Trade Marks Act 1998 · 2020 Revised Edition · Part 2 · Registration of Trade Marks
23. Grounds for invalidity of registration
Feedback & supportThe registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 7.
trade mark
“trade mark” means any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person;
Where the registered trade mark was registered in breach of section 7 in that it is a trade mark mentioned in subsection (1)(b), (c) or (d) of that section, it must not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
The registration of a trade mark may be declared invalid on the ground —
that there is an earlier trade mark in relation to which —
the conditions set out in section 8(1) or (2) apply;
where the trade mark has been registered pursuant to an application for registration of the trade mark made before 1 July 2004 — the conditions set out in section 8(3) apply; or
where the trade mark has been registered pursuant to an application for registration of the trade mark made on or after 1 July 2004 — the conditions set out in section 8(4) apply; or
that there is an earlier right in relation to which the condition set out in section 8(7) is satisfied,unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.
The registration of a trade mark may be declared invalid on the ground of fraud in the registration or that the registration was obtained by misrepresentation.
An application for a declaration of invalidity may be made by any person, and may be made either to the Registrar or to the Court, except that —
Registrar
“Registrar” means the Registrar of Trade Marks mentioned in section 62 and includes any Deputy Registrar of Trade Marks mentioned in that section;
if proceedings concerning the trade mark in question are pending in the Court — the application must be made to the Court; and
if in any other case the application is made to the Registrar — the Registrar may at any stage of the proceedings refer the application to the Court.
An application for a declaration of invalidity of the registration of a trade mark on the ground that it was in breach of section 7(7) must not be made after the expiry of 5 years from —
the date of completion of the registration procedure; or
the date on which use of the trade mark by the person who applied for its registration or the person’s predecessor in title has become generally known in Singapore,whichever is the earlier, unless the applicant shows that the registration of the trade mark was applied for in bad faith.
An application for a declaration of invalidity of the registration of a trade mark on the ground that there is an earlier trade mark in relation to which the conditions set out in section 8(3) or (4) apply —
earlier trade mark
“earlier trade mark” means —(a)a registered trade mark or an international trade mark (Singapore), the application for registration of which was made earlier than the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks; or(b)a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was a well known trade mark,and includes a trade mark in respect of which an application for registration has been made and which, if registered, would be an earlier trade mark by virtue of paragraph (a) subject to its being so registered;
must not be made after the expiry of 5 years from 1 July 2004 or the date of completion of the registration procedure, whichever is the later, unless the applicant for the declaration shows that —
the registration of the later trade mark was applied for in bad faith; or
the later trade mark was never used; and
must not be granted if the registration of the later trade mark was applied for before the earlier trade mark became well known in Singapore, unless the applicant for the declaration shows that the registration of the later trade mark was applied for in bad faith.
In deciding whether the registration of the later trade mark was applied for in bad faith, it is relevant to consider whether the applicant for the registration of the later trade mark had, at the time the applicant’s application was made, knowledge of, or reason to know of, the earlier trade mark.
Where the ground of invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark must be declared invalid as regards those goods or services only.
Where the registration of a trade mark is declared invalid to any extent, the registration is to that extent deemed never to have been made, but this does not affect transactions past and closed.