Trademark rights

Infringement

The use of registered trade marks in the course of trade without the consent of the trade mark owner constitutes infringement.

Using the same trade mark on the same goods or services, or using an identical mark on similar goods or services, or using a similar mark on the same goods or services, will cause confusion to the public and will also constitute infringement.

The use of signs similar to Singapore’s well-known trade marks on goods or services that are different from the well-known trade marks may also constitute infringement if there may be confusion, indicating that it is related to the well-known trade mark or may harm the interests of the owner of the well-known trade mark.

Trade mark owners are responsible for preventing the abuse or infringement of their registered trade marks. When the owner discovers that another party has infringed his registered trade mark, he should immediately take action against the infringing party. If the infringing party has not stopped using the registered trade mark for five consecutive years, it may be deemed that the trade mark owner has consented to such use. Therefore, if the infringement lawsuit begins five years after the infringing use of the mark, the infringing party may defend himself on the basis of a lack of action or protest by the trade mark owner.

Enforcement of registered trade mark rights

Once an infringement of the registered trade mark is established, the trade mark owner can exercise his rights as conferred by Singapore’s Trade Mark Law. He can take legal action against the infringing party by seeking relief in the form of an injunction and either demanding the profits gained at his expense by the infringing party or seeking damages for the loss suffered.

When awarding damages, the court may also make a ruling on account of profits attributable to the infringement that have not been considered in calculating the damages.

In infringement lawsuits involving the use of a counterfeit trade mark in relation to goods or services, the owner of the registered trade mark enjoys the additional alternative remedy of statutory damages.

A counterfeit trade mark is any mark that is identical with or so similar to a registered trade mark as to be calculated to deceive and is applied to goods or services without the owner’s consent, in order to falsely represent the goods or services to be the genuine goods or services of the owner of the registered trade mark.

Revocation

Trade mark registration can be revoked for one of the following reasons:

• Without justifiable reasons, the owner of a registered trade mark has not commenced use of the trade mark within five years of completing the registration process
• The use of the trade mark was suspended for 5 consecutive years without valid reasons
• Due to the actions or omissions of the trade mark owner, the mark has become a common name in the trade for the
  goods or services which it is registered
• The way in which the trade mark is used can mislead the public, especially with regard to the nature, quality or geographical origin of the goods or services requested

Invalidation

Trade mark registration can be declared invalid in one of the following situations:

• The registration violates the basic requirements for trade mark registration as prescribed in the Trade Mark Law;
• The trade mark is in conflict with an earlier trade mark;
• Registration fraud;
• There is a misrepresentation in the trade mark application process;

Alteration of Registered Trade Marks

A registered trade mark can only be altered if the name or address of the property owner included in the trade mark is changed, provided that the name or address change does not have a substantial effect on the identity of the trade mark. Any other changes in the trade mark are not allowed.

Cancellation

The trade mark owner may apply to the trade mark registration office to cancel some or all of the goods or services for which the trade mark is registered.