Overcoming Absolute Refusals: How to Prove Acquired Distinctiveness in Singapore (Section 7(2))

When a trade mark application is refused under the absolute grounds — typically for being descriptive under Section 7(1)(c) or devoid of distinctive character under Section 7(1)(b) — the applicant is not without recourse. Section 7(2) of the Singapore Trade Marks Act provides that a mark may still be registered if it has acquired a distinctive character as a result of use before the date of the application. This is the doctrine of acquired distinctiveness, or “secondary meaning.” However, proving it before IPOS requires rigorous, Singapore-specific evidence.

What Is Acquired Distinctiveness?

Acquired distinctiveness occurs when a sign that originally lacked the capacity to function as a trade mark has, through extensive and sustained commercial use, come to be recognised by the relevant public as identifying the goods or services of a particular trader. The sign has evolved from a descriptive term or a non-distinctive element into a badge of origin in the minds of consumers.

In legal terms, the public has learned to associate the sign with a specific commercial source — it has acquired a “secondary meaning” beyond its primary descriptive or generic sense.

The Legal Basis: Section 7(2)

Section 7(2) states that a trade mark shall not be refused registration by virtue of Sections 7(1)(b), (c), or (d) if, before the date of the application for registration, it has in fact acquired a distinctive character as a result of the use which has been made of it.

The critical date is the filing date. All evidence of acquired distinctiveness must relate to the period before the application was filed. Evidence of use after the filing date is generally not considered.

The Territorial Requirement: Singapore-Specific Evidence

Unlike the EUTM system, where acquired distinctiveness must be shown across multiple countries, Singapore’s requirement is territorial. The evidence must demonstrate that the mark has acquired distinctiveness in Singapore specifically.

Global sales figures, international advertising campaigns, and foreign market share data are not sufficient on their own. IPOS requires evidence that the Singapore public recognises the sign as a trade mark. International evidence may be relevant as supporting context, but it cannot replace direct proof of recognition in Singapore.

Types of Evidence IPOS Expects

IPOS evaluates acquired distinctiveness based on a range of factors. The strongest applications present evidence across multiple categories:

• Duration of use in Singapore: How long the mark has been used in the Singapore market. Longer use provides stronger evidence, though there is no fixed minimum period.
• Annual sales figures: Revenue generated in Singapore under the mark, broken down by year. These figures demonstrate the commercial scale of the mark’s presence in the market.
• Advertising and promotional expenditure: Amounts spent on advertising in Singapore, with details of the publications, channels, and media used. Samples of actual advertisements should be included.
• Media coverage: Press articles, reviews, or editorial mentions of the brand in Singapore publications. These must be dated before the filing date.
• Market share: Data showing the mark’s share of the relevant product or service market in Singapore.
• Consumer surveys: Direct evidence of consumer recognition in Singapore. Surveys must be properly conducted, with transparent methodology and open-ended questions.
• Third-party statements: Declarations from trade associations, industry bodies, or independent experts confirming the mark’s recognition in Singapore.

The Statutory Declaration

Evidence of acquired distinctiveness is typically submitted by way of a statutory declaration — a formal sworn statement filed with IPOS. The declaration should be structured and include dated exhibits such as catalogues, invoices, advertisements, and sales records. IPOS provides a sample statutory declaration format as guidance.

All materials annexed to the declaration must be clearly dated and must relate to use before the filing date of the application. Undated materials or materials from after the filing date carry little to no weight.

Consumer Surveys: Powerful but Risky

Consumer surveys can provide direct evidence of recognition, but IPOS scrutinises their methodology carefully. Key requirements include:

• Questions must be open-ended and not leading.
• The sample must be representative of the relevant public in Singapore.
• The survey must measure whether consumers recognise the sign as a trade mark, not merely whether they recognise the product.
• Full disclosure of methodology, sample size, and how the survey was administered is required.

IPOS does not set a fixed benchmark for survey results. A 70% recognition rate for a highly descriptive mark may not suffice, while less than 50% may be adequate for a mark with a less serious objection. Each case is assessed on its own facts.

The “Use as a Trade Mark” Requirement

The use must be “as a trade mark” — meaning the sign must have been used to identify and distinguish the applicant’s goods or services, not merely as a descriptive label. If the sign appears only as part of product descriptions (e.g., “made with 100% organic cotton”), it is being used descriptively and does not contribute to acquired distinctiveness.

IPOS draws a clear distinction between recognition of the product and recognition of the sign as a trade mark. The fact that consumers know the product does not mean they perceive the sign as a brand.

Strategic Considerations

• Start collecting evidence early: If you plan to register a mark that may face a descriptiveness objection, begin assembling evidence of use — sales data, advertisements, media coverage — from the outset.
• Focus on Singapore-specific data: Global figures are not a substitute for local evidence. Break down all figures by territory.
• Use the mark consistently: Variations in how the mark is presented can weaken the case. Use the mark in the form applied for as consistently as possible.
• Consider filing timing: File the application only when you have accumulated sufficient evidence of use in Singapore. Filing too early, before the mark has built recognition, may result in a refusal that cannot be overcome.

Common Mistakes

• Submitting only global data: Sales in the United States or China have no bearing on whether the Singapore public recognises the mark.
• Filing undated materials: Evidence without clear dates is given minimal weight by IPOS.
• Confusing product recognition with brand recognition: The evidence must show that consumers recognise the sign as a trade mark, not merely that they know the product exists.
• Assuming long use equals distinctiveness: Duration is only one factor. A mark used for ten years with minimal advertising and low market penetration may still lack acquired distinctiveness.
• Relying solely on a consumer survey: Surveys are helpful but should be supported by corroborating evidence of sales, advertising, and media coverage.

Key Takeaway

Acquired distinctiveness under Section 7(2) is a legitimate path to registration for marks that are initially refused on absolute grounds — but it demands thorough, Singapore-focused evidence. The applicant must prove not just that the mark has been used, but that the Singapore public now recognises it as a trade mark. For most applicants, the more efficient strategy remains choosing an inherently distinctive mark from the start. For those who must prove acquired distinctiveness, preparation and documentation from the earliest stages of use are essential.