The Singapore Network Information Centre (SGNIC) will be launching second level domain names (SLDs) come 3 January 2005. Until now, Singapore has only allowed registration of third level domain names (TLDs) such as {name.com,sg]. SLDs are shorter domain names eg [name.sg] and its introduction will give the public more choices and avenues to register [.sg] domain names. The move mirrors that of Hong Kong, the United States of America, China and Japan, which saw strong uptake for SLDs following their introductions earlier on.
In anticipation of a surge in registrations, SGNIC has introduced a "sunrise" period, from 15 September 2004 to 2 January 2005, whereby applicants are granted priority to SLDs in the following order:
- Owners of a Singapore registered trade mark with TLD
- Owners of a Singapore registered trade mark
- Owner of a well-known mark with TLD
- Owner of a well-known mark without TLD
- Government bodies
- Existing registrants of TLD
- New applicants
Competing applicants in the same category will have to bid for the SLDs.
Although the sunrise period covers the duration 15 September 2004 to 2 January 2005, the deadline for submitting the application during the sunrise period is actually 31 October 2004, as the remainder of the sunrise period has been set aside for the processing of applications. Applications submitted between 1 November 2004 to 2 January 2005 will be treated for all intents and purposes as applications filed outside the sunrise period and will be dealt with on a first-come-first-served basis.
SGNIC will post the allocation results on their website on 20 December 2004. An objection period of 14 days is provided for any person to object to the allocation decision. If no objection is raised, the domain name is immediately allocated to the successful applicant.
The advent of SLDs makes it crucial for holders of TLDs to register the equivalent of the SLD to prevent cyber-squatting and unscrupulous traders from registering a domain name that is confusingly similar to their TLD.
For well-known mark owners who have not registered their trade marks in Singapore or whose marks are pending registration in Singapore, a statutory declaration providing evidence of use that the mark is well-known in Singapore is required.
As to what qualifies as a well-known mark in Singapore, the recent amendments to the Singapore Trade Mark Acts ("the Act") would be instructive.
A "well-known trade mark" is now formally defined under the Act as:
- any registered mark that is well-known in Singapore; or
- any unregistered mark that is well-known in Singapore and belongs to a person who is a national of a Paris Convention or WTO member country, or is domiciled in, or has a real and effective industrial or commercial establishment in a Paris Convention or WTO member country, whether or not that person carries on business, or has any goodwill, in Singapore.
The non-exhaustive list of factors for determining whether a mark is well-known in Singapore include:
- the degree to which the mark is known to or recognised by any relevant sector of the public in Singapore;
- the duration, extent and geographical area of any use or promotion of the mark;
- any registration or application for registration of the mark in any country or territory in which the mark is used or recognised, and the duration of such registration or application;
- any successful enforcement of any right in the mark in any country or territory, and the extent to which the mark was recognised as well-known by the competent authorities of that country or territory;
- any value associated with the mark.
A mark that is determined to be well-known to any relevant sector of the public in Singapore shall be deemed to be well-known in Singapore. SGNIC will appoint a final arbiter, details of which are not known as yet, to determine if a trade mark is well-known in Singapore.
The priority scheme implemented during the sunrise period recognises the protection afforded to registered trade marks and well-known marks under the Singapore Trade Marks Act in respect of domain names, which are important business identifiers. Owners of registered or well-known trade marks and existing registrants of a TLD are encouraged to take advantage of the priority accorded to them during the sunrise period.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
