Trademark Law Amendments in Singapore

Some of the major developments that have been made to the Singapore trademarks laws in 2004 are as follows:

Well-known marks:- Owners of well-known marks are afforded enhanced protection where third parties either seek to register an identical or similar mark or use such a mark without consent to prevent damage to the owner of the well-known mark. The changes also provide to determine whether a mark is well-known to enhance protection to prevent or deter unscrupulous traders from riding on the goodwill of successful marks.

Unfair advantage:- The concept of dilution and unfair advantage introduced provide enhanced protection to a trademark that qualifies as well as known to the public at large. This protects against the whittling away of a mark’s distinctiveness, either by blurring or by tarnishment.

Statutory damages:- A new form of statutory damage was introduced in the cases of infringement involving the use of a counterfeit trademark. Statutory damage is awarded by the court for each type of goods and services in relation to which the counterfeit trademark has been used. This provision is made to alleviate the burden on IP owners in terms of monetary relief on account of profits in trademark counterfeiting cases.

Powers of arrest, seizure/search:- Specific provisions for the enforcement powers were also introducted. The police is empowered to arrest counterfeiters or imitators of products without a warrant. In addition, officers are also authorized to search and seize, without a warrant, if they suspect counterfeit goods. However, the court must be convinced of the reasonable cause to do so.

Border enforcement measures:- Through the introduction of less onerous notification requirements for customs enforcement action and permitting ex officio measures such as the examination and detention of counterfeit goods, without prior request from trademark owners, enforcement measures were improved which have helped to clamp down on the problem of counterfeit goods by cutting off the supply from factories overseas.

Singapore Treaty on the Law of Trademarks:- With effect from July 2007, the Trademarks Law in Singapore has been revised in order to creating a dynamic and modernized international framework for the harmonization of administrative trademark registration procedure. The Treaty addresses new developments in the field of communication technology and applies to all types of mark, including non-traditional visible marks such as holograms, three-dimensional marks, colour and movement marks, as well as non-visible marks such as sound, olfactory, taste and touch marks. However, this revision is under consideration of the Singapore Government.

Multiple-class registration:- Previously, each trademark application filed in Singapore contained one mark in one class only and each application was assigned a separate trademark number. This resulted in each application being examined, accepted and registered separately with separate deadlines, publication dates and certification of registration. Further, separate renewal applications had to be filed for each registration every 10 years. By the new development a trademark owner is required to file a single trademark application for a mark in respect of two or more goods or service classes, with a view to securing a single registration. Consequently, the mark owner need only renew that single registration for the renewal for all classes of goods and services. These amendments facilitate trademark administration and management to give one deadline and only one trademark number for renewal. Such a multiple-class registration is already in vogue in countries like the US, the UK and Asia-Pacific countries, including India.

Licences relating to pending marks:- The amendments allow for the recordal of licences relating to pending marks. Previously, such licences were recorded only for registered marks. This amendment further assists in protecting a licensee’s rights.

Relief for procedural oversight:- The recent amendments provide for relief measures to alleviate the effects of missed deadlines of the applicant to maintain its rights in applications that have been filled after the time limit, if he meets the following conditions:

The reinstatement application is filed within six months of the expiration of the time limit;
The omitted act is completed together with the application and
The failure to comply with the time limit is unintentional.

In conclusion, the Singapore Treaty represents yet another progressive step in the evolution of Singapore’s IP regime which strive to balance the rights of IP owners fairly with those of the public and will encourage more and more international businesses to embark on value-added activities in Singapore.

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