Trade Marks Act 1998 · 2020 Revised Edition · Part 2 · Registration of Trade Marks
8. Relative grounds for refusal of registration
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A trade mark must not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is sought to be registered are identical with the goods or services for which the earlier trade mark is protected.
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;
A trade mark must not be registered if, because —
it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or
it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,there exists a likelihood of confusion on the part of the public.
Where an application for registration of a trade mark is made before 1 July 2004, if the trade mark —
is identical with or similar to an earlier trade mark; and
is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,the later trade mark must not be registered if —
the earlier trade mark is well known in Singapore;
use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered would indicate a connection between those goods or services and the proprietor of the earlier trade mark;
there exists a likelihood of confusion on the part of the public because of such use; and
the interests of the proprietor of the earlier trade mark are likely to be damaged by such use.
Subject to subsection (5), where an application for registration of a trade mark is made on or after 1 July 2004, if the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark, the later trade mark must not be registered if —
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;
the earlier trade mark is well known in Singapore; and
use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered —
would indicate a connection between those goods or services and the proprietor of the earlier trade mark, and is likely to damage the interests of the proprietor of the earlier trade mark; or
if the earlier trade mark is well known to the public at large in Singapore —
would cause dilution in an unfair manner of the distinctive character of the earlier trade mark; or
would take unfair advantage of the distinctive character of the earlier trade mark.
A trade mark must not be refused registration by virtue of subsection (4) if the application for the registration of the trade mark was filed before the earlier trade mark became well known in Singapore, unless it is shown that the application was made in bad faith.
In deciding whether any such application was made in bad faith, it is relevant to consider whether the applicant had, at the time the application was made, knowledge of, or reason to know of, the earlier trade mark.
A trade mark must not be registered if, or to the extent that, its use in Singapore is liable to be prevented —
by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade; or
by virtue of an earlier right other than those referred to in subsections (1), (2) and (3) or paragraph (a), in particular by virtue of the law of copyright or any law with regard to the protection of designs.
A person entitled under subsection (7) to prevent the use of a trade mark is referred to in this Act as the proprietor of an earlier right in relation to the trade mark.
proprietor
“proprietor” means —(a)in relation to a registered trade mark — the person in whose name the trade mark is registered; or(b)in relation to an unregistered trade mark that is a well known trade mark — the person to whom the trade mark belongs;
The Registrar may, in his or her discretion, register a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.
Registrar
“Registrar” means the Registrar of Trade Marks mentioned in section 62 and includes any Deputy Registrar of Trade Marks mentioned in that section;
The Registrar may, in his or her discretion, register any trade mark mentioned in subsection (3), (4) or (7) where the proprietor of the earlier trade mark or other earlier right fails to give notice to the Registrar of opposition to the registration in accordance with section 13.
register
“register” means the register of trade marks maintained by the Registrar under section 66;
An earlier trade mark that is a registered trade mark whose registration has expired must continue to be taken into account in determining the registrability of the trade mark in question until the date mentioned in subsection (12), unless the Registrar is satisfied that there was no bona fide use of the firstmentioned trade mark during the 2 years immediately preceding that date.
The date mentioned in subsection (11) is the last date specified in this Act or rules made under this Act on which the registration of the earlier trade mark may be restored or renewed.
An earlier trade mark that is an international trade mark (Singapore), whose registration in the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol is not renewed, must continue to be taken into account in determining the registrability of the trade mark in question until the date mentioned in subsection (14), unless the Registrar is satisfied that there was no bona fide use of the firstmentioned trade mark during the 2 years immediately preceding that date.
The date mentioned in subsection (13) is the date the Registrar receives the prescribed notice of non-renewal from the International Bureau.
International Bureau
“International Bureau” has the meaning given by Article 2(1) of the Madrid Protocol;