The The Trade Marks Act (2005 Revised Ed) (Cap. 332), together with its subsidiary legislation which consists of the Trade Marks Rules and Trade Marks (International Registration) Rules, form the legislation governing the registration of trade marks in Singapore.
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The rights conferred by a registered trade mark extend throughout Singapore. It confers on the owner the right to prevent others from using in Singapore as a trade mark, a mark similar to the mark registered, in relation to the same or similar goods or services in Singapore, without the owner's permission. The registered trade mark can last indefinitely, subject to renewal every 10 years. A registered trade mark is a form of property; it can be licensed or assigned.
An individual, firm or company claiming to be the owner of a trade mark can file for a trade mark registration as long as they are using or intend to use the mark in the course of their business. There are no restrictions or discrimination as to nationality or residency. However, an applicant who is not a resident in Singapore must provide the Registry of Trade Marks with an address for service in Singapore to which all correspondence will be sent.
The registration of a trade mark is valid for 10 years from the date of application. Protection can last indefinitely subject to the payment of renewal fees every 10 years, and with proper use of the mark.
The owner of the registered trade mark should use his mark properly and continuously. He should display the trade mark in every medium in which he uses to protect his brand or corporate logo. For example, displaying the mark prominently in packaging, labels, websites, advertisements, press releases, trade shows, business documents and the like.
Furthermore, the trade mark owner should be vigilant to ensure that the trade mark is used in its proper context. For example, he should not use a trade mark to describe the product itself. E.g. use "a XYZ copier" instead of use "a XYZ" and "make two copies on a XYZ copier" instead of "XYZ two copies".
Such good practices may prevent a successful claim by an infringing party (defendant) that the mark has become a "generic" word and thus rendered unenforceable under the law. There are numerous examples of valuable trade mark names that have become common in the trade in this way (e.g. escalator).
'Genericide' occurs when a trade mark, previously used by an individual manufacturer for his products, becomes a description of the product itself.
Whenever and wherever possible, a registered trade mark should be appropriately used to reinforce the trade mark identity with its associated type(s) of goods or services. Legal action must be promptly taken to prevent misuse or infringement of the registered trade mark. In certain circumstances, a trade mark owner who is aware of an infringing use of his trade mark and who has failed continuously for 5 years to object to the use of it, may find that he can no longer oppose the use of that trade mark.
If a registered trade mark has not been used consecutively for five years, there is a risk of the trade mark being removed from the Register. Any interested party can apply to the Registry of Trade Marks to have an inactive registered trade mark removed by showing proof of non-use.
Well known marks are offered greater scope of protection. Even if they are not registered in Singapore, the owner of a well known trade mark may take action against the use of a trade mark/business identifier under the following circumstances:
- The use of the trade mark/business identifier would indicate a connection between those goods or services and the owner of the well known trade mark, and is likely to damage the interests of the owner of the well known trade mark.
- If the trade mark is well known to the public at large in Singapore, where the use of the trade mark/business identifier would:
- cause dilution in an unfair manner of the distinctive character of the well known trade mark; or
- take unfair advantage of the distinctive character of the well known trade mark.
>> Dilution means the lessening of the capacity of the trade mark to identify and distinguish goods or services, regardless of whether
- there is any competition between the owner of the trade mark and any other party; or
- there is any likelihood of confusion on the part of the public.
>> Business identifier means any sign capable of being represented graphically which is used to identify any business.
>> A number of factors may be considered in determining whether a mark is well known in Singapore such as:
- the degree of knowledge/recognition by the relevant sector of the public in Singapore;
- the duration, extent and geographical area of the use or promotion of the mark;
- any registration/application for registration in any country;
- any successful enforcement of the mark in any country;
- any value associated with the mark.
Generally, if a mark is well known to a relevant sector of the public in Singapore, it can be considered well known in Singapore. This "relevant sector" may include actual/potential customers of the goods/services, those involved in the distribution of goods/services or businesses dealing in the goods/services.