Trade Marks Act 1998

TRADE MARKS

• Trade Marks Act "TMΑ" 1998.
• Trade Mark Rules.
• Trade Marks (International Registration) Rules are non-examinable.
• S2(1) TMA defines a "trade mark" as a sign capable of being represented graphically and able to distinguish goods or services dealt with or provided by a person from those of another.
• A "sign" includes letters, words, names, signatures, numerals, devices, brands, headings, labels, tickets, shapes, colors, aspects of packaging, or any combination of these.
• Graphical representation is required to enable the public/authorities to know the exact parameters of the scope of protection.
• Word marks exist.
• Device marks exist.
• Composite marks exist; these trademarks involve a combination of words, devices, shapes, sounds, scents, and/or color elements.
• Sound marks exist but are non-examinable.
• Trademarks guarantee origin/quality and serve as a "short cut" for consumers, saving search time and costs.
• The "just desserts theory" states that traders deserve protection in return for their investment in building up public recognition of their trademark.
• Trademarks have attractive power.
• Well-known marks and the concept of dilution are non-examinable.

Symbols in Trade Marks

• The "™" symbol informs others that you are using the logo or name as a trade mark, however the mark may not be registered or protected under trade mark laws.
• The "®" symbol is only allowed after the trade mark status has been updated as "Registered".
• It is not a statutory requirement to use the "®" with a registered trademark, and any omission to use it does not affect the registration of the mark.
• Section 51(1) TMA states that using the "®" symbol together with a trademark that is pending registration is an offence.
• Falsely representing a mark as a registered trade mark or making false representations about the goods/services for which a trade mark is registered is an offence punishable by a fine not exceeding $10,000.

Benefits of Registration

• It is not compulsory to register a trademark in order to use it.
• Unregistered trade marks are still protectable by the law of passing off and are non-examinable.
• Registration adds value to a business.
• Registration creates a statutory property right under Section 4(1) TMA.
• A registered trade mark is a property right obtained by the registration of the trade mark, granting the proprietor the rights and remedies provided by the Act.
• Section 101(a) TMA states that in legal proceedings relating to a registered trade mark, the register is prima facie evidence of anything contained therein, ownership.
• The owner of a registered trade mark is granted a statutory monopoly over the mark and has the right to control its use, restricting other parties without consent, also known as infringement action.
• Registration prevents the registration of a later trade mark that is similar or identical to an earlier registered trade mark for the same or similar goods/services, known as opposition. Registration prevents a similar or identical later trade mark from remaining registered for the same or similar goods/services, known as invalidation.

Practical Considerations Before Registration

• Budget for mark variations, classes of goods/services, and countries/jurisdictions.
• Consider earlier identical or similar marks. Registers in intended countries/jurisdictions of interest.
• Consider Nice classification, current and future goods/services.
• Plan for use of mark by self or licensees and records.
• Be aware of revocation for non-use.
• Decide which countries to register in.

Registration Overview

• A trade mark application is filed and undergoes Formalities Examination.
• It then undergoes Substantive Examination on Absolute and Relative Grounds.
• If the application isn't compliant, the examiner informs the applicant of objections, which may be overcome for the application to be accepted.
• If accepted, the application is published in the Trade Marks Journal.
• If no opposition is filed or opposition is decided in the applicants favour, the mark is registered.

Opposition Overview

• After a TM application is accepted, the TM is published in the TM Journal, which makes it public.
• During the opposition period, anyone can object to the registration of the TM by starting an opposition.
• Grounds of opposition overlap with the registrability criteria used during examination.
• Absolute and relative grounds for refusal are relevant in both examination and opposition.
• If the grounds of opposition are established, the TM application is refused, if not, the TM application progresses to registration.

Registrability Criteria - Absolute Grounds

• S7(1) TMA: the following must not be registered:
• Signs that do not satisfy the definition of a trade mark in section 2(1).
• Trade marks that are devoid of any distinctive character.
• Trade marks which consist exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.
• Trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
• S7(2) TMA says that a trade mark must not be refused registration by virtue of subsection (1)(b), (c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

Types of Marks - Distinctiveness

• Fanciful: (no meaning in common language) ex. Kodak, Goods: Any, X.
• Arbitrary: ex. Apple, Goods: Computers, X.
• Suggestive: ex. Jaguar, Goods: Cars, ✓.
• Descriptive: ex. Fresh & Crunchy, Goods: Apples, X.
• Generic: ex. Apple, Goods: Apples, X.
• Han's (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825.
• Distinctiveness: the trade mark must necessarily, either inherently or as a result of use, perform the most basic function of distinguishing the goods of the trader from those of his competitors in the marketplace.
• "Inherent distinctiveness": these marks will be understood by the public as bearing a trade mark meaning, even if they have not yet been used or promoted to the public.
• Examples of inherent distinctivesness:
• Invented words, nonsensical phrases.
• Meaning of word/phrase has little bearing on the product to which it is to be applied e.g. slow coach to running shoes.
• "Low levels of inherent distinctiveness": mark includes a word or symbol or device that is at least partially descriptive of the goods or service, or the word chosen has a laudatory meaning or some meaning that captures a mood or image of some relevance to the product or service.
• "Distinctiveness through use": Where a sign possesses a capability to distinguish but is regarded as not possessing distinctiveness, at the time when chosen and first used, members of the public may over a period of time be taught, through advertising and brand promotion exercises, to recognize the trade mark as performing a trade mark function indicating the trade origin of the goods or services in question.
• Love & Co Pte Ltd v The Carat Club Pte Ltd [2006] 1 SLR(R) 561 says each absolute ground for registration in s7(1) operates independently though the grounds may overlap (at 45]).
• A failure to overcome any ground of objection is sufficient to deny registration (or the render a registration invalid).
• Section 7(1)(b) on being “devoid of any distinctive character" is a catch all objection (at [44]).
• Includes descriptive marks, the converse may not be true.
• The "LOVE" trade mark was devoid of distinctive character under s7(1)(b).
• The design was strikingly unimaginative.
• The widespread use of the word “love” within the jewellery trade.
• Need to educate the public that the “LOVE” trade mark was being used by the defendant as its trade mark.
• The "LOVE" mark designated the intended purpose of jewellery: s 7(1)(c).
• Intended purpose of jewellery to serve as an expression of love.
• In the Matter of a Trade Mark Application by Marvelous AQL Inc [2017] SGIPOS 3 (“Marvelous”).
• Section 7(1)(c) is in the public interest, to ensure that descriptive terms may be freely used by all.
• The signs and indications referred to in s 7(1)(c) are those which may serve in normal usage from a consumer's point of view designate, either directly or by reference to one of their essential characteristics, goods or services which registration is sought.
• The situations specifically covered by s 7(1)(c) are those in which the sign is capable of designating a "characteristic” of the goods or services referred to in the application.
• The provision is a non-exhaustive list. Provision extends to any characteristic of goods or services, irrespective of how significant the characteristic may be commercially.
• The property [or characteristic] in question must be easily recognizable by the relevant class of persons.
• It is not necessary that such descriptive terms are actually in use, it is sufficient that such signs and indications could be used to designate a characteristic of the goods or services.
• A sign must be refused under s 7(1)(c) if at least one of its possible meanings designates a characteristic of the goods or services concerned.
• It is irrelevant if there are other, more usual signs or indications for designating a particular characteristic of the goods or services.
• As a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services, itself remains descriptive.
• However, the combination may not be descriptive if there is a perceptible difference between the resultant combination and the mere sum of its parts.
• The existence of a specific defense [Section 28(1)(b)] does not limit the scope of Section 7(1)(c).
• The term "exclusively” requires a purposive approach.

Registrability Criteria - Relative Grounds

• S2(1) TMA, "earlier trade mark" means: 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
• 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.
• S8(2) TMA: A trade mark must not be registered if:
• 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.
• Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another had a 3-step test:
• Once the two threshold requirements in Steps 1 and 2 have been met, the issue of the likelihood of confusion arises in Step 3 for consideration, how similar the marks are.
• Once marks-similarity and goods- / services-similarity have been established, consider the impact of these similarities on the relevant consumers' ability to understand where those goods / services originate from (at [64].

Staywell test

• How similar the goods / services are, and the likelihood the public will be confused.
• If they are not similar under step 1 or goods are not identical/similar in step 2, no further action is necessary.
• Identify the marks for comparison and compare the marks.
• There is mark-for-mark comparison with 3 aspects/trade-offs that occur.
• Inherent technical distinctiveness must be considered with the mark considered as a whole, taking into account the dominant and distinctive components.
• There is overall impression which should be more similar than dissimilar from the perspective of an average consumer who would exercise some care and a measure of good sense, remembering that average consumers have imperfect recall and makes side-by-side comparisons unlikely.
• Conclude whether the marks are similar or not.
• Assess marks-similarity with comparison is mark-for-mark without consideration of any external matter (at [20].
• The three aspects of similarity (i.e. visual, aural and conceptual similarities) help guide the inquiry. Trade-offs can occur among the three aspects of similarity (at [18).
• A mark which has greater technical distinctiveness enjoys a high threshold before a competing sign will be considered dissimilar to it (at [25.
• When assessing a mark as a whole, the visual, aural, or conceptual similarity of the marks must be based on the overall impression.
• Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd. (2013) establishes if the relevant viewpoint is that of the average consumer who would exercise some care and a measure of good sense in making purchases and not an unthinking person in a hurry.
• Greater care is thus needed in considering what the conceptually dominant component of a composite mark is because the idea connoted by each component might be very different from the sum of its parts (Staywell at [35]). Conceptual analysis seeks to uncover the ideas that lie behind and inform the understanding of the mark as a whole.

Identifying the goods/services for comparison

• Look to the specifications and compare the goods/services to determine their similarity. If they hold the same specification, the 2nd element of s 8(2)(b) is established. If not identical, assess similarity.
• Class numbers make a good way to check if goods are similar.
• One should still consider the actual specifications of goods/services. Once marks-similarity and goods/services-similarity have already established, consider the impact of these similarities.

Registration and Renewal

• S18(1) TMA dictates a trade mark is registered for 10 years from the date of registration.
• S15(2) TMA explains a trade mark when registered is registered as of the application date.
• Registration may be renewed under S18(1) TMA in accordance with section 19 for further periods of 10 years.

Exclusive Rights

• Under S26 TMA, a registered trademark proprietor has:
• The exclusive right to use the trade mark and allow others to use it in relation to registered goods/services.
• The right to obtain relief under the Act for trade mark infringement.
• These rights accrue from the registration date, with some exceptions.

Disclaimer or Limitations

• If a trademark is registered subject to a disclaimer or limitation, the rights of the proprietor are restricted by it per S30 TMA.

Nature of registered trade mark

• The registered trademark is considered personal property per S36 TMA.
• Trade mark assignments are governed by S38 TMA.
• A registered trade mark is assignable and transmissible like other personal property, independently or alongside business goodwill.
• Assignment can be partial, limited to some goods/services per S38 TMA.
• An assignment is only effective if it is written and signed by the assignor or their representative per S38 TMA.
• S42 deals with licensing of trademarks, and a license may be general or limited as per S38 TMA.
• Under Section 39 TMA, any person who becomes the proprietor of a registered trade mark by virtue of any registrable transaction 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.

Post Registration Challenges

• Focus on invalidation and cancellation.
• Challenge occurs when a registered trade mark is cited under section 8 against another application during an examination.
• The applicant for invalidation missed the deadline to oppose the challenged mark before it was registered.
• It happens as a counterclaim to an action for infringement by the owner of the registered mark.
• S23 TMA reads with S7 and S8, dealing with the grounds of refusal of registration. If these conditions are met the mark can be revoked.
• The grounds of invalidity must exist 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.

Revocation

• Under S22 TMA, trade mark registration can be revoked for numerous reasons, including non-use.
• Under S22TMA, for the purposes of subsection, use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.
• S105 TMA explains the proprietor to show what use has been made of it.

Infringement

• S27 TMA details direct infringement if an identical sign is used for identical goods/services without consent. DEFENCES

• Defences are shown is Section 28.

• These include:

• use of one's own name/business place, descriptive use, earlier use, prior registration for the new sign, fair comparative use, non-commercial use, or news commentary.

Remedies, Defences and Counterclaim

• The types of remedies, defences, and counterclaim are laid out under the Trade Marks (S31 TMA).
• Remedies are mutually exclusive. Claimant starts infringement action against defendant
• Defendant files a defence and counterclaim that the registered TM is invalid / should be revoked for non-use; or that the patent is invalid and should be revoked If TM is found invalid, or TM or patent is revoked, claimant no longer has a basis to go after defendant for infringement