The Trade Marks (Amendment) Act 2004, which came into force on 1 July 2004, incorporates significant changes to the Trade Marks Act (Chapter 332, 1999 Edition), in line with Singapore’s commitments under the United States of America - Singapore Free-Trade Agreement (USSFTA).
Some of the major changes resulting from the Trade Marks (Amendment) Act 2004 are highlighted below.
Definition of a "trade mark". There is no longer the requirement that a trade mark must be "visually perceptible". This means that it may now be possible to register sound or smell marks provided they meet the current registrability criteria under the Trade Marks Act.
Priority claims. Priority claims are now restricted to an application for a trade mark in Singapore which validly claims the filing date of the first application for that mark in another Paris Convention or World Trade Organisation (WTO) member country.
Registration date. The registration date of a trade mark filed on or after 1 July 2004 will backdate to the filing date even for applications claiming Convention priority. Renewals of the registered mark will be calculated from the registration date accordingly.
Late renewal. The renewal of a trade mark registration due on or after 1 July 2004 may be filed within 6 months after the date of expiry of the registration with payment of an additional penalty fee. If the mark is not renewed within this period, it will be removed from the register and an application to restore the mark would have to be filed for the Registrar’s consideration within 6 months from the date of such removal.
Well known marks. The well known mark provisions of the Trade Marks Act have been expanded upon and the definition and guidelines for determination of a well known mark clarified.
Subject to certain exceptions and defences, the new provisions further provide for enhanced protection of well known marks in respect of the following:
- Registration of trade marks by third parties
- Use as a trade mark by third parties
- Use as a business identifier by third parties
The grounds of such enhanced protection are summarised below.
Trade connection
A trade mark that is well known in Singapore [as from 1 July 2004 onwards] is afforded protection where:
- the use, in relation to the goods or services claimed, of a trade mark [applied for on or after 1 July 2004];
- the unauthorised use [on or after 1 July 2004], in the course of trade, and in relation to any goods or services, of a trade mark; or
- the unauthorised use [on or after 1 July 2004] of a business identifier,
the whole or an essential part of which is identical with or similar to the well known mark, would indicate a connection between those goods and services and the proprietor of the well known mark, and is likely to damage the interests of the proprietor of the well known mark. "Business identifier" is a new term defined as "any sign capable of being represented graphically which is used to identify any business."
There is no longer the requirement of "likelihood of confusion" under this ground.
Dilution / Unfair advantage
The new concepts of dilution and unfair advantage have been introduced and provide enhanced protection to a trade mark that qualifies as "well known to the public at large in Singapore" as from 1 July 2004 onwards ("the Mark"); where
- the use, in relation to the goods or services claimed, of a trade mark [applied for on or after 1 July 2004];
- the unauthorised use [on or after 1 July 2004], in the course of trade, and in relation to any goods or services, of a trade mark; or
- the unauthorised use [on or after 1 July 2004] of a business identifier,
the whole or an essential part of which is identical with or similar to the Mark, would
- cause dilution in an unfair manner of the distinctive character of the Mark; or
- take unfair advantage of the distinctive character of the Mark.
"Dilution" is defined as "the lessening of the capacity of the trade mark to identify or distinguish goods or services, regardless of whether there is any competition between the proprietor of the trade mark and any other party, or any likelihood of confusion on the part of the public."
Statutory damages. A new relief of statutory damages has been introduced and may be granted by the Court in cases of infringement committed after 1 July 2004 involving the use of a counterfeit trade mark. In particular, the Court may award statutory damages not exceeding $100,000 for each type of goods or service in relation to which the counterfeit trade mark has been used; and not exceeding a total of $1 million, unless the plaintiff proves that his actual loss from such infringement exceeds $1 million.
Powers of arrest, search and seizure. Specific provisions in the trade marks legislation for increased enforcement powers have been introduced to substitute the relevant provisions of the Criminal Procedure Code (Chapter 68) existing prior to 1 July 2004 that have been consequentially amended.
Border enforcement measures. Border measures have been improved through the introduction of less onerous notification requirements for Customs enforcement action, as well as provisions permitting ex officio measures such as the examination and detention of counterfeit goods.
Licences. A licence to use a registered trade mark is now binding on every successor in title to the grantor's interest:
- except any person who, in good faith and without any notice (actual or constructive) of the licence, has given valuable consideration for the interest in mark; or
- unless the licence provides otherwise.
Further, every person shall be deemed to have notice of a licence if the licence is recorded on the register. [These provisions only apply to an application made on or after 1 July 2004 to record a licence.]
In addition, the administrative requirements concerning licences have been relaxed, to the extent that the failure to register the grant of a licence on the register will no longer disentitle the licensee to enforcement rights and damages, an account of profits or statutory damages for infringement.
These latest changes to the trade marks legislation are part of a concerted effort by the Singapore Government to consolidate Singapore's leading position amongst countries where valuable IP rights are respected and protected, as well as to complement its aim to develop into the region’s IP hub. They also reflect Singapore's proactive approach in developing laws, suitable for small countries, which strive to fairly balance the rights of IP owners with those of the public.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.