derived from your current trademark rights so you under a license you basically cannot give what you don't have so to answer your question if your mark is only applied for certain goods and services then you can only license use of the trademark in relation to these goods and services that you have registered your trademark so if you want to go beyond then the owners will be on you to maybe adopt a fresh fresh registration for the same mark in relation to more using services and then you try to commercialize and or license your mark from them so another question relating to licenses is it necessary to register a trademark license with um singapore to singapore um ip registry or is it okay can we not register a treatment license okay for a license of the trademark okay so in singapore the recorder of a license with our registry which is ipos is not strictly required for the license to be valid but that being said the recorder of license is very useful for the key purpose of making sure that third parties who come across this registered license will know and have noticed of this registered license so practically speaking this is important firstly for exclusive licensees who have acquired a bundle of rights that are exclusive to them they can then rely on this registered license to say that this uh whoever third party which acquires a conflicting uh exclusive right that that infringes on their current rights under the license they can then rely on this registered license to say that no this is not allowed because i really have an exclusive arrangement with you guys and so the second thing is for licensees in general it's important to register a license because in case the license or decides to sell the trademark to a third party it will be important to rely on this record license to say hey look i have recorded this license there is very clear evidence that i have certain rights with regards to the usage of this trademark under this license the previous owner so all in all it's practically speaking uh quite important to register agents um thanks brian so kevin do you have anything that you'd like to add in addition to brian's comments on whether we should register our licenses with the ip authority in singapore well not in not in particular um i i think uh if you're talking about the singapore context uh i think one good thing to note is um well registration of a license uh similar to uh the procedure for registering uh or recording a uh change of ownership an assignment the processes are quite similar and the singapore ip office isn't uh you know very uh fussy or particular about um actually having to have sites of the uh you know the relevant documentary evidence um you know that supports the transaction uh be it uh an assignment or a license so that there are it's there are generally two options for recording uh these kinds of transactions one is um if you know there is a um so-called authorization uh that is received from the the two partisan essentially the in the case of a license like the license saw and the the licensee the grantor and the the licensee um then you know there can be a transaction that is uh i mean the transaction can be so called validated by um the let's say you know the service provider the uh the agent who is uh filing the recorder for the parties uh there would not need to be you know a licensed document that actually is being submitted to the ip office of singapore uh but of course if that authorization is not available then that's of course the other option of uh lodging or submitting a copy of that document uh so it's a it's a fairly um straightforward process especially if the authorization from the partisan section uh is available and is provided yeah so that's why it's it's a easy very easy process uh not so tedious it doesn't take too long for the i.t office to uh you know complete the recorder process internally thanks kevin so um moving on to a more like i'm moving on to the treatment application itself so um we have a question regarding um what kind of how do we know what kind of cultures should our trademark when we are trying to apply for a trademark in singapore or be anywhere else in the world so what would you like what should we look out for if you have any comments i think this question is quite open and it really depends on the types of goods and services that you seek to register but ultimately what i think is that because there are so many different classes classes 1 to 45 i think would be important to get an appointment with proper i.t professionals to properly understand what your goods and services are before they can give proper recommendations as to the class that you should register your your increasing services so without understanding what your goods and services are i think it's be difficult to give you a definitive response here okay so um thanks brian kevin do you have anything that you would like to get in relation to brian's comments um it leads to the question how do i know what classes suit my trademark right yeah like what classes suits the treatment like what clusters should be covered by the treatment how when when i'm applying for a treatment yeah yeah but it's i mean that there are is a means of you know coming up with your own um idea or impression of what the classes might uh be because uh there is information available uh online uh on the uh what we call the custom the classification system is called a nice classification system and uh you you know one can uh you know go on internet and and find out a bit more about which class uh you know what um each class corresponds to in terms of uh generally what kinds of products or services are come under those classes so that can give you a general idea but there can be certain nuances of peculiarities which may not come up so obviously or clearly to one who is not too accustomed to the system itself and especially given uh the fact that you know we may have a business owner who might be interested in applying for registration of a trademark in um in multiple countries uh there may be you know certain um you know peculiarities are um there are country specific popularities which um you know the uh business owner may not be aware of uh and so that's where i think uh you know the the so-called experts the uh petitioners out there um you know would be uh well placed to you know provide certain kinds of uh input on you know what it what would be the best strategy in terms of uh scoping of an application in terms of the classes as well as specifically what what descriptions of you know goods or services should be claimed i can give you a one example just one example because uh you know i think we're running a bit short time um for in the case of china um you know you some business owners may not be familiar especially if they are into uh the retail business uh they they might want to claim uh in their protection for a china trade application uh the claim for retail uh retailing uh or what's it called retail of uh goods or something to that effect so our retail services i think that's that's the more uh generic uh term that's used but the the thing about china for some reason they do not accept retail services in that broad description uh as an acceptable uh description for protect for claiming in a trademark application so this is just one one example of you know um some issues that um you know may crop up in for certain countries but not others but if you are not uh accustomed to um you know how these things work uh from one country to another uh you might uh end up in you know a possible complicated situation of receiving objections or of uh various other uh issues which might uh hinder your your process of getting registration thanks kevin for your input so um as we are running slightly behind schedule it's um i think i'll wrap up our presentation for now so uh thanks everyone once again for coming to our webinar and we really appreciate the time that you've taken off to join us this session and again but sorry uh would you mind if i just add on this one actually wants to add on yeah just because um i saw one interesting uh question um let me see what it was um i'll just talk about it very briefly there's this question is it a good idea to use a random name generator to come up with a random name to avoid the problem of inherent uh vegetability a descriptive uh or generic uh trademark so to avoid uh ending up having problems because you've come up with a descriptive mark um i will just add some input based on um well some some things i've known uh i've i've been so called exposed tool uh from experience so um i think the answer to this question is yes this is uh this is a way of coming out with a inventive enough uh word i mean if it's a generator that comes up with a word that doesn't exist in the dictionary then of course uh you're coming out with you know uh a name that starts off at um ground zero or at on day one as a unique uh you know identifier origin so there are you know various kinds of uh brands that have this kind of origin or starting point but of course one must also bear in mind that what may have started out as uh in invented uh purely invented and uh you know through random name generator otherwise uh can eventually uh unfortunately um show misuse i think this was something that brian did point out during his presentation through misuse over time or a misuse that was allowed to continue uh amongst uh within the the business the brand owners business itself and or the public um that that invented work that was previously randomly generated may end up uh becoming a generic term in the marketplace there was a a brand that uh ran into this problem um i think they have done uh enough to try and walk off the the issue but they they had they went they went into a lot of resources uh to stop uh the generic side of their brand that's that's a of course a a term that has been coined i think some people may have heard of uh uh you know the generic site of a brand or a sort of coinage terminology and this brand is as an example is velcro now april started off as a purely invented word uh it was a combination a bit of french influence uh in the coming of the the brand name uh but it really it's a word that didn't exist in in any english uh any any dictionary and i believe it doesn't exist in english in any dictionary at this point either but there was a point when um you know as you all know this is a product where uh use it for fastening uh a lot of products out there could be bags or whatever i might use velcro as a fast means of fastening um for the product itself and uh over time unfortunately some people might have been using it as a verb so that that can spell the end of uh in you know a unique brand but the brand owners velcro uh they invested in a lot of um advertising and publicity uh to try and get people to do the right thing for their brand and uh to make sure that they were uh recognizing it as a brand and not using it as uh a descriptive term and uh that's there was even uh uh something you can see on youtube if you you search uh uh well enough you might even locate a video that they have on youtube right now which is a very funny uh uh video very humorous very well done and i think it really helped them uh put out the the right message out there to the public uh not to uh you know put their their brand into generic site yeah okay yeah so that's that's all for that thanks thanks for sharing kevin and to whoever that asks this question thanks for asking such an interesting question so and yeah yes we are like i'm running slightly behind schedule i'm afraid we have to end the webinar wrap up the webinar and i hope that everyone who has attended um learned something um useful from our dinner session today and if you have any further questions do feel free to direct them to our general mail which will be shown in the chat box so it's mail at ellatron.asia and we will be more than happy to assist with your enquiries so with that we've come to the end of the webinar and please also help us to fill in the survey form which will show which will pop up on your screen after you close this browser so thanks everyone for coming and see you all soon have a nice day bye thanks everyone bye thank you you