Using Consent Agreements to Overcome Section 8 Conflicts in Singapore

When a trade mark application in Singapore is cited against an earlier mark under the relative grounds of Section 8, the applicant faces a choice: fight, withdraw, or negotiate. One of the most practical and frequently used paths is to obtain a letter of consent from the owner of the earlier mark. Under Section 8(9) of the Trade Marks Act, the Registrar has discretion to register a trade mark where the proprietor of the earlier mark consents to the registration. This mechanism provides a structured, commercially sensible way to resolve conflicts without the cost and delay of opposition proceedings.

The Legal Basis: Section 8(9)

Section 8(9) provides that the Registrar may, in his discretion, register a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration. This discretion is a significant feature of the Singapore system — consent is not automatically dispositive, but it is generally accepted by IPOS as a sufficient basis for overcoming a citation.

The provision applies to relative grounds objections raised during examination, including those based on Section 8(1) (identical marks for identical goods), Section 8(2) (similar marks with likelihood of confusion), and Section 8(3) (well-known marks).

How the Consent Process Works

When IPOS issues an examination report citing an earlier mark as a potential conflict, the applicant has four months to respond (with extensions available). One of the methods to overcome the citation is to obtain and submit a letter of consent from the proprietor of the cited mark.

The applicant contacts the owner of the earlier mark, negotiates the terms of coexistence, and obtains a written statement confirming that the earlier mark owner consents to the registration and use of the applicant’s mark in Singapore. This letter is then filed with IPOS as part of the applicant’s response to the examination report.

What a Letter of Consent Should Include

While IPOS provides a sample format, a well-drafted letter of consent typically includes the following elements:

• Identification of both marks: The earlier mark (with registration number) and the applicant’s mark (with application number) should be clearly specified.
• Statement of consent: An unambiguous declaration that the proprietor of the earlier mark consents to the registration and use of the applicant’s mark in Singapore.
• Specification of goods or services: The consent may be limited to specific goods or services, or it may cover the entire application. Any limitations should be clearly stated.
• Authority of the signatory: The letter should be signed by an authorised representative of the earlier mark’s proprietor, with their position and authority clearly identified.

IPOS provides a sample letter of consent in its guidance materials, which applicants should follow for formatting and content.

The Registrar’s Discretion

A critical feature of the consent mechanism is that the Registrar is not bound to accept the consent. Section 8(9) grants the Registrar discretion, which means that even with a letter of consent, the Registrar may refuse the application if they believe the public would be significantly misled as to the origin of the goods or services.

In practice, letters of consent are accepted in the vast majority of cases. IPOS recognises that the parties themselves are best placed to assess whether coexistence is commercially viable. However, where the marks are virtually identical and the goods are the same, the Registrar may conclude that consumer confusion is so likely that even consent from the earlier mark owner cannot cure it.

When Consent Is Most Effective

Letters of consent are most effective in the following situations:

• Marks that are similar but not identical: Where the marks share some common elements but have sufficient differences that coexistence is commercially realistic.
• Related companies or business partners: Where the applicant and the earlier mark owner are in the same corporate group, or have a licensing or distribution relationship.
• Non-overlapping commercial contexts: Where the goods or services, although technically similar in classification terms, operate in different market segments or target different consumer groups.

Consent Between Companies in the Same Group

IPOS also accepts consent from companies that are part of the same parent ownership. If the applicant and the earlier mark owner are subsidiaries of the same parent company, the consent is typically straightforward. Evidence of the corporate relationship may be required, such as a letter from the parent company or company registry documents.

Limitations and Alternatives

If a letter of consent cannot be obtained — because the earlier mark owner refuses, is unresponsive, or demands unacceptable terms — the applicant has several alternative options:

• Amend the specification: Narrow or exclude the goods or services that conflict with the earlier mark.
• File evidence of honest concurrent use: If both marks have been used concurrently in Singapore without confusion, IPOS may accept evidence of this as a basis for registration.
• Wait for the cited mark to expire: If the earlier mark is approaching its renewal date and the owner is unlikely to renew, the citation may be removed.
• Initiate proceedings against the cited mark: If the earlier mark is vulnerable to revocation for non-use or invalidity, the applicant may challenge it directly.

Strategic Considerations

• Negotiate early: Approach the earlier mark owner as soon as the citation is received. The applicant’s response deadline is limited, and negotiations take time.
• Offer reciprocal consent: If you hold earlier marks that could block the other party’s future filings, a mutual consent arrangement benefits both sides.
• Document any coexistence agreement: Beyond the letter of consent filed with IPOS, a full coexistence agreement between the parties can formalise the terms of use, geographic scope, and any restrictions.
• Prepare for Registrar scrutiny: If the marks are very close or the goods identical, be prepared that the Registrar may exercise discretion to refuse despite the consent.

Common Mistakes

• Submitting an unclear or unsigned letter: The consent must be unambiguous and signed by an authorised person. Vague or informal communications are unlikely to satisfy IPOS.
• Assuming consent is automatic: The Registrar retains discretion. In rare cases involving near-identical marks and goods, consent may not be sufficient.
• Failing to act within the response deadline: If no extension is filed and the response period lapses, the application may be treated as withdrawn before the consent can be obtained.
• Not exploring alternatives: If the earlier mark owner demands unreasonable terms, consider whether amending the specification or challenging the cited mark might be a better strategy.

Key Takeaway

Letters of consent under Section 8(9) are one of the most practical and cost-effective tools for resolving trade mark conflicts in Singapore. They allow parties to negotiate coexistence privately, avoiding the expense and uncertainty of opposition proceedings. While the Registrar retains the final say, consent is accepted in the overwhelming majority of cases. Applicants facing a citation should consider this path early, approach the earlier mark owner professionally, and ensure the consent letter meets IPOS’s requirements in both form and substance.