Trade Marks: Overview, Types, Registration - PDF

TRADE MARKS Case/Topic/Rule Description OVERVIEW Legislation Trade Marks Act “TMA” 1998 Trade Mark Rules Trade Marks (International Registration) Rules [non- examinable] What is a trade mark?...

TRADE MARKS Case/Topic/Rule Description OVERVIEW Legislation Trade Marks Act “TMA” 1998 Trade Mark Rules Trade Marks (International Registration) Rules [non- examinable] What is a trade mark? S2(1) TMA “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 “sign” includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof; Note: requirement of graphical representation - The register must enable the public/authorities to know the exact parameters of the scope of protection Types of trade marks Word mark Device mark Composite mark - trademark that involves a combination of different words, devices, shapes, sounds, scents and/or colour elements Sound mark [non-examinable] What is the purpose of Guarantee of origin / quality trade marks? - Serves as “short cut” for the consumer - Saves search time and costs Just desserts theory - Trader deserves protection in return for its investment to build up public recognition of its trade mark Attractive power of a trade mark - Well known marks and concept of dilution [non- examinable] Symbols in trade marks ™ symbol informs others that you are using the logo or name as a trade mark, but the mark may not be registered or protected under trade mark laws ® symbol is only allowed after the status of your trade mark has been updated as "Registered" - not a statutory requirement to use the ® with a registered trade mark, and any omission to use the ® does not affect the registration of the mark  - Section 51(1) TMA: an offence to use the ® symbol together with a trade mark that is yet to be registered (1) Any person who — (a) falsely represents that a mark is a registered trade mark; or (b) makes a false representation as to the goods or services for which a trade mark is registered, knowing or having reason to believe that the representation is false shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000. Benefits of registration Not compulsory to register a trade mark in order to use it - Unregistered trade marks may still be protected by the law of passing off [non-examinable] Adds value to a business Statutory property right - Section 4(1) TMA A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act: Section 101(a) TMA In all legal proceedings relating to a registered trade mark or any right thereunder (including proceedings for rectification of the register) — (a) the register is prima facie evidence of anything contained therein e.g. ownership The owner of the registered trade mark is granted a statutory monopoly over the mark and has the right to control the use of the trade mark such as: - restricting other parties from using the registered trade mark in Singapore without the owner’s consent (infringement action) - prevent a later trade mark, which is similar or identical to an earlier registered trade mark, from being registered in Singapore in relation to the same or similar goods or services (opposition) - prevent a later trade mark, which is similar or identical to an earlier registered trade mark, from remaining registered in Singapore in relation to the same or similar goods or services (invalidation) Practical considerations 1. Budget before registration - Mark variations - Classes of goods and services - Countries (jurisdictions) 2. Mark - Earlier Identical / similar marks  - Registers in countries (jurisdictions) of interest 3. Goods and services - Nice classification - Current goods and services - Future expansion 4. Use of mark - By self or licensees - Records - Beware revocation for non-use 5. Countries to register in Registration – overview Opposition – overview After a TM application is accepted, it is published in the TM Journal, a public document During the opposition period, anyone can object to the registration of the TM by starting an opposition The grounds of opposition overlap with the registrability criteria used during examination There are absolute and relative grounds for refusal, relevant in both examination and opposition If the grounds of opposition are established, the TM application is refused If the grounds of opposition are not established, the TM application progresses to registration REGISTRABILITY CRITERIA – ABSOLUTE GROUNDS Absolute grounds for S7(1) TMA refusal of registration (1) The following must not be registered: (a) signs which do not satisfy the definition of a trade mark in section 2(1); (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which 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; and  (d) 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. (2) 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 Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd 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 market place - “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 o e.g. invented words, nonsensical phrases o 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 recognise the trade mark as performing a trade mark function, namely indicating the trade origin of the goods or services in question  Love & Co Pte Ltd v The Carat Club Pte Ltd 1 SLR(R) 561 - Each absolute ground for registration in s7(1) operates independently though the grounds may overlap (at 45]) o 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 ) o Includes descriptive marks o Converse may not be true - “LOVE” trade mark wad devoid of distinctive character under s7(1)(b) o strikingly unimaginative design o widespread use of the word “love” within the jewellery trade o 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) o intended purpose of jewellery to serve as an expression of love In the Matter of a Trade Mark Application by Marvelous AǪL Inc 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 o Non-exhaustive list - The 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 recognisable 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 defence [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 Earlier trade mark S2(1) TMA “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; Relative grounds for s8(2) TMA refusal of registration (2) A trade mark must not be registered if, because — (a) 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 (b) 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 3-step test Pty Ltd v Starwood Hotels - Once the two threshold requirements in Steps 1 and 2 & Resorts Worldwide, Inc have been met, the issue of the likelihood of confusion and another and another arises in Step 3 for consideration: how similar the marks are appeal 1 SLR 611 o how similar the goods / services are, and given (“Staywell”) Test this, o how likely the relevant segment of the public will be confused (Staywell at ) - If marks not similar under Step 1 or goods / services not identical / similar under Step 2, threshold requirements not met, no necessity to proceed to Step 3 Staywell Test Step 1 Identify the marks for comparison What is the earlier mark? Is it an earlier registered / applied for mark? Check the date Compare the marks Assess marks-similarity Comparison is mark-for-mark without consideration of any external matter (at ) The three aspects of similarity (i.e. visual, aural and conceptual similarities) are meant to guide the inquiry Trade-offs can occur among the three aspects of similarity (at ) Inherent technical distinctiveness is an integral factor in the marks- similarity inquiry. - A mark which has greater technical distinctiveness enjoys a high threshold before a competing sign will be considered dissimilar to it (at ) - E.g. “Nutella” has high technical distinctiveness, “Nutello” is more readily considered similar While the components of a mark may be inherently technically distinctive, ultimately the ability of the mark to function as a strong badge of origin must be assessed by looking at the mark as a whole. Conversely, the components of a mark may not be inherently distinctive, but the sum of its parts may have sufficient technical distinctiveness (at ) When speaking of the assessment of a mark as a whole, the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by  the marks, bearing in mind, in particular, their distinctive and dominant components (at ) The similarity of marks is ultimately and inevitably a matter of impression rather than one that can be resolved as a quantitative or mechanistic exercise. The court must ultimately conclude whether the marks, when observed in their totality, are more similar than dissimilar (at ) Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal 2 SLR 941) - The relevant viewpoint is that of the average consumer who would exercise some care and a measure of good sense in making his or her purchases, not that of an unthinking person in a hurry (at ) - It is assumed that the average consumer has “imperfect recollection” such that the two contesting marks are not to be compared or assessed side by side (and examined in detail). Instead, the court will consider the general impression that will likely be left by the essential or dominant features of the marks on the average consumer (at ) Visual similarity - For word marks, consider: (i) length of the marks (how many letters) (ii) structure of the marks (e.g. how many words) (iii) overlap in the letters of the marks (iv) size of the elements in common relative to the rest of the marks - For composite marks, consider whether the textual element or the device is more dominant: (i) size of textual element versus device (ii) prominence of placement of textual element versus device (iii) distinctiveness of textual element versus device (e.g. is device perceived as descriptive of the goods / services, or decorative, rather than indicative of trade origin?) Aural similarity (audio/hearing) 1. Qualitative approach - Consider the dominant and distinctive component (Staywell at ) 2. Quantitative approach - Consider whether the competing marks have more syllables in common than not (Staywell at ) Conceptual similarity  - The conceptual analysis seeks to uncover the ideas that lie behind and inform the understanding of the mark as a whole - Greater care is therefore 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 ) e.g. concepts of “St Regis” and “Park Regis” different from idea connoted by “Regis” alone (Staywell at ) Staywell Test Step 2 Identify the goods/services for comparison Look at the specifications Compare the goods/services Assess goods/services-similarity - If same specification, already identical goods / services, 2nd element of s 8(2)(b) established (Staywell at [40-41]) - If not identical, continue to assess whether goods / services similar Class numbers – good way to check if the goods are similar - International Classification of Goods and Services (Nice - Classification (“NCL”)): Goods Classes (1- 34) and Services Classes (35 – 45) e.g. Class 25 “Clothing, footwear, headwear” e.g. Class 36 “Financial, monetary and banking services; insurance services; real estate services” - Goods / services which fall under the same class might be similar, but the class number itself is not determinative (e.g. Class 9 covers a wide variety of goods, which may not be similar to each other) - One should still consider the actual specifications of goods / services British Sugar factors (British Sugar plc v James Robertson & Sons Ltd RPC 281) (a) The respective uses of the respective goods or services (b) The respective users of the respective goods or services (c) The physical nature of the goods or acts of service (d) The respective trade channels through which the goods or services reach the market (e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves  (f) The extent to which the respective goods or services are competitive. This inquiry may take into account how those in trade classify goods Staywell Test Step 3 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 ) Assess likelihood of confusion Opposition: compare actual and notional fair uses (look at both parties’ specifications) (at ) Infringement: compare defendant’s actual use and claimant’s actual and notional fair uses (look at claimant’s specification) (at ) Confusion must be the kind that arises from similarity of marks and identity / similarity of goods or services - Difference between “similar” and “confusingly similar” Permissible extraneous factors - Extraneous factors may be considered to the extent that they inform the court as to how the similarity of marks and goods will likely affect the consumer’s perception as to the source of the goods (at ) - (a) intrinsic to the very nature of the goods and/or (b) affect the impact that the similarity of marks and goods has on the consumer. - Marks similarity — Non-exhaustive list: (i) degree of similarity of the marks (ii) reputation of the marks: a strong reputation does not necessarily equate to a higher likelihood of confusion, and could in fact have the contrary effect (iii) impression given by the marks (iv) possibility of imperfect recollection of the marks - Goods-similarity — Non-exhaustive list (excludes steps taken by trader to differentiate the goods (i) Normal way in, or the circumstances under, which consumers would purchase goods of that type (ii) Whether the goods are expensive or inexpensive (iii) Whether the goods would tend to command a greater or lesser degree of fastidiousness and attention on the part of prospective purchasers (iv) Likely characteristics of the relevant consumers and whether they would or would not tend to apply care or have specialist knowledge in making the purchase. Impermissible extraneous factors - Differences between the competing marks and goods which are created by a trader’s differentiating steps  e.g. pricing differentials, packaging and superficial marketing choice made by the trader (at ) REGISTRATION AND RENEWAL Registration S18(1) TMA (1) A trade mark is registered for a period of 10 years from the date of registration. S15(2) TMA (2) A trade mark when registered is registered as of the date of the application for registration, and that date is deemed for the purposes of this Act to be the date of registration. e.g. TM application filed on 2 Feb 2024. Accepted and published on 8 August 2024, no opposition up until 8 October 2024. — Trademark is registered for 10 years from 2 Feb 2024. Renewal S18(1) TMA (2) Registration may be renewed in accordance with section 19 for further periods of 10 years. Cost vs benefit If mark no longer of interest, can allow registration to expire without renewal If mark has been licensed to licensee, make sure it is renewed if it expires during the term of the licence EXCLUSIVE RIGHTS Exclusive rights S26 TMA (1) The proprietor of a registered trade mark has the exclusive rights — (a) to use the trade mark; and (b) to authorise other persons to use the trade mark, in relation to the goods or services for which the trade mark is registered. (2) The proprietor has the right to obtain relief under this Act for infringement of the proprietor’s trade mark. (3) The acts amounting to infringement of a registered trade mark are set out in section 27, and references in this Act to the infringement of a registered trade mark are to be construed accordingly. (4) The rights accrue to the proprietor as from the date of registration of the trade mark, except that — (a) no infringement proceedings may be begun before the date on which the trade mark is in fact registered; and (b) no offence under section 46, 47, 48 or 49 is committed by anything done before the date on which the trade mark is in fact registered.  (5) If the trade mark is registered subject to any disclaimer or limitation, the rights of the proprietor are restricted by the disclaimer or limitation. Disclaimer or limitation s30 TMA (1) An applicant for registration of a trade mark, or the proprietor of a registered trade mark, may — (a) disclaim any right to the exclusive use of any specified element of the trade mark; or (b) agree that the rights conferred by the registration are subject to a specified territorial or other limitation. e.g. A composite mark containing a distinctive word and a non- distinctive device is registered with a disclaimer to the non-distinctive device as such Nature of registered trade s36 TMA mark A registered trade mark is personal property. s38 TMA – Assignment of trademark (1) A registered trade mark is assignable and transmissible in the same way as other personal or movable property, and is so assignable or transmissible either in connection with the goodwill of a business or independently. (2) An assignment or transmission of a registered trade mark may be partial, that is, limited so as to apply in relation to some but not all of the goods or services for which the trade mark is registered. (3) An assignment of a registered trade mark, or an assent relating to a registered trade mark, is not effective unless it is in writing signed by or on behalf of the assignor or (as the case may be) a personal representative. s42 TMA – Licensing of trademark (1) A licence to use a registered trade mark may be general or limited. (2) A limited licence may, in particular, apply in relation to some but not all of the goods or services for which the trade mark is registered. (3) A licence is not effective unless it is in writing signed by or on behalf of the grantor. Registration (recordal) of s39 TMA assignments (3) Until an application has been made for the registration of the prescribed particulars of a registrable transaction mentioned 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. (4) A person who becomes the proprietor of a registered trade mark by virtue of any registrable transaction mentioned 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. POST REGISTRATION CHALLENGES Why might a registered Focus on invalidation and revocation mark be challenged? The challenged mark has been cited under section 8 against the challenger’s later trade mark application during examination The applicant for invalidation missed the deadline to oppose the challenged mark before it was registered As a counterclaim to an action for infringement by the owner of the registered mark Invalidation S23 TMA (read with s7 and s8 – grounds of refusal of registration) (1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 7. (2) 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. (3) The registration of a trade mark may be declared invalid on the ground — (a) that there is an earlier trade mark in relation to which — (i) the conditions set out in section 8(1) or (2) apply; (ii) 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 (iii) 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 (b) 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. (4) 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. (5) An application for a declaration of invalidity may be made by any person, and may be made either to the Registrar or the Court… (exceptions) (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) must not be made after the expiry of 5 years from — (a) the date of completion of the registration procedure; or (b) 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. (7) 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 — (a) 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 — (i) the registration of the later trade mark was applied for in bad faith; or (ii) the later trade mark was never used; and (b) 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. (8) 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. (9) 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  (10) 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. Revocation S22 TMA (1) The registration of a trade mark may be revoked on any of the following grounds: (a) *that, within the period of 5 years following the date of completion of the registration procedure, it has not been put to genuine use in the course of trade in Singapore, by the proprietor or with the proprietor’s consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) *that such use has been suspended for an uninterrupted period of 5 years, and there are no proper reasons for non-use; (c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for the product or service for which it is registered; (d) that, in consequence of the use made of it by the proprietor or with the proprietor’s consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. (2) For the purposes of subsection (1), 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, and use in Singapore includes applying the trade mark to goods or to materials for the labelling or packaging of goods in Singapore solely for export purposes. (3) The registration of a trade mark must not be revoked on the ground mentioned in paragraph (a) or (b) of subsection (1) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the 5 year  period and before the application for revocation is made. (4) Any commencement or resumption of use referred to in subsection (3) after the expiry of the 5 year period but within the period of 3 months before the making of the application for revocation must be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made. (5) An application for revocation may be made by any person, and may be made either to the Registrar or to the Court, except that — (a) if proceedings concerning the trade mark in question are pending in the Court — the application must be made to the Court; and (b) 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 (6) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation must relate to those goods or services only [can be full or partial] (7) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor are deemed to have ceased to that extent as from — (a) the date of the application for revocation; or (b) if the Registrar or the Court is satisfied that the grounds for revocation existed at an earlier date, that date. s105 TMA – burden of proof for use If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it. INFRINGEMENT Infringement s27 TMA (1) A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, the person uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.  (2) A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, the person uses in the course of trade a sign where because — (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public. (4) For the purposes of this section and sections 28, 29 and 31, a person uses a sign if, in particular, the person — (a) applies it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign; (c) imports or exports goods under the sign; (d) uses the sign on an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium; or (e) uses the sign in advertising. (5) Despite subsection (4), a person who — (a) applies a sign to any material used or intended to be used for labelling or packaging goods; or (b) uses a sign on any document described in subsection (4)(d) or in advertising, is deemed not to use the sign if, at the time of such application or use, the person does not know nor have reason to believe that the proprietor or a licensee of the registered trade mark did not consent to such application or use of the sign. 3-step Staywell tests applies to infringement cases - For infringement, compare the range of notional fair uses of the claimant’s mark against the actual use of the defendant’s sign DEFENCES Defences  S28 TMA (1) Despite section 27, a person does not infringe a registered trade mark when — (a) the person uses — (i) the person’s name or the name of the person’s place of business; or (ii) the name of the person’s predecessor in business or the name of the person’s predecessor’s place of business; (b) the person uses a sign to indicate — (i) the kind, quality, quantity, intended purpose, value, geographical origin or other characteristic of goods or services; or (ii) the time of production of goods or of the rendering of services; or (c) the person uses the trade mark to indicate the intended purpose of goods (in particular as accessories or spare parts) or services, and such use is in accordance with honest practices in industrial or commercial matters. (2) Despite section 27, a person does not infringe a registered trade mark by using an unregistered trade mark that is identical with or similar to the registered trade mark in relation to goods or services identical with or similar to those for which the trade mark is registered if the person, or the person and the person’s predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before — (a) the date of registration of the registered trade mark; or (b) the date the proprietor of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Act, first used the trade mark, whichever is the earlier. (3) Despite section 27, a registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered. (4) Despite section 27, a person who uses a registered trade mark does not infringe the trade mark if such use — (a) constitutes fair use in comparative commercial advertising or promotion; (b) is for a non-commercial purpose; or (c) is for the purpose of news reporting or news commentary. REMEDIES, DEFENCES AND COUNTERCLAIM Types of remedies Trade marks (S31 TMA) (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: (a) an injunction (subject to such terms (if any) as the Court thinks fit); (b) damages; (c) an account of profits; (d) in any case to which subsection (5) applies, statutory damages under subsection (5)(c). Statutory Damages s31 TMA (5) 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 claimant is entitled, at the claimant’s election, to — (a) damages and an account of any profits attributable to the infringement that have not been taken into account in computing the damages; (b) an account of profits; or (c) statutory damages — (i) not exceeding $100,000 for each type of goods or service in relation to which the counterfeit trade mark has been used; and (ii) not exceeding in the aggregate $1 million, unless the claimant proves that the claimant’s actual loss from such infringement exceeds $1 million. (6) In awarding statutory damages under subsection (5)(c), the Court is to have regard to — (a) the flagrancy of the infringement of the registered trade mark; (b) any loss that the claimant has suffered or is likely to suffer by reason of the infringement; (c) any benefit shown to have accrued to the defendant by reason of the infringement; (d) the need to deter other similar instances of infringement; and (e) all other relevant matters. Account of profits s31(2)(c) TMA Actual profit made by the infringer which is derived from the infringement Reduction in 2 ways: - Deduct costs and expenses from receipts - Apportionment of profits if the profits are generated by a chain of activities and the infringing acts occupy only a part of this chain (the other acts do not infringe) Election of remedies General principle: Prevent double recovery  S31(4) TMA Damages, account of profits and statutory damages are mutually exclusive However – s31(3) TMA (3) 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. Defence and counterclaim Claimant starts infringement action against defendant Alleges that a registered TM or patent has been infringed 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 PATENTS OVERVIEW What is a patent? Definition Prof David Llewelyn, et al - Monopoly rights granted by the State, that can last for a Cases, Materials and maximum of 20 years Commentary on Criteria needed to obtain a patent Singapore Intellectual - One of the requirements for patentability is that it Property Law discloses sufficient detail so that a skilled person may (SAL Academy Publishing) perform the invention (2018) at [02.001] Rationale for the patent system - The social contract underlying the system is that, in return for the grant of the monopoly, the patent specification is placed on the Patents Register that is free for anyone to search and thereby adds to the store of human knowledge and ingenuity. - After the patent expires, anyone is free, without restriction or payment, to exercise the patented invention disclosed in the register. Rationale and philosophy Adds the fuel of interest to the fire of genius, in the discovery and production of new and useful things (Abraham Lincoln) IP rights serving as a cornerstone for global collaboration and will play an even bigger role in years to come – as innovation and technology enable us to build more with less, and to build a better world. A sound system of managing IP is necessary for us to balance the risks and rewards of pursuing innovation, as well as to meet the needs of people around the world (Heng Swee Keat) Bargain between the state and the inventor - Monopoly over the invention for a limited period of time