Trademark Disputes

The primary laws and regulations that govern trademark litigation in Singapore are:

• the Trade Marks Act 1998, which establishes the substantive law on trademarks, including the grounds for infringement and available remedies;
• the Trade Marks Rules, which set out the procedural rules for litigation before the registrar of trademarks;
• the Rules of Court, which govern the procedures for litigation before the Singapore courts; and
• the Evidence Act, which sets out the rules of evidence applicable in all court proceedings.

The key international agreements in the context of trademark litigation are:

• the Paris Convention for the Protection of Industrial Property; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights.

These agreements establish a framework for international cooperation and protection of IP rights, including trademarks. They provide for the following:

• Priority rights: These allow applicants to claim priority based on an earlier trademark application filed in another member country, thus securing an earlier filing date for their application in Singapore.
• Protection of well-known marks: Special protection is granted to well-known trademarks, even if they are not registered in Singapore, against unauthorised use that is likely to cause confusion or dilution.

The responsibility for interpreting and enforcing trademark laws is shared between the registrar of trademarks and the courts. The framework is as follows:

• Registrar of trademarks: The registrar, who is part of the Intellectual Property Office of Singapore (IPOS), plays a crucial role in the initial stages of trademark disputes. The registrar has the power to hear and decide on various trademark-related issues, including:
• • the examination of trademark applications;
  • oppositions; and
  • applications for revocation or invalidity.
• Courts: The Singapore courts – primarily the High Court – have jurisdiction over trademark infringement actions and appeals from the registrar’s decisions. The General Division of the High Court handles all civil IP disputes, including trademark litigation.

Trademark litigation can be heard in two primary forums:

• the Intellectual Property Office of Singapore (IPOS) through the registrar of trademarks; and
• the High Court.

The choice of forum depends on the specific nature of the dispute:

• The registrar of trademarks has jurisdiction over matters such as:
• • oppositions;
  • non-use revocations; and
  • invalidations.
• The High Court:
• • has jurisdiction over trademark infringement actions; and
  • hears appeals from decisions of the registrar.

Trademark infringement and validity can be decided in the same forum. The Trade Marks Act 1998 allows a defendant in an infringement action to raise the invalidity of the plaintiff’s trademark as a defence. This means that both the issue of infringement and the validity of the registration can be determined in the same High Court proceeding.

While the registrar can hear applications for revocation or invalidity, she cannot decide on infringement claims. If an infringement issue arises during proceedings before the registrar, she may refer the matter to the High Court for determination.

The entities responsible for hearing and deciding trademark disputes depend on the nature of the dispute:

• Registrar of trademarks: The registrar, who is part of the IPOS, has the power to hear and decide various trademark matters, including:
• • oppositions;
  • non-use revocations; and
  • invalidations.
• The registrar acts as the sole decision-maker in these proceedings.
• High Court: The General Division of the High Court has jurisdiction over:
• • trademark infringement actions; and
  • appeals from the registrar’s decisions.
• In the High Court, a judge hears and decides the case. There is no provision for a jury in litigation in Singapore.

There are limited avenues for forum shopping. The primary opportunity arises from the choice between initiating proceedings before the registrar of trademarks or directly in the High Court for certain matters.

For matters such as non-use revocation and invalidity, the applicant has the choice of filing with either the registrar or the high court. Key considerations include:

• budget;
• urgency;
• finality; and
• strategic advantages such as:
• • perceived advantages in terms of procedural rules;
  • the expertise of the decision-maker; or
  • the potential to set precedents.

The proprietor of a registered trademark has the primary standing to file suit for trademark infringement. The term ‘proprietor’ encompasses not only the registered owner of the trademark, but also licensees under certain conditions:

• Exclusive licensees can initiate infringement proceedings in their own name if the licence agreement explicitly grants them the same rights and remedies as an assignee.
• Non-exclusive licensees generally cannot sue for infringement independently. They must first request the proprietor to take action. If the proprietor refuses or fails to do so within two months, the licensee may then bring the proceedings in its own name. However, it may need the court’s permission to proceed without joining the proprietor as a party to the lawsuit.

Yes. The Trade Marks Act 1998 does not restrict infringement actions based on the defendant’s residence or place of business.

However, the court’s jurisdiction to hear the case and enforce any judgment against the foreign entity will depend on the establishment of a sufficient connection between the defendant and Singapore.

This can be achieved by demonstrating that:

• the defendant has assets in Singapore;
• the defendant carried out infringing activities in Singapore, such as selling or advertising infringing goods or services in Singapore; or
• the defendant has targeted Singapore consumers through online activities or other means.

However, enforcing a judgment against a foreign entity can be more complex and may require additional steps such as seeking recognition and enforcement of the judgment in the defendant’s home jurisdiction.

Yes.

The key requirement for bringing a joint infringement action is that the defendants must be jointly liable for the infringement. This typically occurs when multiple parties are involved in the infringing activity, such as:

• a manufacturer and a distributor;
• a company and its directors; or
• joint venture partners.

The court has discretion to:

• join additional defendants to an infringement action if it deems their inclusion necessary for the proper adjudication of the case; and
• apportion liability among the defendants based on their respective roles and contributions to the infringement.

Yes. A third party can seek revocation or invalidation of both national and international trademarks designating Singapore.

A third party can apply for the revocation of a trademark registration by filing an application with either the registrar of trademarks or the court on the grounds of non-use.

It can also apply for a declaration of invalidity of a trademark registration. An application for invalidity may be made to either the registrar or the court. The main grounds of invalidity are that:

• the mark is non-distinctive, descriptive or deceptive;
• the registration was applied for in bad faith; or
• the mark conflicts with an earlier trademark or right.

There are no express provisions for declarations of non-infringement or non-invalidity.

However, there may be an indirect way to achieve a similar outcome. If a third party has received threats of infringement from a trademark owner, it can initiate groundless threat proceedings to seek, among other remedies, a declaration that the trademark owner’s threats are unjustifiable. This is effectively like a declaration of non-infringement.

The third party may also challenge the validity of the trademark proprietor’s registration in groundless threat proceedings. If it can successfully prove that the registration is invalid, it will essentially obtain a declaration of non-invalidity.

However, these are indirect approaches and may not provide the same level of certainty or clarity as a direct declaration of non-infringement or non-invalidity available in other jurisdictions.

Trademark infringement occurs when a person, without the consent of the trademark proprietor, uses a sign in the course of trade that is:

• identical to the registered trademark in relation to identical goods or services;
• identical or similar to the registered trademark in relation to similar goods or services, where such use is likely to cause confusion among the public; or
• identical or similar to a well-known trademark, where such use is likely to:
• • cause confusion;
  • indicate a connection with the proprietor; or
  • damage the interests of the proprietor (eg, through dilution or unfair advantage).

Trademark infringement is primarily determined by assessing the likelihood of confusion among consumers.

The court will tend to award higher statutory damages if the infringement is flagrant.

The primary course of action is to initiate civil proceedings in the High Court.

In addition, the Trade Marks Act 1998 provides for criminal offences related to trademark counterfeiting and the false application of trademarks.

Further, the customs authorities are empowered to detain and seize goods suspected of infringing trademarks at the border.

Six years.

Yes. A claimant must make a written offer of amicable resolution before commencing an action, unless it has reasonable grounds not to do so.

However, this is not strictly a notification of the claim itself, but rather an attempt to resolve the dispute before resorting to litigation.

If the material facts are in dispute (they usually are for trademark infringement claims), the claimant must commence proceedings by filing an originating claim. The originating claim:

• may be endorsed generally with a concise description of the claim; or
• may include a statement of claim setting out the material facts constituting the cause of action.

Yes. The claimant may apply for an interim injunction to prevent the alleged infringer from continuing the infringing activity until the matter is resolved.

To succeed, the claimant must demonstrate the need for the interim injunction to protect the claimant’s rights.

Other potential interim remedies include:

• Anton Piller orders (search orders); and
• Mareva injunctions (freezing orders).

The court will usually order security for costs where the claimant:

• is ordinarily resident outside the jurisdiction;
• is a nominal claimant suing for someone else’s benefit; or
• has changed its address to evade the consequences of the litigation.

Generally, parties are obliged to exchange documents in their possession or control that fall into the following categories:

• documents that the party will be relying on; and
• all known adverse documents, meaning documents that a party ought reasonably to know are harmful to its case.

However, the court will not typically order the production of:

• documents that merely lead a party on a train of inquiry to other documents; or
• documents that are part of a party’s private or internal correspondence, unless such correspondence is known to be adverse.

Documents that are subject to privilege or whose production would be contrary to the public interest are also exempt from disclosure.

The court can order the production of documents and information from non-parties. This can be done:

• before the commencement of proceedings; or
• during an ongoing case.

The purpose of such disclosure is typically to:

• identify potential parties to the proceedings; or
• enable a party to trace its property.

However, it is not an automatic right. The requesting party must demonstrate a legitimate need for the information and the court will balance this against:

• the non-party’s interests; and
• any applicable legal protections.

A document that at any time was subject to privilege (eg, legal professional privilege or without prejudice privilege) must not be relied on unless:

• the party entitled to the privilege consents; or
• the court approves.

The court has the discretion to override privilege where it is in the interests of justice to do so.

• Discovery and inspection: Parties can request documents relevant to the case from each other through the discovery process. This includes:
• • documents related to the trademark’s use, registration, sales and marketing; and
  • any evidence of alleged infringement.
• Affidavit evidence: Evidence-in-chief is typically presented through affidavits. Witnesses may be cross-examined on their affidavits during the trial.
• Expert evidence: Expert witnesses may be called to provide opinions on technical or specialised matters. Expert reports are exchanged between the parties and experts may be cross-examined on their reports during the trial.

Expert evidence is permissible in trademark infringement suits, but only with the court’s approval. The court will generally allow expert evidence if it is deemed necessary to assist in understanding technical or specialised aspects of the case, such as:

• the likelihood of confusion between trademarks; or
• the assessment of damages.

Survey evidence is also generally admissible in trademark infringement cases. However, the admissibility and weight given to survey evidence will depend on the quality and methodology of the survey.

Evidence given in judicial proceedings is generally relevant only to the specific proceedings in which it is given. This means that evidence given in criminal proceedings is generally inadmissible in civil proceedings and vice versa.

However, the court has the discretion to admit evidence from other proceedings if it deems this relevant and necessary for the just determination of the case.

In practice, the courts exercise caution when doing so. They will carefully weigh the potential probative value of the evidence against any potential prejudice or unfairness to the parties involved.

The applicable standard of proof in civil proceedings is the balance of probabilities. This means that the party which has the burden of proof must show that its version of events is more likely to be true than not.

The burden of proof generally lies with the claimant. The claimant is thus responsible for proving:

• the validity of its trademark registration;
• the defendant’s use of a similar or identical mark; and
• the likelihood of confusion among consumers.

However, there are instances where the burden shifts to the defendant. This typically occurs when the defendant raises a specific defence such as prior use or a counterclaim.

Common defences include the following:

• Honest concurrent use:
• • The defendant has been using the mark concurrently with the plaintiff; and
  • Its use was in good faith and without knowledge of the plaintiff’s use.
• Other defences: Depending on the specific circumstances, other defences may be available, such as:
• • acquiescence (the claimant’s tolerance of the defendant’s use for a significant period);
  • exhaustion of rights (where the goods were put on the market by the proprietor or with its consent); or
  • fair comparative advertising.

The defendant can challenge the validity of the claimant’s registration on various grounds, such as:

• non-use;
• lack of distinctiveness;
• descriptiveness; or
• prior use.

The defendant typically raises a counterclaim for revocation or invalidity. The court will then hear both the infringement claim and the counterclaim together.

Yes. If a trademark proprietor has acquiesced to the defendant’s use for a significant period, it loses the right to object to the use of the later mark. Other grounds include:

• laches (delay in asserting rights); and
• estoppel (defendant’s reliance on the trademark proprietor’s conduct).

Settlement discussions are strongly encouraged. The Rules of Court impose a duty on parties to consider an amicable resolution of a dispute before the commencement and during the course of proceedings. A plaintiff must make a written offer of amicable resolution before commencing an action unless it has reasonable grounds not to do so; and the defendant must not reject the offer unless it has reasonable grounds to do so. The courts are also empowered to order parties to attempt to resolve a dispute amicably.

Yes.

Only in certain circumstances. For example, if a party informs the court that it does not wish to attempt an amicable resolution of the dispute, the court may order the party to set out its reasons in a sealed submission. Nevertheless:

• the terms of an offer made and not accepted need not be reported to the court; and
• the court will not open a party’s sealed submission until after it has determined the merits of the case.

Generally:

• pre-trial conferences and interlocutory proceedings are heard in the judge’s or registrar’s chambers (attendance is restricted to the parties or their solicitors); and
• trials are heard publicly in open court.

Parties may request the court to:

• impose confidentiality safeguards over certain information; and
• hold a trial or part thereof in private.

The court may conduct a hearing in private if it deems necessary – for example, if in the interests of:

• justice;
• public safety; or
• propriety.

Yes.

Trademark infringement proceedings are broadly divided into the stages of:

• pleadings;
• evidence; and
• trial.

Validity is typically put at issue in the same proceedings and if a separate action has been initiated in respect of validity, the court will generally order the proceedings to be consolidated for efficiency.

• Pleadings: A plaintiff initiates trademark infringement proceedings by filing an originating claim in the High Court and serving it on the defendant. The defendant may then file its defence together with a counterclaim for invalidity and the plaintiff can file a defence to the counterclaim.
• Evidence: The parties:
• • exchange evidence by way of affidavits; and
  • seek discovery of documents.
• Trial: Finally, the case is set down for trial, at which:
• • the parties present their case and examine witnesses where necessary; and
  • the judge either issues a decision or reserves judgment for a later date.

The typical timeframe from initiation to trial is 18-36 months. The courts have recently introduced a simplified process for lower-value, less complex IP claims, which aims to serve as a fast-track procedure. The first case heard under the simplified process took 14 months to judgment.

Yes.

The Singapore courts follow the common law doctrine of stare decisis – they are bound to follow decisions of courts higher in the Singapore judicial hierarchy. Decisions of courts at the same level are persuasive, but not binding.

Singapore courts are not bound by decisions of foreign courts. As inheritors of the English common law tradition, Singapore courts can be persuaded by decisions from common law jurisdictions such as the United Kingdom; however, since the United Kingdom aligned its trademark laws with those of the European Union, the persuasive value of UK precedents has diminished.

Remedies available include:

• injunctions;
• damages;
• accounts of profits; and
• statutory damages.

Statutory damages are available only in infringement actions involving the use of a counterfeit trademark. Damages, accounts of profits and statutory damages are mutually exclusive; but a plaintiff may seek an account of profits in addition to damages if those profits have not been taken into account in computing the damages.

Punitive damages are not generally available for trademark infringement.

Ordinary damages are intended to restore the plaintiff to the position it would have been in had the infringement not been committed. The plaintiff must prove the monetary loss claimed – for example, by assessing lost profits.

In awarding statutory damages, on the other hand, legislation requires the court to consider:

• the flagrancy of the infringement;
• the claimant’s loss;
• the benefit accrued to the defendant; and
• the need for deterrence.

A decision of the General Division of the High Court may be appealed to the Appellate Division of the High Court. The appellant must file a notice of appeal within 28 days of the lower court’s decision, setting out the grounds of appeal – that the court made an error of law or fact.

A further appeal to the apex Court of Appeal may be brought only with leave, which may be granted only if the appeal raises a point of law of public importance.

Each level of appeal may take six to eight months.

Court fees and legal fees will be incurred. The winning party usually recovers:

• its court fees; and
• 50%-60% of its legal costs.

Contingency fees are prohibited in Singapore. The law allows for conditional fee agreements, under which payment cannot be related to the amount that the client won in the proceedings; but these arrangements are only permitted in prescribed categories of proceedings – for example:

• international and domestic arbitration; and
• certain proceedings in the Singapore International Commercial Court.

Third-party litigation funding is permitted only in prescribed categories of proceedings – for example:

• domestic arbitration; and
• proceedings in the Singapore International Commercial Court.

Unregistered marks are protected:

• under the tort of passing off; and
• by well-known mark legislation.

Unregistered foreign trademarks may be enforced in Singapore if they:

• have been used in Singapore (or used overseas but accessible to and actually accessed by the Singapore public); or
• are well known to the Singapore public.

Trademark litigation is increasingly sophisticated, with the appointment of specialist IP judges and the creation of unique IP procedures in the Singapore courts. Multinational companies are also increasingly setting up headquarters in Singapore, so more disputes are likely to be heard in the Singapore courts.

Parties in registry-level disputes should always look for experienced and legally qualified trademark counsel to represent them. Registry proceedings involve strategy and advocacy skills and familiarity with Singapore laws and procedure, and the quality of representation can make a significant difference to the outcome.

As for court disputes, parties should carefully consider the available options under Singapore’s court procedure in view of their aims in the litigation. In some cases, alternative dispute resolution will be the best way to achieve the litigants’ commercial goals; while in others, the simplified process may suffice.