South-East Asia IPR Basics Series: Trade Marks in Singapore

4456318373_3de7f12009_zSouth East Asia is one of the world’s fastest growing markets, with several strong emerging economies and rapid development across a wide number industrial sectors throughout the region.

Over the next few weeks, we’ll be writing a series of guides to the current state of play in the various jurisdictions’ IPR frameworks and the procedures through which SMEs can gain protection for their intellectual property, and, where necessary, enforce their rights.

We’ll be starting the series with Singapore, with perhaps the most developed IP legal system in place and one of the freest and most competitive economies in the world.

Singapore and the EU: a background for SMEs

The Republic of Singapore is a leading global city-state and island country in Southeast Asia, lying off the southern tip of the Malay Peninsula. As one of the original four ‘Asian Tigers’ Singapore is a world leader in several economic areas, the world’s fourth leading financial centre, and the only Asian country to receive a AAA credit rating from all three major credit rating agencies[1].

Singapore is widely known as one of the freest, most innovative, and most competitive economies in the world. It is also widely accepted as a business friendly trade hub, with the World Bank naming Singapore the easiest place in the world to do business[2].

Out of the 10 members of the Association of Southeast Asian Nations (ASEAN), Singapore is Europe’s largest trading partner and 15th largest trading partner worldwide.

The Singaporean Intellectual Property (IP) legal framework is very comprehensive and is generally considered to be one of the most thorough in Asia. Singapore is a member of the following international conventions regulating IP matters[3]:

  • The Madrid Agreement concerning the International Registration of Marks
  • The Patent Cooperation treaty
  • The WIPO Copyright Treaty
  • The NICE Agreement concerning the International Classification of Goods and services
  • The Berne Convention for the Protection of Literary and Artistic Works

SMEs are reminded that IP rights are territorial, and accession to these treaties governs only the scope and availability of protection in Singapore and does not grant blanket protection for those who hold registrations in other member nations. Furthermore, it should be noted that Singapore operates a ‘first-to-file’ system, meaning that the first to file an application for an IP right in the Singaporean jurisdiction will own that right once the application is granted.

Trade marks in Singapore

shutterstock_81193486-520x345A trade mark is a sign such as a word, device, brand, shape, colour or any combination of these elements, which is capable of being graphically represented and being used by a person in the course of trade to distinguish his goods or services from another person’s. In Singapore three-dimensional signs (shapes) and sounds can also be registered as trade marks, however trade marks based on taste and smell are not recognised.

The law also provides a number of circumstances under which a mark is not eligible for protection, such as when it is identical with or confusingly similar to national flags or emblems, or when it would cause misunderstanding or confusion as to the origin, properties, quality, or other characteristics of the goods or services. It also cannot be identical or confusingly similar to another person’s mark already registered or used for identical or similar goods or services.

Protection for trade marks in Singapore

Protection for registered trade marks enjoy statutory protection in Singapore under the Singapore Trade Marks Act[4] through which the registered proprietor has certain remedies available to him in the event that his trade mark is infringed.

A trade mark does not generally have to be in use before it is applied for or registered, although all applications for registration should be on the basis that there is existing use or an intention to use the mark in the course of trade. In the case of weaker or less distinctive marks the trade mark registry office may require the applicant to establish use whilst examining trade mark applications. This being said, it is important to remember, as mentioned above, Singapore operates a ‘first-to-file’ system and early application for trade marks, ideally before release of products and services into the market is recommended.

Where trade marks are granted before actual use, the right holder, or his licensee must put the mark to genuine use in the course of trade within five years from the date of completion of the registration procedure, or risk the registration being revoked for non-use.

Common law, the tort of ‘passing off’

Where trade marks have not been formally registered, a mark which is used by a trader in the course of his trade may still be protected under the common law tort of ‘passing off’. The law of passing off essentially prevents other traders from unfairly benefiting from the goodwill that that has been built up by a trader. Three factors need to be proved before a claim of passing off can succeed:

  1. That the original user of the mark has established goodwill for the trade mark within Singapore.
  2. That the defendant’s conduct has lead the public to believe that his goods or services are goods or services of the plaintiff (this is usually referred to as the Misrepresentation element); and
  3. As a result of the misrepresentation, the original user has suffered damage.

Once these conditions are met the original user will have a right to action against the infringer. However, the legal remedies available in such a case are more limited than if the mark had been registered.

Passing off actions should be used as a last resort as it can be costly to start a civil action in which expenses are likely to be incurred in proving goodwill. Where possible, rights owner should base their protection on the registered trade mark.

Obtaining trade mark registrations in Singapore

Applications for trade mark registrations in Singapore can be made by any individual, firm, or company claiming to be the owner of the mark. Whilst there are no restrictions as to nationality or residency, a Singapore address must be provided for the service, to which all correspondence will be sent.

Applications must be submitted in English to the Intellectual Property Office of Singapore (IPOS), using the official form[5] found online via eTrademarks[6], or by post/in person to the Registrar of Trade Marks. If you have engaged an agent to submit applications on your behalf, IPOS may require that your agent produce evidence of his authority to do so.

IPOS will assess the application to ensure that all formalities are met before conducting the relevant searches and examination to ensure that the mark applied for is registrable. Once this is completed, the application will be published, and, provided no oppositions are filed against the application within two months of publication, the trade mark will proceed to registration.

At time of writing, the basic filing fee (charged by IPOS) for application in one class[7] is around EUR 210 (341 Singapore dollars). There are also further fees applicable for subsequent steps in the application process which vary dependant on the details of the application.

Once registered, statutory protection for registered marks can last indefinitely, although renewal applications must be filed every ten years.

For further details and information on the application and registration process, along with guidance notes on the filling and filing of forms please refer to the IPOS website.

Registrations by post or in person should be made to this address:

Intellectual Property of Singapore
51 Bras Basah Road #04-01
Manulife Centre
Singapore
189554
Tel: (65) 6339 8616

Geographical Indications in Singapore

A Geographical Indication (GI) is a distinctive sign used to identify a product as originating in the territory of a particular country, region or locality where its quality, reputation or other characteristic is linked to its geographical origin. GIs differ from trade marks in the sense that GIs may be used by all producers or traders whose products originate from that place and which share the particular quality, reputation or other characteristics, while trade marks may only be used by the trade mark owner, or with the owner’s consent. ‘Champagne’ from France, ‘Parmigiano-Reggiano’ from Italy, ‘Scotch Whiskey’ from Scotland and ‘Feta cheese’ from Greece are all examples of European GIs.

Singapore has so protected a small number of European GIs as trade marks, but has not offered any specific GI protection as such. Under the incoming EU-Singapore Free Trade Agreement (EUSFTA), Singapore has agreed to set up a new register for GIs and to provide specific GI protection. Initially, this register will consist of 196 agreed EU GIs.

The Singapore Parliament has recently passed the Geographical Indications Bill (Bill No. 13/2014) which paves the way for this new register and protection scheme and Singapore has already carried out a public consultation on the first batch of GI terms which the EU has put forward for initial protection in Singapore. Once up and running the new system will be open for additional GI applications, interested parties can follow the progress of the EUSFTA and GI protection in Singapore on the Singapore section of the DG Trade website.

Enforcement

Singaporean IP law offers three main avenues of enforcement for those facing infringement of trade marks; civil litigation, criminal prosecution, and customs seizures. Unlike most ASEAN countries, there are no administrative actions available in Singapore. However, there is a dedicated section within the police the Intellectual Property Rights Branch of the Criminal Investigation Department, that undertake police raids following complaint by the rights owner. In the event that there is no settlement following a raid, the rights owner can apply for permission from the Attorney General to commence prosecution by the rights owner’s appointed attorney. In cases which are of some public interest or of special significance, the Attorney General may take over the prosecution. In many cases however, private mediation via legal professionals is more effective and should be considered as a viable option. For trade mark issues, mediation is often an effective tool which, given the severity of penalties for infringement in Singapore, will often result in a favourable outcome, as well as representing a considerable saving over civil or criminal actions.

Civil litigation proceedings can be initiated with the Courts, which may award remedies including damages (or an account of profits), statutory damages, injunctions, and/or destruction orders for infringing goods.

Where infringers are charged in the criminal courts, penalties include a fine and in cases where the infringement is severe (based on quantity) the court has been known to hand down terms of imprisonment. Criminal actions usually does not result in any compensation for the rights holder, however civil proceedings can be pursued as a parallel claim and criminal conviction will considerably strengthen the case in civil courts.

It should be noted that the Singapore Trade Marks Act contains provisions against groundless threats of legal action. Therefore, any proposed demand letter should be carefully drafted to make clear the legal basis upon which your potential infringement claim is premised. A statement which merely notifies the other party of the existence of a trade mark registration does not constitute a threat of proceedings.

For more information on Singapore IPR or for free tailored advice relevant to your business, get in touch with our experts today!

[1] http://www.nbcnews.com/id/44020687/ns/business-world_business/t/remaining-countries-aaa-credit-ratings/

[2] http://www.bloomberg.com/news/articles/2011-08-10/singapore-miracle-dimming-as-income-gap-widens-squeeze-by-rich

[3] For more information on these international conventions see the WIPO website http://www.wipo.int/treaties/en

[4] http://www.wipo.int/wipolex/en/details.jsp?id=5299

[5]http://www.ipos.gov.sg/Services/FilingandRegistration/FormsandFees/TradeMarks.aspx

[6] www.ipos.gov.sg/services/filingandregistration.aspx

[7] The NICE classification system is used.

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