IP Law in Singapore - Trademarks

Singapore has a dual system of trade mark law. Protection for trade marks may be available both under the Trade Marks Act (Cap 332) ('TMA') and at common law under the common law action of "Passing Off"

Trade Marks

A trade mark is a type of mark. Traditionally, the term, "trade mark," described only marks designating products, or "goods" (as opposed to services). Increasingly, however, the word is used to describe any type of mark, not just traditional "trade marks."

Service Marks

A service mark is another type of mark. Service marks indicate the source or origin of services (as opposed to goods). For all practical purposes, trade marks and service marks are subject to the same rules of validity, use, protection, and infringement.

Registration under the Trade Marks Act

Marks may be registered with the Registry of Trade Marks within the Intellectual Property Office of Singapore ('IPOS'). In Singapore, marks can be registered in two ways: through (i) a domestic application filed with the Registry of Trade Marks; or (ii) an international application filed under the Madrid Protocol, designating Singapore as a country where protection is sought.

Singapore follows the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

Singapore registrations are issued for an initial term of 10 years. Thereafter, the registration may be renewed for further periods of 10 years. To maintain the trade mark on the register, apart from taking steps to renew it at the appropriate time, it is very important to ensure that there is genuine use of the trade mark in the course of trade in Singapore. This is because non-use for an uninterrupted period of 5 years without proper reason constitutes a ground for revocation of the registration

Enforcement

Trademark enforcement consists of pursuing adverse users. An adverse user is one who is not authorized to use a mark, but uses it anyway, or who is authorized to use the mark, but uses it improperly.

For civil infringement proceedings there are a range of remedies the Court can order, including an injunction, either damages or an account of profits, an order for delivery up and/or disposal of infringing articles in relation to the registered design.

Where the infringement involves the use of a counterfeit trade mark, the Court may even award statutory damages of up to S$1 million without proof of actual loss.

For criminal proceedings, the following infringing acts can give rise to criminal liability: 

• Counterfeiting a registered trade mark.
• Falsely applying a registered trade mark to goods or services.
• Making or possessing articles for committing offences.
• Importing or selling etc goods with falsely applied trade mark.

The Court may impose a fine of up to S$100,000 and/or imprisonment for a maximum term of 5 years.

However in most instances, adverse users may be stopped without litigation, by a friendly contact from the trade mark owner, or a "cease and desist" letter from the owner's solicitors.

Passing Off

The second system of trade mark law in Singapore which is independent of, and can co-exist with, protection under the TMA is the tort of Passing Off.

Three elements that must be proved to succeed in an action for passing

• goodwill;
• misrepresentation; and
• damage.

The remedies available to the successful plaintiff in an action for passing off includes an injunction, damages or account of profits.