Trademarks in Singapore 2024

Trademarks in Singapore 2024 - Intellectual Property Office of Singapore (IPOS)

Trademarks in Singapore 2024 – Intellectual Property Office of Singapore (IPOS)

TRADEMARKS 2024

SINGAPORE

Kevin Wong, Jasmine Khoo

(Ella Cheong LLC)

LEGAL FRAMEWORK

Domestic law

  1. What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Singapore is the Trade Marks Act 1998 (the TM Act) along with its subsidiary legislation; namely, the Trade Marks Rules and the Trade Marks (International Registration) Rules.

International law

  1. Which international trademark agreements has your jurisdiction signed?

Singapore is a signatory to a total of five international trademark agreements:

  • the Paris Convention for the Protection of Industrial Property;
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights (commonly known as the TRIPS Agreement);
  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
  • the Singapore Treaty on the Law of Trademarks.

Regulators

  1. Which government bodies regulate trademark law?

At the application and examination stage, the Intellectual Property Office of Singapore (IPOS) regulates the registration of trademarks. Opposition to the registration of trademarks and invalidation of registered trademarks are first heard before IPOS. The decisions made by IPOS are instructive in these contentious proceedings on how trademark law is applied. The courts of Singapore are also involved as the decisions made by IPOS are appealable to the Supreme Court of Singapore, which encompasses the General Division of the High Court, the Appellate Division of the High Court and the Court of Appeal.

REGISTRATION AND USE

Ownership of marks

  1. Who may apply for registration?

Any natural or legal person with the capacity to sue or be sued may apply for and own a registered trademark under the Trade Marks Act 1998 (the TM Act). In addition, joint ownership of a trademark registration is also possible under the TM Act, subject to any agreement to the contrary, with each co-owner being entitled to an equal undivided share in the trademark.

Scope of trademark

  1. What may and may not be protected and registered as a trademark?

Under the TM Act, a trademark is defined as:

  • any sign that is capable of being represented graphically; and
  • any sign that is capable of distinguishing the goods or services dealt with or provided in the course of trade by a person from the goods or services dealt with or provided by any other person.

For a mark to be registrable, it not only has to fall within the above definition, but it also has to fall outside of the prohibitions provided by statute.

The requirement of being capable of being represented graphically does not mean that the mark must be visually perceptible. Instead, it must be possible for the mark to be precisely identified and presented on the trademark register. Hence, it is possible for non-conventional marks that can be represented graphically – such as sound and movement – to be registrable. A notable local example relates to the registration of a telephone ringtone by Nokia Corporation in respect of telecommunications (Singapore Registration No. T0500415G).

Collective and certification marks are registrable provided that the applicant complies with certain conditions, such as providing a set of regulations on how the trademark is to be used within nine months of the date of filing the application.

Unregistered trademarks

  1. Can trademark rights be established without registration?

In the absence of trademark registrations, a trader may generally still rely on the tort of passing off under common law to prevent others from using their trademarks or other aspects of the trade profile to represent that their goods or businesses are theirs. This tort is independent of, and can coexist with, protection under the TM Act. Unregistered trademarks can be protected if they are also well-known trademarks.

Famous foreign trademarks

  1. Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Under the TM Act, well-known trademarks are entitled to certain protection even if such trademarks are not registered, regardless of whether the trademark owner has any business or goodwill in Singapore.

However, a foreign trademark must be well-known to the public at large in Singapore – or, at minimum, well-known to a relevant sector of the public in Singapore – to be afforded protection. The standard of proof to show that a mark is well-known in Singapore is high and is inferred from a series of relevant factors such as:

  • the duration, extent and geographical area of its use;
  • its publicity or advertising; and
  • independent public recognition of the fame of the trademark.

The protection granted to well-known foreign marks under the TM Act is limited to the restraint of use in Singapore by injunctions, subject to certain statutory provisions and defenses. In particular, these injunctions will not extend to include the goods or services for which a trademark is registered unless the proprietor of the well-known foreign mark is able to prove potential damage or dilution in an unfair manner, or both, as the case may be.

The benefits of registration

  1. What are the benefits of registration?

The proprietor of a registered trademark has the exclusive right to use the trademark and to authorize other persons to use the trademark in relation to the goods or services for which the trademark is registered. Registration also provides the proprietor with the right to obtain relief under the TM Act for infringement of his or her registered trademark. Unlike passing-off claims, an action for trademark infringement does not require the claimant to prove goodwill associated with the mark. Further, border enforcement measures against infringing goods are also available under the TM Act in relation to registered trademarks.

Filing procedure and documentation

  1. What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

Documentation, such as power of attorney or certificate of corporate good standing, is not needed to file a trademark application in Singapore, although a local address for service is required. Trademark applications are filed electronically through the e-services portal of the Intellectual Property Office of Singapore (IPOS) where the trademark representation must be submitted as a .bmp, .jpeg, .jpg, .tiff, .png, .tif or .gif file not exceeding 2MB in size.

While it is not mandatory to conduct a trademark search before filing, it is recommended as a preliminary step.

Registration time frame and cost

  1. How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

In general, a straightforward national trademark application (for which no objections are raised during the examination process and no opposition proceedings arise) may take between six and eight months to obtain registration. The official fees applicable to such registrations would be the official filing fees of S$380 per class, or S$280 per class if the specification of goods or services claimed is pre-approved by IPOS.

A trademark is formally registered upon the issuance of a certificate of registration by the registrar of trademarks and the date of registration will be the date the application was made. In the event any objections are raised by the registrar or oppositions are commenced by third parties, the application process and subsequent registration of the trademark may be delayed.

Classification system

  1. What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Singapore adopts the Nice Classification of Goods and Services, and multi-class applications are available. The same official filing fee rates per class apply regardless of whether applications are filed as single-class or multi-class applications.

Examination procedure

  1. What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The trademark office will examine trademark applications for registrability on both absolute grounds and relative grounds, both of which are defined by the TM Act. Any objections by the trademark office are communicated by letter with stipulated deadlines by which the applicant must respond, failing which the application will be deemed withdrawn. If the applicant successfully overcomes the objections, the application will proceed to publication in the Trade Marks Journal. Letters of consent are generally acceptable by the trademark office to overcome objections based on other conflicting trademarks.

Use of a trademark and registration

  1. Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

While a trademark or service mark generally does not have to be in use before it can be registered, the examiner may request evidence of use during the course of examination; for example, to demonstrate that the mark has acquired distinctiveness for the purposes of overcoming absolute objections.

If the registration is granted without use, the registered owner (or its licensee) must put that mark to genuine use in the course of trade within the period of the five years following the date of completion of the registration or run the risk of having the registration revoked for non-use. Further, a registration may also be revoked if the use of a mark ceases or is suspended for an uninterrupted period of five years.

It is possible to file priority claims based on corresponding applications filed under the Paris Convention for the Protection of Industrial Property or in World Trade Organization member countries within six months of the first application in any such country for the registration of the same trademark in respect of all or any of the goods or services for which registration was sought in the first application.

Markings

  1. What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The symbol ® can be used to indicate that a trademark is registered, while the symbol ™ may be used to indicate that a sign is used as a trademark. It is not mandatory for such symbols to be used. A person who falsely represents that a mark is a registered trademark and knows or has reason to believe that the representation is false shall be guilty of an offence under the TM Act, and shall be liable on conviction to a fine not exceeding S$10,000.

In this regard, the use of the word ‘registered’ or any other word or symbol indicating a reference (express or implied) to registration shall be deemed to be a representation as to registration under the TM Act, unless it is shown that the reference is to a registration elsewhere than in Singapore and that the trademark is in fact so registered for the goods or services in question.

Appealing a denied application

  1. Is there an appeal process if the application is denied?

Any appeal against a decision of the registrar of trademarks (in relation to the registrability of the mark or the outcome of opposition proceedings) are to be made to the General Division of the High Court. Further appeals from the General Division are to the Appellate Division and are only permissible with leave.

Depending on the case, there may lie a further appeal to the Court of Appeal (SGCA) or a transfer of the case from the Appellate Division to the SGCA. While the procedure within IPOS is subject to the TM Act and the Trade Marks Rules, the appeal process is primarily governed by the Rules of Court 2014 or the new Rules of Court 2021 depending on when the appeal is filed.

Third-party opposition

  1. Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

After an application has been accepted by the registrar of trademarks for registration, the application will proceed to publication in the Trade Marks Journal. During the two-month period following publication, any person may oppose the registration of the mark by lodging a notice of opposition. The grounds of opposition available under the TM Act include the trademark’s lack of inherent distinctiveness, bad faith and confusing similarity to an earlier trademark, and where use of the mark is liable to be prevented by virtue of any laws that protect an unregistered trademark (such as the law of passing off). A person can oppose a bad-faith application without having first obtained the registration of his or her mark in Singapore.

After registration, a trademark may also be canceled, revoked or invalidated. The cancellation of a trademark can only be made by the registered proprietor by application to the trademark registry. In contrast, applications for revocation and invalidation may be made by any person to the trademark registry or to the court. Applications for revocation may be made on grounds such as non-use, deception or loss of distinctiveness, while applications for invalidation are typically made on the basis that the registrability requirements have not been met.

Duration and maintenance of registration

  1. How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The registration of a trademark remains in effect for an initial period of 10 years from the date of registration. Thereafter, the registration may be renewed for further periods of 10 years commencing from six months before the relevant renewal due dates. While evidence of use of the mark does not need to be filed to maintain the registration, a registration may be revoked for non-use.

Where required, proof of use should consist of evidence of genuine use of the mark in the course of trade in Singapore. The TM Act provides that use of a trademark includes use in a form differing in elements that do not alter the distinctive character of the mark in the manner in which it was registered. The TM Act further provides that use in Singapore includes applying the trademark to goods or to materials for the labeling or packaging of goods in Singapore solely for export purposes.

Surrender

  1. What is the procedure for surrendering a trademark registration?

In Singapore, surrendering a trademark registration is referred to as ‘cancellation’ of a trademark. This is done by filing a notice in the prescribed form to IPOS. Where there is any other person who may have a right to the mark, such as licensees, this notice will only be effective if such persons have been notified of the intended cancellation at least three months prior to the application for cancellation and have no objection to such cancellation.

Related IP rights

  1. Can trademarks be protected under other IP rights?

Depending on the trademark in question, and the facts and circumstances of the case, it is possible for trademarks to be protected under other intellectual property rights. For instance, a logo trademark may potentially be protected as an artistic work under copyright law.

Trademarks online and domain names

  1. What regime governs the protection of trademarks online and domain names?

Apart from the applicable trademark laws, there is generally no specific regime governing the protection of trademarks online and domain names in Singapore. For .sg domain names, including domains comprising or containing trademarks, domain name registration is governed by policies and agreements administered by the Singapore Network Information Centre, while disputes against registered .sg domains are governed by the Singapore Domain Name Dispute Resolution Policy.

LICENSING AND ASSIGNMENT

Licenses

  1. May a license be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement?

The granting of a license under a registered trademark may be recorded, but this is not mandatory. To record the granting of a license in Singapore, the licensee has to file the relevant prescribed form with the Intellectual Property Office of Singapore with all the necessary details, including:

  • the name and address of the licensee;
  • whether the licensee is an exclusive licensee;
  • whether the license is general or limited (and a description of such limitation where applicable); and
  • the duration of the license.

The main benefit of recording the granting of a license is that it provides notice of the licensee’s interests under the registered mark to third parties and shall be prima facie evidence of the transaction. On the other hand, there may be serious consequences if the granting is not recorded. Until an application has been made to register the granting of a license, the same is ineffective against a person that acquires a conflicting interest in or under the registered trademark in ignorance of the license.

Trademark licensing agreements typically include quality control provisions, tie-in clauses and no-challenge clauses.

Assignment

  1. What can be assigned?

A registered trademark or a trademark application may be assigned with or without the goodwill of a business. In addition, an assignment of a registered trademark or trademark application may be for all or only some of the goods or services covered by the registration or application.

Assignment documentation

  1. What documents are required for assignment and what form must they take? What procedures apply?

An assignment of a registered trademark or an application for the registration of a trademark is not effective unless it is in writing, signed by or on behalf of the assignor, or – as the case may be – a personal representative. Notarization is not required.

An application to record an assignment in the trademarks register may be filed either based on the submission of a copy of relevant documentary evidence of the assignment or validation on behalf of the relevant authorizing parties.

Validity of assignment

  1. Must the assignment be recorded for purposes of its validity?

It is not mandatory in Singapore to record the assignment of a registered trademark or any right to it in the trademark register. A failure to record the assignment will not invalidate the transaction. However, until an application has been made for the registration of the assignment, it is ineffective against a person that acquires a conflicting interest in or under the registered trademark in ignorance of the assignment.

In addition, a person who becomes the proprietor of a registered trademark through such an assignment is not entitled to damages, an account of profits or statutory damages in respect of any infringement of the mark that occurs after the date of the assignment and before the date of the application for the registration of the assignment.

Security interests

  1. Are security interests recognized and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

A registered trademark may be the subject of a charge in the same way as applicable to other personal or moveable property. An assignment by way of security of a registered trademark is not effective unless it is in writing, signed by or on behalf of the assignor, or – as the case may be – a personal representative.

Similar to other trademark-related transactions, while the failure to record security interests in a trademark has no effect on its validity, until an application has been made for the registration of the granting of a security interest over a registered trademark or any right in or under it, it is ineffective against a person that acquires a conflicting interest in or under the registered trademark in ignorance of the transaction.

A person who becomes the proprietor of a registered trademark through the granting of a security interest over a registered trademark, or any right in or under it, is not entitled to damages, an account of profits or statutory damages in respect of any infringement of the mark that occurs after the date of the assignment and before the date of the application for the registration of the granting of the security interest.

ENFORCEMENT

Trademark enforcement proceedings

  1. What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialized courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

A proprietor must bring any claim for trademark infringement and passing off in the General Division of the High Court. Where the proprietor is concerned that the alleged infringing acts may continue to take place pending trial (namely, before the court’s determination of the parties’ rights), he or she may apply for interim injunctions subject to a cross-undertaking of damages.

The Trade Marks Act 1998 (the TM Act) contains provisions on offenses that include:

  • counterfeiting a trademark;
  • falsely applying a registered trademark to goods or services;
  • importing or selling goods with a falsely applied trademark; and
  • making or possessing an article specifically designed for making copies of a registered trademark.

Border enforcement measures are also available in Singapore.

Procedural format and timing

  1. What is the format of the infringement proceeding?

In general, civil actions for trademark infringement are commenced by originating claims (the new name for writ actions) and will involve the filing of pleadings, discovery, the exchange of evidence via affidavits and eventually trial in open court. The trial would involve the cross-examination of witnesses and expert witnesses (subject to the court’s approval), and the making of oral or written submissions, or both.

Parties may also agree to dispense with the attendance and cross-examination of witnesses. As there are no jury trials in Singapore, the judge at first instance will decide the case based on the facts and applicable law. It may take approximately 12 to 18 months for the proceedings to be concluded, depending on the complexity of the matter and any interlocutory applications taken out.

That said, following the implementation of the Rules of Court 2021 (ROC 2021), which serves as an overhaul of the local civil procedure rules applicable to proceedings commenced on or after 1 April 2022, the court appears duty-bound to take a more proactive role in the conduct of civil proceedings that may expedite or delay the judicial process.

For instance, the pretrial process has been lengthened significantly with the introduction of case conferences and pretrial conferences, and only one interlocutory application may be made unless the further application is made with the court’s approval or falls within the prescribed exceptions. Additionally, parties now have the duty to consider the amicable resolution of disputes by extending an offer of amicable resolution before commencing an action, unless the party has reasonable grounds not to do so.

In Singapore, criminal proceedings may be commenced against any person for an offence under the TM Act by filing a complaint in the magistrates’ court. This complaint may be filed by any private person or by a police officer, an officer from a law enforcement agency or a person acting with the authority of a public body. On receiving the complaint, the magistrate must immediately examine the complainant under oath and reduce the substance of the examination to writing, which must be signed by the complainant and the magistrate.

In determining whether there are sufficient grounds for proceeding with the complaint, the magistrate may opt to compel the attendance of any person who may render assistance in this regard or direct a police officer to make inquiries to ascertain the truth or falsehood of the complaint. Alternatively, the magistrate may direct parties to attempt an amicable resolution of the complaint or refer them to a mediator from a community mediation center for mediation where appropriate.

Where inquiries have been made (either by the magistrate or by a police officer) and the magistrate ultimately dismisses the complaint, the magistrate must record his or her reasons for the dismissal. Should the accused fail to appear before the magistrate when required to do so, the complaint may be determined in his or her absence. However, such a determination may be liable to being set aside by the accused, subject to the prescribed requirements and limitations.

Finally, the Attorney General (the public prosecutor) may, by fiat and on such terms and conditions as he or she thinks fit, permit any person (including the complainant’s lawyers) to prosecute on the complainant’s behalf.

Burden of proof

  1. What is the burden of proof to establish infringement or dilution?

In Singapore, the claimant in civil cases generally has the legal burden of proving their case on the balance of probabilities.

Standing

  1. Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A trademark owner may bring proceedings in his or her own name. A licensee is generally entitled to call on the proprietor of the registered trademark to take infringement proceedings in respect of any matter that affects his or her interests. If the proprietor refuses to do so or fails to do so within two months of being called upon, the licensee may bring proceedings in his or her own name as if he or she were the proprietor.

Where infringement proceedings are brought by a licensee, the licensee may not, without the leave of the High Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant. Notwithstanding the above, an exclusive license may provide that the licensee shall have, to such extent as may be provided by the license, the same rights and remedies in respect of matters that occur after the grant of the license as if the license had been an assignment.

In such circumstances, the exclusive licensee is entitled, unless subject to the provisions of the license or the TM Act, to bring infringement proceedings against any person other than the proprietor in his or her own name. There is no requirement in relation to standing for bringing a criminal complaint.

Border enforcement and foreign activities

  1. What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Activities that take place outside of Singapore may amount to infringement to the extent that such activities lead to the use of a registered trademark in Singapore; for instance, through the import of infringing goods into Singapore or export of infringing goods out of Singapore.

To avail themselves of the border enforcement measures in Singapore, the registered proprietor of the mark must comply with the formal requirements by making a request by written notice to the Director-General of Customs in Singapore, which will be valid until the 59th day after the day on which the notice was given (namely, 60 days). Besides seizure on request, Singapore Customs may also, on its own initiative, seize copies or goods that are reasonably suspected to be infringing goods that are imported into, or to be exported from, Singapore and notify the proprietor of such seizure.

In either scenario, in the event of seizure, the registered proprietor must commence an action for trademark infringement and notify the Director-General of Customs within 10 working days of the day specified in the notice of seizure issued by the Director-General of Customs. If the proprietor fails to do so, the goods may be released to the relevant dealer (provided that they are not goods to be forfeited to the government). This time limit may be extended by a further 10 working days upon request.

Additionally, if the infringement action has been commenced, but after 22 days from such commencement there is not in force an order of the court preventing the release of the goods, the Director-General must release the goods to the importer or exporter (as the case may be) as soon as possible after the first mentioned day.

Discovery

  1. What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Prior to the commencement of trial, parties must give discovery of any evidence that is relevant to the issues in the case and that is in their possession, custody or power. This duty of disclosure continues throughout the proceedings. If one party believes that the other has given inadequate discovery, they may apply to the court for specific discovery of evidence, subject to certain requirements and limitations. For instance, as a general rule, the court must not order the production of any document that:

  • merely leads a party on a train of inquiry to other documents; or
  • is part of a party’s private or internal correspondence.

Notwithstanding the above, under the ROC 2021, the court has been granted the power to order a broader scope of discovery ‘where it is in the interests of justice to do so’ subject to the court’s determination that such discovery ‘could aid in disposing fairly of the proceedings’. This power of production may also be exercised by the court of its own accord at any time, and it extends even to third parties, subject to certain requirements and limitations. Notably, the court may, on its own accord, order for a person not named as a witness for any party to give evidence orally or by way of an affidavit as an independent witness.

It is also possible to apply for pre-action discovery to compel a party (including third parties) to provide evidence prior to the commencement of an action.

Timing

  1. What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

Such proceedings may last between 12 and 18 months. It is possible for an application for an interim injunction to be heard by the court within a few days. In certain cases where there is no arguable defense to the claims at issue, it may be possible to seek summary judgment without the need for a full trial.

Appeals for infringement or dilution proceedings are to the Appellate Division of the High Court and are only permissible with its leave. Depending on the case, there may lie a further appeal to the Court of Appeal (SGCA) or a transfer of the case from the Appellate Division to the SGCA. The appeal process can range from a few months to one year.

Limitation period

  1. What is the limitation period for filing an infringement action?

A proprietor has up to six years from the date on which the cause of action arose to file an infringement action.

Litigation costs

  1. What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The costs vary depending on the complexity of the issues and evidence involved, as well as the nature of the proceedings. In general, a successful party may recover at least part of its costs from the losing party, but the award of costs is ultimately at the discretion of the court.

Appeals

  1. What avenues of appeal are available?

Appeals against the decisions of a registrar of trademarks are to the General Division of the High Court and the leave of court must be obtained for any further appeal to the Appellate Division or the SGCA, or both (as the case may be). Infringement proceedings are heard in the General Division at the first instance and are appealable to the Appellate Division or the SGCA, or both.

Claims for passing off may be brought in the State Courts or the General Division of the High Court, depending on the quantum of the claim. Appeals from the State Courts are to the General Division of the High Court and any further appeals are to the Appellate Division or the SGCA, or both.

Defenses

  1. What defenses are available to a charge of infringement or dilution, or any related action?

The defenses available under the TM Act include the following, namely that the infringing use:

  • involves the use by the defendant of his or her name, or the name of his or her place of business if such use is in accordance with honest practices;
  • is descriptive of the characteristics or intended purpose of the goods or services;
  • is use that first began before the registration of the mark or the first use by the registered owner of the mark and has been continuously used since then, whichever is the earlier;
  • is use of the defendant’s registered mark;
  • constitutes fair use in comparative commercial advertising or promotion; and
  • is in relation to parallel imports.

Other defenses may be available depending on the facts, such as arguments relating to the owner’s trademark registration being subject to a limitation or disclaimer.

Remedies

  1. What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The remedies available under the TM Act for infringement of a registered trademark include:

  • an injunction;
  • damages;
  • an account of profits;
  • statutory damages;
  • an order for the erasure of the offending sign; and
  • an order for delivery up and disposal of the infringing goods.

Monetary awards are generally assessed on a compensatory basis and the claimant must prove the losses claimed. Preliminary and final injunctions may be available. Preliminary injunctions are generally granted when the balance of convenience lies in favor of granting the injunction. A final injunction is granted after a trial on the merits of the case.

Criminal remedies are typically in the form of fines, imprisonment, and orders for forfeiture and destruction of goods or articles.

ADR

  1. Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR procedures are available subject to the parties’ consent or agreement to submit their dispute to such procedures. In addition, the Intellectual Property of Office of Singapore (IPOS) and the World Intellectual Property Organization Arbitration and Mediation Center have established a joint mediation procedure. This mediation option applies to all trademark proceedings before IPOS with effect from 3 January 2012.

Arbitration is also another option for the resolution of trademark disputes that offers confidentiality. However, owing to the consensual nature of arbitration, any award rendered will only be binding on the parties involved and will not affect third parties. Hence, an arbitral tribunal cannot make findings in relation to matters such as the validity of intellectual property rights.

Finally, parties are now duty-bound to consider an amicable resolution before a case goes to trial. To this end, ADR mechanisms are likely to become more commonplace as IP practitioners adapt to the new ROC 2021.

UPDATE AND TRENDS IN TRADEMARKS IN SINGAPORE

Key developments of the past year

  1. Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

The landmark Court of Appeal (SGCA) ruling in Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911 (Staywell) has often guided the trademark registry and courts in determining the issue of confusing similarity. In particular, the SGCA held that a three-step test is to be applied.

  • Are the competing marks similar?
  • Are the goods or services identical or similar?
  • Is there a likelihood of confusion because of the above?

This is also the same test applied to establish whether there is unauthorized use of a similar mark in an infringement action.

The debate centers on step (1) of the three-step test above. In Staywell, the SGCA held that the comparison is ‘mark for mark without consideration of any external matter’. However, the SGCA also held that distinctiveness – in both its technical and non-technical sense – is a factor integrated into, and not a separate step within, the step (1) inquiry. The SGCA also considered that a mark that ‘has greater technical distinctiveness enjoys a high threshold before a competing sign will be considered dissimilar to it’.

The tension that arises centers around the question of acquired distinctiveness – that is, if a mark can acquire the capacity to act as a badge of origin through long-standing, widespread or heavy use, then evidence of such acquired distinctiveness can be considered at the step (1) stage. However, this seems to be expressly excluded by the holding in Staywell as such evidence would be an external matter.

Decisions at the trademarks registry level have taken opposing views on the matter, primarily owing to confusion stemming from the interplay of Staywell and earlier SGCA decisions such as Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] 2 SLR 941, where evidence of acquired distinctiveness was considered at the step (1) inquiry.

The recent High Court decision of Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2022] SGHC 78, unfortunately, did not shed light on this issue as the judge, in that case, was satisfied that the mark in question was inherently distinctive and thus did not address the IP adjudicator’s acceptance at the trademarks registry level of evidence of acquired distinctiveness at the step (1) inquiry in Combe International Ltd v Dr August Wolff Gmbh & Co KG Arzneimittel [2021] SGIPOS 10.

This debate remains a critical issue because if no evidence can be taken into account as an external matter, then acquired distinctiveness has no place in the step (1) stage, although inherent distinctiveness still underpins the entirety of the comparison exercise. This would greatly impact filing strategy and have consequences in assessing cases for opposition and infringement matters.

Clarity on this issue is highly anticipated and much desired with similar sentiments echoed by the principal assistant registrar who heard the high-profile decision of Twitter, Inc v VV Technology Pte Lts [2022] SGIPOS 4, which is pending appeal.

* The information in this chapter was accurate as at August 2023.

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