IP Law in Singapore - Trademarks
Date: July 10, 2007
Authors: LAC Lawyers
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.
Contact us now for Fast, Accurate and Timely legal advice
Phone LAC Lawyers on NSW 1300 799 888 or VIC 1300 734 638 or send us an email
Am I Being Sued?
Date: March 26, 2010
Author(s): Pheba Netto LL.B. (Hons)
This is the question that one would often ask yourself when you receive a letter from a legal firm. Many people often receive mail, emails, faxes, notifications etc in their mail or by personal service, courier and several other methods notifying them that legal action has commenced or that it is being contemplated. To the ordinary man on the street, this alone can cause a lot of stress and worry and be the root of unnecessary panic and anxiety.
In Brief - The Steps Involved in Commencing and Running a Civil Action
Date: March 15, 2010
Author(s): Pheba Netto LL.B. (Hons)
A brief rundown of the steps involved in running a cicil action. For more information fill free to call LAC Lawyers on 1300 799 888. LAC Lawyers = RESULTS
Intellectual Property - Trade Marks and Parallel Imports
Date: May 04, 2008
Author(s): LAC Lawyers
In certain circumstances where the distributor of a product in Australia is the same as the owner of trade mark overseas a person may purchase the products overseas and distribute the products in Australia. However, the same may not apply where the products are distributed by another third party in Australia.
Intellectual Property - Trade Practices - The Law of Passing Off
Date: August 28, 2009
Author(s): LAC Lawyers
The principle behind the tort of “passing off” is that a person cannot represent their goods or services as those of another. The action for passing off protects business goodwill and reputation from wrongful appropriation.
Intellectual Property - Trademarks and Passing Off
Date: October 10, 2007
Author(s): LAC Lawyers
Under the common law, a person who builds up a reputation in connection with the use of a particular mark will have rights to prevent another person "passing off" goods or services as being those of the owner of the mark if such conduct is likely to injure the proprietor's reputation. The proprietor of a common law trade mark may also be able to prevent registration of a similar trade mark by another party.
Intellectual Property Law - Copyright Law - Internet Service Provider (ISP) not liable for downloading habits of its customers breaching australian copyright laws.
Date: May 17, 2010
Author(s): Michael Pickering B.A., LL.B. (Hons.), LL.M., M. A.
In February 2010, Justice Dennis Cowdroy of the Federal Court of Australia ruled in favor of internet service provider iiNet against the Australian film and television industry.
Intellectual Property Law - IP Law - Copyright - What are your rights?
Date: May 20, 2009
Author(s): LAC Lawyers
Copyright is the exclusive right of an author of an original “work” to reproduce, publish, perform, communicate or make an adaptation of that work exclusively. The “work” referred to means a literary work, dramatic work, musical work, artistic work or a cinematograph film.
Intellectual Property Law - Trade Mark - EJ Gallo Winery v Lion Nathan Australia Pty Limited (2010 HCA 15)
Date: August 23, 2010
Author(s): Allan Woodley B.A., LL.B.
Infringement; revocation for non-use; deceptive similarity; goods of same description; use of trade mark in a different form to that registered; authorised use of trade mark in Australia without knowledge of foreign trade mark proprietor sufficient to defeat non-use revocation action.
Intellectual Property Law - Trade Mark Opposition
Date: August 23, 2010
Author(s): Allan Woodley B.A., LL.B.
Trade mark opposition proceedings are an essential part of any trade mark protection strategy, to maintain the distinctiveness, integrity and value of your brand, as well as protecting the right to commence or continue trading under your trade mark, by preventing others from registering identical or deceptively similar marks.
Intellectual Property Law - Trademark Law - Protecting trademarks worldwide under the Madrid system
Date: May 17, 2010
Author(s): Michael Pickering B.A., LL.B. (Hons.), LL.M., M. A.
The Madrid System for the international registration of trademarks (‘the Madrid System’) was established in 1891.
IP Law - Intellectual Property - Trademarks
Date: April 22, 2009
Author(s): LAC Lawyers
The term “Trade Mark” is defined in the Trade Marks Act as “...a sign used, or intended to be used, to distinguish 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 Benefits of Hiring A Lawyer
Date: August 16, 2006
Author(s): LAC Lawyers
The old adage “you get what you pay for” is as true today as it has ever been.
The Importance of Trade Mark Registration in Protecting Your Business
Date: June 05, 2008
Author(s): LAC Lawyers
All businesses, irrespective of their size, should have a plan in place for protecting their intellectual property. Trademarks are an invaluable business asset and unfortunately many small businesses overlook the significance of trademarks and the importance of registration.
What to expect when you call LAC Lawyers
Date: December 13, 2006
Author(s): LAC Lawyers
LAC Lawyers is a full service firm dedicated to the provision of superior legal services in Australia. Our aim is to provide unrivalled client satisfaction coupled with high quality service and advice. When you call LAC Lawyers our friendly reception staff will spend time with you to identify the area of law your enquiry relates to then pass you on to one of our qualified solicitor's who can help you.
Why stay with your lawyer
Date: August 01, 2006
Author(s): LAC Lawyers
The lawyer/client relationship is a personal one and there are many reasons which will dictate who you can and cannot work with. If you don’t like your lawyer, should you change? Ultimately, the relationship between a lawyer and client must be built on mutual trust.