Trade Marks (Amendment) Bill

This Act may be cited as the Trade Marks (Amendment) Act 2004 and shall come into operation on such date as the Minister may, by notification in the Gazette, appoint.

Section 2 of the Trade Marks Act (referred to in this Act as the principal Act) is amended —

by inserting, immediately after the definition of “business” in subsection (1), the following definition:“ “business identifier” means any sign capable of being represented graphically which is used to identify any business;”;

by inserting, immediately after the definition of “Court” in subsection (1), the following definition:“ “dilution”, in relation to a trade mark, 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 proprietor of the trade mark and any other party; or

any likelihood of confusion on the part of the public;”;

by deleting the words “entitled to protection under the Paris Convention or the TRIPS Agreement as” in paragraph (b) of the definition of “earlier trade mark” in subsection (1);

by deleting the definition of “proprietor” in subsection (1) and substituting the following definition:“ “proprietor” means —

in relation to a registered trade mark, the person in whose name the trade mark is registered; or

in relation to an unregistered trade mark that is a well known trade mark, the person to whom the trade mark belongs;”;

by deleting the words “visually perceptible” in the definition of “trade mark” in subsection (1);

by inserting, immediately after the definition of “TRIPS Agreement” in subsection (1), the following definition:“ “well known trade mark” means —

any registered trade mark that is well known in Singapore; or

any unregistered trade mark that is well known in Singapore and that belongs to a person who —

is a national of a Convention country; or

is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country, whether or not that person carries on business, or has any goodwill, in Singapore;”; and

by deleting subsection (7) and substituting the following subsections:“(7) Subject to subsection (8), in deciding, for the purposes of this Act, whether a trade mark is well known in Singapore, it shall be relevant to take into account any matter from which it may be inferred that the trade mark is well known, including such of the following matters as may be relevant:

the degree to which the trade mark is known to or recognised by any relevant sector of the public in Singapore;

the duration, extent and geographical area of —

any use of the trade mark; or

any promotion of the trade mark, including any advertising of, any publicity given to, or any presentation at any fair or exhibition of, the goods or services to which the trade mark is applied;

any registration or application for the registration of the trade mark in any country or territory in which the trade mark is used or recognised, and the duration of such registration or application;

any successful enforcement of any right in the trade mark in any country or territory, and the extent to which the trade mark was recognised as well known by the competent authorities of that country or territory;

any value associated with the trade mark.

Where it is determined that a trade mark is well known to any relevant sector of the public in Singapore, the trade mark shall be deemed to be well known in Singapore.

In subsections (7) and (8), “relevant sector of the public in Singapore” includes any of the following:

all actual consumers and potential consumers in Singapore of the goods or services to which the trade mark is applied;

all persons in Singapore involved in the distribution of the goods or services to which the trade mark is applied;

all businesses and companies in Singapore dealing in the goods or services to which the trade mark is applied.”.

Section 3 of the principal Act is amended —

by deleting subsection (1) and substituting the following subsection:“(1) For the purposes of this Act —

“infringing goods”, “infringing material” and “infringing articles” shall be construed in accordance with subsections (2), (3) and (4), respectively; and

“counterfeit goods” and “counterfeit trade mark” shall be construed in accordance with subsections (5) and (6), respectively.”;

by deleting the word “predominantly” in subsection (4)(a);

by inserting, immediately after subsection (4), the following subsections:“(5) Goods are “counterfeit goods”, in relation to a registered trade mark, if —

they are infringing goods in relation to that mark; and

the sign borne by them or their packaging is a counterfeit trade mark.

A sign is a “counterfeit trade mark”, in relation to a registered trade mark, if the sign —

is identical with or so nearly resembling the registered trade mark as to be calculated to deceive; and

is applied to goods or services —

without the express or implied consent (conditional or otherwise) of the proprietor of the registered trade mark; and

to falsely represent the goods or services to be the genuine goods or actual services of the proprietor or a licensee of the registered trade mark.”; and

by deleting the section heading and substituting the following section heading:“Meaning of infringing goods, material or articles and counterfeit goods or trade mark”.

Section 5 of the principal Act is amended —

by deleting subsection (2) and substituting the following subsection:“(2) The application shall —

contain a request for the registration of a trade mark;

state the name and address of the applicant;

contain a clear representation of the trade mark;

list the goods or services in relation to which the applicant seeks to register the trade mark; and

state —

that the trade mark is being used in the course of trade, by the applicant or with his consent, in relation to those goods or services; or

that the applicant has a bona fide intention that the trade mark should be so used.”; and

by inserting, immediately after subsection (3), the following subsection:“(4) The date of the application for registration of the trade mark shall be the earliest date on which —

all the requirements under subsection (2) have been satisfied; and

all the fees payable under subsection (3) —

have been paid; or

are treated by the Registrar as paid.”.

Section 8 of the principal Act is amended —

by deleting subsection (3) and substituting the following subsections:“(3) Where an application for registration of a trade mark is made before 1st 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 shall 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 (3B), where an application for registration of a trade mark is made on or after 1st 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 shall not be registered if —

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 shall not be refused registration by virtue of subsection (3A) 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 shall be 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.”; and

by inserting, immediately after subsection (6), the following subsection:“(6A) The Registrar may, in his discretion, register any trade mark referred to in subsection (3), (3A) or (4) 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.”.

Section 10 of the principal Act is amended —

by deleting subsections (1), (2) and (3) and substituting the following subsections:“(1) Subject to subsection (6), where —

a person has filed an application for the registration of a trade mark in a Convention country in respect of certain goods or services;

that application is the first application for the registration of the trade mark to be filed in any Convention country in respect of those goods or services (referred to in this section as the first Convention application); and

within 6 months after the date on which the first Convention application is filed, that person or his successor in title applies under this Act for the registration of the trade mark in respect of all or any of those goods or services,that person or his successor in title may, when filing the application under this Act, claim a right of priority for the registration of the trade mark in respect of all or any of the goods or services for which registration was sought in the first Convention application.

Where any person claims the right of priority referred to in subsection (1), the person shall have priority from (and including) the date on which the first Convention application was filed.

Where the right of priority referred to in subsection (1) is claimed in respect of a trade mark, the registrability of the trade mark shall not be affected by any use of the trade mark in Singapore in the period between —

the date the first Convention application was filed; and

the date the application under this Act was filed.”; and

by deleting subsection (6) and substituting the following subsections:“(6) Where a subsequent application concerning the same subject as an earlier application is filed, whether in the same or a different Convention country, and these are the first 2 applications concerning that subject to be filed in any Convention country, the subsequent application shall be considered the first Convention application if, at the date the subsequent application is filed —

the earlier application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and

the earlier application has not yet served as a basis for claiming a right of priority.

For the avoidance of doubt, where subsection (6) applies —

the date on which the subsequent application was filed, rather than that of the earlier application, shall be considered the starting date of the period of priority under subsection (2); and

the earlier application may not thereafter serve as a basis for claiming a right of priority.”.

Section 15 of the principal Act is amended —

by deleting the words “Subject to subsections (3) and (4), a” in subsection (2) and substituting the word “A”; and

by deleting subsections (3) and (4).

Section 19 of the principal Act is amended —

by deleting the words “prescribed renewal fee” in subsection (1) and substituting the words “fee referred to in subsection (3A) or the fees referred to in subsection (3B), as the case may be”; and

by deleting subsection (3) and substituting the following subsections:“(3) A request for renewal shall be made not later than 6 months after the date of expiry of the registration.

Where the request for renewal is made on or before the date of expiry of the registration, the fee payable shall be the prescribed renewal fee.

Where the request for renewal is made within the period of 6 months after the date of expiry of the registration, the fees payable shall be the prescribed renewal fee and the prescribed late renewal fee.”.

Section 23 of the principal Act is amended —

by deleting paragraph (a) of subsection (3) and substituting the following paragraph:“(a)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 1st 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 1st July 2004, the conditions set out in section 8(3A) apply; or”; and

by deleting subsection (6) and substituting the following subsections:“(6) 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) shall 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 his 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 (3A) apply —

shall not be made after the expiry of 5 years from 1st 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

shall 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 shall be relevant to consider whether the applicant for the registration of the later trade mark had, at the time his application was made, knowledge of, or reason to know of, the earlier trade mark.”.

Section 24 of the principal Act is amended by inserting, immediately after subsection (2), the following subsection:“(3) For the purposes of subsection (1), in deciding whether the registration of the later trade mark was applied for in bad faith, it shall be relevant to consider whether the applicant for the registration of the later trade mark had, at the time his application was made, knowledge of, or reason to know of, the earlier trade mark or other right.”.

Section 27 of the principal Act is amended —

by deleting the words “, sections 28 and 29” in subsection (4) and substituting the words “and sections 28, 29 and 31”;

by deleting the words “commercial document” in subsection (4)(d) and substituting the words “commercial document, including any such document in any medium”; and

by deleting subsection (6).

Section 28 of the principal Act is amended by inserting, immediately after subsection (3), the following subsection:“(4) Notwithstanding section 27, a person who uses a registered trade mark does not infringe the trade mark if such use —

constitutes fair use in comparative commercial advertising or promotion;

is for a non-commercial purpose; or

is for the purpose of news reporting or news commentary.”.

Section 29 of the principal Act is amended by deleting subsection (2) and substituting the following subsection:“(2) Subsection (1) shall not apply where —

the condition of the goods has been changed or impaired after they have been put on the market; and

the use of the registered trade mark in relation to those goods has caused dilution in an unfair manner of the distinctive character of the registered trade mark.”.

Section 31 of the principal Act is amended by deleting subsection (2) and substituting the following subsections:“(2) Subject to the provisions of this Act, in an action for an infringement, the types of relief that the Court may grant include the following:

an injunction (subject to such terms, if any, as the Court thinks fit);

damages;

an account of profits;

in any case to which subsection (5) applies, statutory damages under subsection (5)(c).

When the Court awards any damages under subsection (2)(b), the Court may also make an order under subsection (2)(c) for an account of any profits attributable to the infringement that have not been taken into account in computing the damages.

Except as provided for in subsection (3), the types of relief referred to in paragraphs (b), (c) and (d) of subsection (2) are mutually exclusive.

In any action for infringement of a registered trade mark where the infringement involves the use of a counterfeit trade mark in relation to goods or services, the plaintiff shall be entitled, at his election, to —

damages and an account of any profits attributable to the infringement that have not been taken into account in computing the damages;

an account of profits; or

statutory damages —

not exceeding $100,000 for each type of goods or service in relation to which the counterfeit trade mark has been used; and

not exceeding in the aggregate $1 million, unless the plaintiff proves that his actual loss from such infringement exceeds $1 million.

In awarding statutory damages under subsection (5)(c), the Court shall have regard to —

the flagrancy of the infringement of the registered trade mark;

any loss that the plaintiff has suffered or is likely to suffer by reason of the infringement;

any benefit shown to have accrued to the defendant by reason of the infringement;

the need to deter other similar instances of infringement; and

all other relevant matters.”.

Section 32 of the principal Act is amended —

by deleting the word “Where” in subsection (1) and substituting the words “Subject to subsection (3), where”; and

by inserting, immediately after subsection (2), the following subsection:“(3) Where a person who is found to have infringed a registered trade mark has in his possession, custody or control any counterfeit goods, the Court shall order that the counterfeit goods be delivered up to such person as the Court may direct for destruction if —

the plaintiff applies to the Court for such an order; and

the Court is of the view that there are no exceptional circumstances which justify the refusal of such an order.”.

Section 34 of the principal Act is amended —

by inserting, immediately after subsection (2), the following subsection:“(2A) Notwithstanding subsection (2), where the infringing goods are counterfeit goods, the Court shall order that the goods be destroyed if —

the plaintiff applies to the Court for such an order; and

the Court is of the view that there are no exceptional circumstances which justify the refusal of such an order.”; and

by deleting the word “Where” in subsection (6) and substituting the words “Subject to subsection (2A), where”.

Section 39 of the principal Act is amended by deleting subsections (3) and (4) and substituting the following subsections:“(3) Until an application has been made for the registration of the prescribed particulars of a registrable transaction referred to in subsection (2)(a), (c), (d) or (e), the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of the transaction.

A person who becomes the proprietor of a registered trade mark by virtue of any registrable transaction referred to in subsection (2)(a), (c), (d) or (e) is not entitled to damages, an account of profits or statutory damages under section 31(5)(c) in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the date of the application for the registration of the prescribed particulars of the transaction.

For the avoidance of doubt, subsections (3) and (4) shall not apply to any registrable transaction relating to —

a licence under a registered trade mark; or

any right in or under the licence.”.

Section 42 of the principal Act is amended by deleting subsection (5) and substituting the following subsections:“(5) Subject to subsection (5B), a licence to use a registered trade mark is binding on every successor in title to the grantor’s interest —

except any person who, in good faith and without any notice (actual or constructive) of the licence, has given valuable consideration for the interest in the registered trade mark; or

unless the licence provides otherwise,and any reference in this Act to doing anything with, or without, the consent of the proprietor of a registered trade mark shall be construed accordingly.

Every person shall be deemed to have notice of a licence if the prescribed particulars of the grant of the licence are entered in the register under section 39(1).

Where an application under section 39(1) is made before 1st July 2004 to register the prescribed particulars of the grant of a licence, then, unless the licence provides otherwise, the licence shall be binding on every successor in title to the grantor’s interest.”.

Section 43 of the principal Act is amended by deleting subsection (2) and substituting the following subsection:“(2) Section 42 shall apply, with the necessary modifications, to an exclusive licence.”.

Section 45 of the principal Act is amended —

by deleting subsections (5) and (6) and substituting the following subsection:“(5) Where the proprietor or an exclusive licensee of a registered trade mark brings proceedings for any infringement of the trade mark in respect of which the proprietor and the exclusive licensee have concurrent rights of action, the proprietor or the exclusive licensee, as the case may be, need not —

join the other as a plaintiff; or

add the other as a defendant,unless the Court otherwise orders.”; and

by deleting subsection (8) and substituting the following subsection:“(8) Where an action for infringement of a registered trade mark is brought which relates wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action —

the Court shall, when assessing damages, ordering an account of profits or awarding statutory damages under section 31(5)(c), take into account —

the terms of the licence; and

any pecuniary remedy already awarded or available to either of them in respect of the infringement; and

subject to any agreement between them, the Court may —

assess the damages or award the statutory damages due to each of them according to the losses suffered or likely to be suffered by him as a result of the infringement; or

apportion between them the profits due to each of them according to what is attributable to the infringement of his rights.”.

Section 47 of the principal Act is amended by deleting subsections (2) to (5) and substituting the following subsections:“(2) For the purposes of this section and sections 49, 53 and 53A, a person falsely applies a registered trade mark to goods or services if —

without the consent of the proprietor of the registered trade mark, the person applies the trade mark or a sign likely to be mistaken for that trade mark to the goods or services; and

in the case of an application to goods, the goods are not the genuine goods of the proprietor or licensee of the registered trade mark.

For the purposes of subsection (2), a trade mark shall be deemed to be applied to goods or services if it is used in —

any sign or advertisement; or

any invoice, wine list, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium,and the goods are delivered, or services provided, as the case may be, to a person in pursuance of a request or order made by reference to the trade mark as so used.

For the purposes of subsection (2) —

a sign shall be deemed to be applied to goods if —

it is applied to the goods themselves; or

it is applied to any covering, label, reel or thing in or with which the goods are sold, offered or exposed for sale or had in possession for a purpose of trade or manufacture; and

a sign shall be deemed to be applied to goods or services if it is used in a manner that is likely to lead persons to believe that it refers to, describes or designates the goods or services.

In subsection (4) —“covering” includes any stopper, glass, bottle, vessel, box, capsule, case, frame or wrapper;“label” includes any band or ticket.”.

Section 49 of the principal Act is amended by inserting, immediately after the word “sells” in paragraph (b), the words “or offers”.

Section 52(2) of the principal Act is amended by inserting, immediately after the word “sells” in paragraph (b), the words “or offers”.