Introduction
The new Trade Marks Act ("the new Act") and new Trade Marks Rules in Singapore, which was expected to have commenced on 31 December 1998 finally came into force on Friday, 15 January 1999. The objectives of the new legislation are to simplify and modernise the trade mark laws, enable Singapore to meet its agreed obligations under TRIPS and the Paris Convention, and enable Singapore to accede to other international agreements relating to trade marks in the future (e.g. the Madrid Protocol).
The new Act is very similar to the UK Trade Marks Act 1994 and also adapts some provisions from the Australian Trade Marks Act 1995. Some of the salient points of the new Act are set out below:
Deadline for Conversion of Pending Applications -- 6 months from Commencement of the New Act.
Applications made under the old Trade Marks Act ("the old Act") would continue to be dealt with under the old Act. However, if a pending application has not been advertised, it can be converted to be examined under the new Act. The notice of conversion, accompanied by an official fee of S$150 (about US$90), must be filed by Thursday, 15 July 1999. Conversion is irrevocable. It should also be noted that the original filing date of a converted application would be lost. A converted application would be given a filing date of 15 January 1999. It is understood that the Registry would conduct a fresh search for conflicting prior rights in the event of a conversion.
In light of the above mentioned deadline, all trade mark applicants are advised to URGENTLY review all their pending applications in Singapore and seek advice on each application; in particular, applications which are facing registrability objections, as to whether they would benefit from such a conversion. This is because the new Act is expected to lower the criteria for registration of trade marks.
Definition of "Trade Mark" -- Sounds and Smells Excluded, 3-Dimensional Marks Included.
A trade mark is "any visually perceptible sign capable of being represented graphically and which 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 term "visually perceptible sign" is significantly absent from the corresponding UK and Australian Acts and this would appear to exclude the registration of sounds and smells in Singapore. However, shapes (including 3-dimensional shapes) and colours can come within the definition of a trade mark. The new application form provides for 3-dimensional marks and colour claims.
(Colour Claims Allowable.
Under the old Act, only a colour limitation clause could be entered on the Register. Now, besides the option of limiting the application mark to certain colours, an applicant can claim colours as a feature of the mark.
Retail Services Registrable.
"Provision" of services is no longer limited to provision for money or money's worth. Therefore, retail services are registrable. The Registry has indicated that retail services are appropriately classified in International Class 35.
One-Part Register.
The existing division of the Register into Part A and B is abolished. Existing trade mark registrations, whether in Part A or B, are taken to be registered trade marks under the new Act.
Multi-Class Applications.
One application to register a trade mark can now cover more than one International Class. However, in practice the Registry treats each class in an application separately. Each class in an application is given a separate filing number and charged a separate and identical official fee.
Grounds for Registration -- Absolute Refusal.
By definition, a trade mark has to be capable of distinguishing the applicant's goods or services from those of others. Further, a trade mark cannot fall within one of the absolute grounds or relative grounds for refusal as set out in the new Act. With a one-part Register under the new Act, the standard for registrability is expected to be lowered to at least the old Part B standard. Whether the standard for registrability would in fact be less stringent than even this remains to be seen. The Registry is expected to follow the standard for registrability under the UK Trade Marks Act 1994.
The absolute grounds for refusal include
- (a)Signs which do not satisfy the statutory definition of a trade mark;
- (b)Trade marks which are devoid of any distinctive character;
- (c)Trade marks which consist exclusively of signs or indications which may serve to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;
- (d)Trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
- (e)Signs which consist exclusively of a functional shape.
With respect to (b) to (d) above, the legislation qualifies these conditions by stating that refusal cannot be based on these grounds if, before the filing date, the trade mark has in fact acquired a distinctive character as a result of use.
Grounds for Registration -- Relative Refusal (Includes Protection for Well Known Marks).
A trade mark cannot be registered if:
- (a)it is identical to an earlier trade mark (pending or registered) and the goods or services are also identical;
- (b)there is a likelihood of confusion arising from the trade mark being identical to the earlier trade mark and the goods or services being similar; or
- (c)there is a likelihood of confusion arising from the trade mark being similar to the earlier trade mark and the goods or services being identical or similar.
It should be noted that the definition of "earlier trade mark" includes a trade mark which is entitled to protection as a well known mark under the Paris Convention or TRIPS Agreement as well as a trade mark entitled to protection in Singapore under the Madrid Protocol (although Singapore is presently not a signatory to the Madrid Protocol).
Further, the proprietor of an earlier trade mark can also prevent the registration of a trade mark which is identical or similar to the earlier trade mark even where the later trade mark is for goods or services which are not similar to those of the earlier trade mark. To do so, the proprietor of the earlier trade mark must show that the earlier trade mark is well known in Singapore, the use of the later trade mark would indicate a connection between the goods or services of the later trade mark and itself, there is a likelihood of public confusion, and its interests are likely to be damaged by such use.
To overcome an objection based on a prior conflicting mark, the trade mark applicant can attempt to satisfy the Registrar that there has been honest concurrent use in Singapore.
Protection for Geographical Indications.
A trade mark containing a geographical indication and used in respect of wines or spirits cannot be registered if the wines or spirits do not originate from the place indicated. This prohibition stands even if the trade mark is accompanied by an indication of the true geographic origins or accompanied by clarifying expressions, for example "kind" or "type".
The new Geographical Indications Act also sets out the causes of action available against a party for the improper use of a geographical indication.
Introduction of Collective Marks.
The new Act defines a collective mark as a sign used, or intended to be used, by members of an association to distinguish their goods or services. The association can apply for the registration of a collective mark which is to be used by its members. The association must file its regulations governing the collective use of the mark for the Registrar's approval.
Defensive Mark Registration Abolished.
The option of obtaining a defensive registration (which cannot be removed on the grounds of non-use) for a well known mark has been abolished.
Association of Marks Abolished.
The association of existing trade mark registrations with other trade marks cease to have effect upon the commencement of the new Act.
Conditions for Registration Abolished.
Any conditions entered on the Register under the old Act cease to have effect upon the commencement of the new Act.
Voluntary Disclaimers.
Under the old Act, the Registrar can impose a disclaimer. Under the new Act, disclaimers are voluntary. However, disclaimers or limitations imposed under the old Act are deemed to be transferred to the new Register.
Amendment of Applications and Registrations Restricted.
The trade mark itself cannot now be amended after the application is filed. Amendments to pending applications are restricted to correcting the name or address of the applicant, errors of wording or copying, or obvious mistakes. Amendments to registrations are restricted to situations where the trade mark includes the proprietor's name or address -- in which case the said name and address can be altered. In all amendments, the identity of the trade mark must not be substantially affected. As for the specification of goods or services, this can be restricted in a pending application. For a registration, the registration can be cancelled in respect of some or all of the goods or services specified.
(Revocation of Acceptance.
The Registrar can now revoke the acceptance of a trade mark application. The grounds for doing so are that there was an error or omission in the course of the examination, or there are special circumstances warranting that the trade mark should not be registered.
Removal of Registration -- Grounds Widened.
A trade mark registration can be revoked if there is non-use of the trade mark or if the trade mark has become generic or deceptive.
In addition, where a registered trade mark contains a geographical indication, the registration may be revoked if the geographical indication does not enjoy protection or has fallen into disuse in its country of origin.
A trade mark registration can also now be invalidated not just on the ground of fraud, but also on the ground that the registration was obtained by misrepresentation or that one of the grounds for the absolute or relative refusal of registration exists.
However, where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of 5 years in the use of a registered trade mark in Singapore, being aware of that use, he cannot apply to invalidate the later trade mark or oppose its use unless the registration of the later trade mark was obtained in bad faith.
Registrable Transactions.
Dealings with a registered trade mark classified as registrable transactions include assignments, licences and the grant of any security interest. If no application is made to register such a transaction, the transaction is ineffective against a person acquiring a conflicting interest in the registered trade mark in ignorance of the transaction. Further, if an application is not made to register a licence agreement, the licensee would not enjoy the statutory rights accorded under the new Act (relating to commencement of proceedings in its own name and its rights and remedies). Also, in infringement proceedings, the assignee or licensee is not entitled to damages or account of profits from the date of the transaction (i.e., the assignment or licence) until the date of application to register the transaction.
Acts of Infringement Widened (Includes Protection for Well Known Marks).
A registered trade mark is infringed:
- (a)by the use of a sign which is identical to the registered trade mark in relation to identical goods or services;
- (b)if there is a likelihood of confusion arising from the use of a sign which is identical to the registered trade mark in relation to similar goods or services; or
- (c)if there is a likelihood of confusion arising from the use of a sign which is similar to the registered trade mark in relation to identical or similar goods or services.
Further, a registered trade mark which is well known in Singapore can be infringed by the use of a sign which is identical or similar to the registered trade mark in relation to goods or services which are not similar to those goods or services of the registered trade mark. The proprietor of the well known mark in Singapore must show that such use would indicate a connection between the dissimilar goods or services and itself, be likely to cause public confusion, and be likely to damage its interests.
Additional Protection for Well-Known Marks.
The proprietor of a trade mark which is entitled to protection under the Paris Convention or the TRIPS Agreement as a well-known mark can restrain the use of an identical or similar mark in relation to identical or similar goods or services, where such use is likely to cause confusion. With respect to this provision, a well-known mark is defined to be a well-known mark in Singapore which belongs to a person who is a national of a Paris Convention country, or is domiciled in or has a business establishment in a Paris Convention country, whether or not that person carries on business, or has any goodwill, in Singapore.
Groundless Threats of Infringement Proceedings.
A person can bring an action for relief from groundless threats of infringement proceedings. The new Act sets out the exceptions and the defence available to this cause of action.
Exhaustion of Rights.
In line with the Singapore Government's policy of free trade, parallel importation is allowed. The relevant provision has been modified from the corresponding UK provision and states that there is no infringement where the goods in question are put on the market (whether in or outside Singapore) under the trade mark by the registered proprietor or with its express or implied consent (conditional or otherwise).
Border Enforcement Measures.
New provisions on border enforcement measures have been introduced. The proprietor of a registered trade mark or a licensee with such power can give the Singapore Director-General of Customs and Excise a written Notice objecting to the importation of infringing goods for the purposes of trade. The Customs Authorities are empowered to seize such goods which bear a sign, or whose packaging bears a sign that, in the opinion of an authorised officer, is identical with or similar to the registered trade mark. However, the seized goods would be released to the importer if the objector does not act to meet the conditions prescribed in the new Act. There are also provisions allowing the importer to forfeit the seized goods to the Singapore Government.
The provisions also set out the powers of the Customs Authorities to search the conveyance, persons and baggage, inspect documents, and examine and remove packages.
A notable exclusion is the fact that the Customs Authorities cannot seize goods in transit. "Goods in transit" are defined as goods which are imported, whether or not landed or transhipped within Singapore, which are to be carried to another country either by the same or another conveyance.
This article is intended to provide a general guide to the subject matter and should not be treated as legal advice. Specific legal advice should be sought by you about your particular case and special circumstances.
For further information/enquiries, please contact:
Mr TAN Bok Hoay / Mr Simon SEOW Donaldson & Burkinshaw 24 Raffles Place Clifford Centre Singapore 048621 Tel No.:(65) 533 9422 Fax No.:(65) 533 7806 E-mail: Click Contact Link
