We recently spoke with Amy Chan, principal of the Trade Marks team of Spruson & Ferguson to discuss how COVID-19 has impacted trademark opposition and cancellation procedures in Singapore and Malaysia.

1.  How has the COVID-19 pandemic impacted Singapore and Malaysia policies and procedures regarding trademark oppositions, cancellations, and invalidations? 

IP Offices in Singapore and Malaysia are taking steps to protect the well-being of their employees, customers and stakeholders and are closed during this period. The teams will continue to work from home and all Singapore trademark deadlines are extended to 7 May 2022 and 15 May 2020 for Malaysia trademark deadlines. There is no major disruption to procedures regarding trademark oppositions, trademark cancellations and invalidations in Singapore which are still being filed online and e-appointments/case management conference are being conducted via telephone calls. However, all opposition proceedings in Malaysia are suspended until the IP Office reopens.

2.  Have you seen any changes in trademark enforcement activities in Singapore and Malaysia over the past month due to COVID-19? 

Given the current health and economic situation, there seem to be a shift in priorities and clients are putting trademark enforcement activities and other non-critical actions on hold for the time-being as it is not possible to prosecute with the Courts and relevant agencies being closed during this period.  

3.  When faced with COVID-19 business uncertainties, what can we as members of the international trademark community be doing to keep trademark enforcement efforts top of mind for our clients who wish to do business in Singapore and Malaysia?

With the surge in e-commerce and online shopping during this period, we should stay connected with our clients and focus should be placed on addressing online counterfeiting activities, such as educating consumers. Most e-commerce marketplaces have implemented initiatives to minimise or stop infringement on their platforms. Enforcement efforts in e-commerce is an area worthy of long-term attention.

Editor’s Note:  Participating authors of COVID-19 global trademark opposition and trademark cancellation updates are from a wide variety of firms, many of whom we know and others by reputation.  This post focused on Singapore trademark and Malaysia trademark developments.  If you would like to contribute insight on trademark opposition developments in your own country, please contact us.

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Photo of James Hastings James Hastings

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is…

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is the publisher of Trademark Opposition Lawyer, an online advisory dedicated to helping brand owners understand important issues that arise in proceedings before the U.S. Trademark Trial and Appeal Board.  His commentary has been featured on Corporate Counsel, Law.com, LegalZoom,and other digital publications.

He devotes his practice to trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Over the course of his career, he has represented the interests of numerous national and international brand owners in trademark litigation matters in both the U.S. District Courts and before the U.S. Patent and Trademark Office.

Prior to his current affiliation with Practus, LLP, James was in-house counsel to a New England-based catalog retailer, where he was responsible for developing trademark portfolio acquisition, protection, and licensing strategies.  Earlier in his career, he was a partner and associate at intellectual property law firms in New York, where he was engaged in trademark portfolio and intellectual property protection work on behalf of well-known fashion and personal care brands.

James is a member of the New York and Connecticut bars.  He has lectured at University MBA programs and legal education conferences on the issues of trademark protection and e-commerce law.

Past and Present Membership

  • International Trademark Association
  • Association Corporate Counsel
  • National E-tailing and Mail Order Organization of America