Chapter on Trademarks in Singapore

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By Kevin Wong and Denise Loh (Ella Cheong LLC)

Reproduced with permission from Law Business Research Ltd. This article was first published in Getting the Deal Through: Trademarks 2016, (published in September 2015) For further information please visit www.gettingthedealthrough.com.

1 Ownership of marks

Who may apply?

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

2 Scope of trademark

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

Under the Act, a trademark is defined as any sign capable of being represented graphically and that is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. 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-traditional’ marks that can be represented graphically, such as sounds, to be registrable.

3 Common law trademarks

Can trademark rights be established without registration?

In the absence of trademark registrations, a trader may still rely on the tort of passing off at common law to prevent others from using the trader’s marks or other aspects of the trade get-up to represent that their goods or business are those of the trader’s. This tort is independent of, and can co-exist, with protection under the Act. To succeed in an action for passing off, three elements must be proven, namely, goodwill; misrepresentation; and damage. The claimant has to show that his or her business has goodwill by proving that the mark adopted by the claimant has become associated or identified exclusively with his or her goods or services. Reputation per se may not constitute goodwill in that the element of goodwill requires the claimant to prove that there is a business within Singapore to which goodwill can attach. Second, the claimant must establish a false representation by the defendant that led to, or is likely to lead, to deception or confusion among the public that the trade source or quality of the goods or services offered by the defendant are the same as that of the claimant. Third, the claimant must show that he or she has suffered, or is likely to suffer, damage to his or her goodwill as a result of the defendant’s misrepresentation.

Under the Act, well-known trademarks are entitled to certain protection even if such marks are not registered.

4 Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration? What additional documentation is needed to file a trademark application?

In general, a straightforward national trademark application in Singapore (for which no objections are raised during the examination and no opposition proceedings arise) will take between six to eight months to reach registration. In the event that any objections are raised or oppositions are commenced by third parties, the application process may be delayed. Powers of attorney or certificates of corporate good standing are not required for the filing of trademark applications in Singapore.

5 Classification system

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 10th edition of the Nice Classification of Goods and Services and multi-class applications are available. In relation to the official filing fees, there are no cost savings for multi-class applications.

6 Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? May applicants respond to rejections by the trademark office?

The trademark office will examine trademark applications for registrability on absolute grounds (eg, the mark is devoid of distinctive character, the mark consists exclusively of signs or indications that may serve in trade to designate the characteristics of the goods or services) and also on relative grounds (ie, conflicts with other trademarks). The objections 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 and the registrar accepts the application for registration, the application will proceed to publication in the Trade Marks Journal.

7 Use of a trademark and registration

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 for evidence of use during the course of examination, for example, to demonstrate 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 five years following the date of completion of the registration or run the risk of having the registration revoked. 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 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 and in respect of the same goods or services.

8 Appealing a denied application

Is there an appeal process if the application is denied?

Any appeals against a decision of the Registrar (in relation to the registrability of the mark or the outcome of opposition proceedings) are to be made to the High Court. The appeal procedures are mainly governed by the rules in the Rules of Court. Further appeals from the High Court to the Court of Appeal, the highest appellate court in Singapore, are only possible with leave of court.

9 Third-party opposition

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 for registration, the application will proceed to publication in the Trade Marks Journal. During the two-month period following the publication of the application, any
person may oppose the registration of the mark by lodging a notice of opposition. The grounds of opposition available under the Act include the mark’s lack of inherent distinctiveness, bad faith, confusing similarity to an earlier trademark and where use of the mark is liable to be prevented by virtue of any laws protecting 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 its mark in Singapore.

After registration, a mark may also be cancelled, revoked or invalidated. The cancellation of a trademark can only be made by the registered proprietor by application to the Registry. In contrast, applications for
revocation and invalidation may be made by any person to the 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.

10 Duration and maintenance of registration

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. 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 Act provides that use of a trademark includes use in a form differing in elements which do not alter the distinctive character of the mark in the manner in which it was registered. The Act further provides that use in Singapore includes applying the trademark to goods or to materials for the labelling or packaging of goods in Singapore solely for export purposes.

11 The benefits of registration

What are the benefits of registration?

The proprietor of a registered trademark has the exclusive right to use the trademark and to authorise 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 Act for infringement of his 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 Act in relation to
registered trademarks.

12 Licences

May a licence be recorded against a mark in the jurisdiction? Are there any benefits to doing so or detriments to not doing so?

The grant of a licence under a registered trademark may be recorded, but such a recordal is not mandatory. The main benefit of recording the licence is that it provides notice of the licensee’s interests under the registered mark to third parties.

13 Assignment

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.

14 Assignment documentation

What documents are required for assignment and what form must they take?

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.

15 Validity of assignment

Must the assignment be recorded for purposes of its validity?

Until an application has been made for the registration of the assignment of a registered trademark or any right in it, the assignment is ineffective as against a person acquiring 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 infringement of the mark occurring after the date of the assignment and before the date of the application for the registration of the assignment.

16 Security interests

Are security interests recognised 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 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. 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 as against a person acquiring 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 grant 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 infringement of the mark occurring after the date of the assignment and before the date of the application for the registration of the granting of the security interest.

17 Markings

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 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 importing a reference (express or implied) to registration shall be deemed to be a representation as to registration under the 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.

18 Trademark enforcement proceedings

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 specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

A proprietor must bring any claims for infringement of his or her registered trademark in the High Court. The Act contains provisions on offences that include counterfeiting a trademark, falsely applying a registered trademark to goods or services, importing or selling goods with falsely applied trademark and making or possessing of an article specifically designed for making copies of a registered trademark. Border enforcement measures are also available in Singapore.

19 Procedural format and timing

What is the format of the infringement proceeding?

In general, civil actions for trademark infringement are commenced by 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 the filing of submissions. 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 around 12 to 18 months for the proceedings to be concluded, depending on the complexity of the matter and the interlocutory applications taken out.

20 Burden of proof

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 its case and the relevant standard is on ‘the balance of probabilities’.

21 Standing

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 which affects his or her interests. If the proprietor refuses to do so or fails to do so within two months after 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 licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment. In such circumstances, the exclusive licensee is entitled, unless subject to the provisions of the licence or the 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.

22 Foreign activities

Can activities that take place outside the country of registration support a charge of infringement or dilution?

Activities which take place outside of Singapore may amount to infringement to the extent that such leads 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.

23 Discovery

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

In a trial, parties have to give discovery of evidence which are relevant to the issues in the case and which are in their possession, custody or power. If one party believes that the other has given inadequate discovery, it may apply to the court for specific discovery of evidence. There are some exceptions, which are mainly for evidence covered by legal privilege. It is also possible to apply for pre-action discovery to compel a party to provide
evidence prior to the commencement of an action.

24 Timing

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 to 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 defence 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 Court of Appeal and the appeal process can range from a few months to a year.

25 Litigation costs

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

The costs would 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.

26 Appeals

What avenues of appeal are available?

Appeals against the decisions of a Registrar are to the High Court, and the leave of court must be obtained for any further appeal to the Court of Appeal. Infringement proceedings are heard in the High Court at first instance, and appeals from such proceedings are to the Court of Appeal. Claims for passing off may be brought in the State Courts or the High Court depending on the quantum of the claim. Appeals from the State Courts are to the High Court and any further appeals would be to the Court of Appeal.

27 Defences

What defences are available to a charge of infringement or dilution, or any related action?

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

involves the use by the defendant of his or her name or 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 which first began before the earlier of the registration of the mark or the first use by the registered owner of the mark and has been continuously used since then;
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 defences may be available, depending on the facts, such as arguments relating to the owner’s trademark registration being subject to a limitation or disclaimer.

28 Remedies

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 Act for infringement of a registered trademark include:

an injunction;
damages;
an account of profits;
statutory damages;
an order for 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 favour of granting the injunction. A preliminary injunction may be granted subject to the plaintiff’s undertaking to pay damages to the defendant in the event that the defendant is absolved, or the court subsequently decides that the injunction should not have been granted. A final injunction is granted after a trial on the merits of the case.

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

29 ADR

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

ADR techniques 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 WIPO Arbitration and Mediation Centre 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 which offers confidentiality. However, as a result of 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.

30 Famous foreign trademarks

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?

A well-known trademark can be protected under the Act, regardless of whether the mark has been registered in Singapore and whether the trademark owner has any business or goodwill in Singapore. Further, the Act provides for two different types of well-known marks:

well-known marks (namely marks that are well known to a relevant segment of the public in Singapore); and
marks that are well known to the ‘public at large in Singapore’.

A trademark that is well known to the public at large enjoys broader protection than a trademark that is only well known to a particular segment of the public. The standard of proof in relation to proving that a mark is well-known is high and relevant factors include the duration and extent of use, publicity or advertising as well as independent public recognition of the fame of the mark. The protection granted to well-known marks under the Act is limited to injunctions.

UPDATE & TRENDS

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

A notable development in case law is the shift from the European “global appreciation” approach to the “step-by-step” approach in the assessment of the likelihood of confusion, which is a key element for establishing trademark infringement. In assessing the likelihood of confusion, the approach previously applied in Singapore was to take into account all factors relevant to the marks and goods and services in issue, along with the interdependence between the relevant factors, in particular, the similarity between the marks and between the goods or services. In Fox Street Wear Pte Ltd v Fox Racing, Inc. [2014] SGIPOS 13, the Hearing Officer clarified that the applicable test should be the “step-by-step” approach in light of the Court of Appeal decision in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911. Under the “step-by-step” approach, two threshold requirements must first be fulfilled, namely the similarity or identity of the marks and the similarity and identity of the goods or services. Once these threshold criteria have been met, the issue of the likelihood of confusion then arises and the court will then examine how similar the marks are; how similar the goods or services are; and given this, how likely the relevant segment of the public will be confused.

Another interesting development in recent case law relates to the scope of the “own name” defence to trademark infringement. In Singapore, a person does not infringe a registered trade mark when he uses his name or the name of his predecessor in business or the name of his or his predecessor’s place of business. In The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd [2015] SGHC 77, the High Court confirmed that the “own name” defence extends to use of the name as a trade mark. The court also clarified that the defence extends to the use of a company’s name and held that a company is entitled to rely on either its registered corporate name (without indications of incorporation like “Ltd” or “Pte Ltd”) or its trading name as a defence to trademark infringement, provided that certain conditions are met for the latter.

On the legislative front, the Intellectual Property Office of Singapore is currently reviewing changes to Singapore’s intellectual property laws, including the Trade Marks Act, to enhance border enforcement measures in relation to infringing goods.