Singapore Trademark Registration
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.
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
• any value associated with the trademark.
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.