TRADEMARK LAW OF SINGAPORE

Trademarks are protected in Singapore by virtue of the Trademarks Act 1998, the Geographical Indications Act and the Consumer Protection (Trade Descriptions and Safety Requirements) Act, as well as by virtue of common law rights against passing off. Subsidiary legislation under thevTrademarks Act comprises the Trademarks Rules,vthe Trademarks (International Registration) Rules, the Trademarks (Border Enforcement Measures) Rules and the Trademarks (Composition of Offences) Regulations.

 

UNREGISTERED TRADEMARK 

Passing off: If a trademark is used but not registered in Singapore, the trademark owner may rely on the common law action of passing off to protect its mark. There are three essential elements that a trademark owner must prove in order to succeed in an action for passing off:
• It has goodwill or reputation in the trademark in question;

• The defendant’s use of an identical or similar mark amounts to a misrepresentation leading to confusion or deception; and
• Damage has been caused or is likely to be caused as a result.

 

Well-known marks: Whether or not a mark is registered in Singapore and the owner carries on business or has any goodwill in Singapore, a mark that is well known in Singapore may be entitled to protection (TRIPs).

In deciding whether a trademark is well known in Singapore, the factors to take into account include:
• the degree to which the mark is known to or recognized by any relevant sector of the public;
• the duration, extent and geographical area of any use of the mark, or promotion or publicity of the mark;
• trademark registrations of the mark in any country and the duration of such registrations;
• successful enforcement of rights in other countries and the extent to which the mark has been recognized as well known in other
countries; and
• any value associated with the trademark.

 

 

REGISTRABLE MARKS

A ‘trademark’ is defined in the Trademarks Act as:

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

A ‘sign’ may include any letter, word or character, name, numeral, device, brand, label, ticket, shape, colour or aspect of packaging, or any combination of the above. A slogan is registrable provided it is effective as a badge of origin and not merely a straightforward statement that could apply to any undertaking.
 

Singapore law allows for the registration of trademarks comprising sounds or smells (commonly known as ‘non-conventional trademarks’), but it is not easy to secure acceptance of such marks because of practical problems with their graphical representation and the difficulty of convincing the registrar that the mark is distinctive or effective as an indicator of trade origin of the applicant’s goods or services.

 

 

TERM OF PROTECTION

The registration of a trademark is valid for 10 years from the date of application. It can be renewed indefinitely for 10 years at a time by paying the applicable renewal fee.

 

 

PROCEDURE OF REGISTRATION

Registration of a trademark in Singapore may be obtained by filing a national application with the Singapore Registry of Trademarks, or by designating Singapore in an application filed under the Madrid Protocol. Both types of application will undergo examination by the registry before protection is issued or confirmed.

 

A formalities examination is followed by a substantive examination to consider whether there are absolute grounds for refusal or relative grounds known to the registrar. The specification of goods or services is also examined to ensure:
• compliance with the Nice Classification;

• that the descriptions of goods or services used are not too vague; and/or
• that the range of goods or services claimed is not too wide.

 

Where a trademark application is accepted by the registrar, it will be published in the Trademarks Journal. Publication of the mark
gives third parties the opportunity to oppose protection of the mark in Singapore by filing a notice of opposition.

 

If there is no opposition, or if any opposition filed is unsuccessful, the registrar will issue a registration certificate. The trademark is deemed to be registered as of the date of filing of the trademark application, and remains valid for 10 years, subject to cancellation, revocation or invalidation proceedings.