Trademark Protection in Singapore

This article provides an overview of trademark protection in Singapore. It explains the definition of a trademark and the circumstances under which a party is not eligible for protection. It also discusses the statutory protection provided by the Singapore Trade Marks Act and the process of obtaining trademark registrations. Additionally, it explores possible defenses against trademark infringement. The article concludes with a case study on trademark infringement and the available defenses for the accused party.

A trade mark is a sign like a word, shape, device, brand or any combination of these elements
that is capable of being represented graphically and, which is being used by a person in course
of trade for distinguishing his goods or services from the one supplied by other persons. In case
of Singapore,. It is possible to register three dimensional signs and sounds as trademarks but the
trademarks that are based on smell and taste are not recognized. There are a number of
circumstances provided by the law under which a party is not eligible for protection. For
example, when the mark is identical with or confusingly similar to national flags or emblems or
when the mark will result in confusion or misunderstanding regarding the origin, quality,
properties are the characteristics related with the goods or services.1 The law provides that the
mark should not be identical or confusingly similar with the mark. Already registered by another
person had been used for identical or similar goods.
Protection available to trademarks in Singapore: Statutory protection has been provided to the
registered trademarks in Singapore by the Singapore Trade Marks Act. This legislation provides
certain remedies to the registered providers are trademarks in case of the infringement of their
trademark. Generally, it is not required that a trademark should be in use before it is applied for
on a registered even if it is required at all applications and for the registration of trademarks
should be made on the basis that case existing use all intention of using the mark in the course of
trade.2 Regarding weaker or less distinctive marks, it may be required by their trademark registry
office that the applicant should establish use of the mark while examining the trademark
1 Ng Siew Kuan, “Intellectual Property Law in Singapore: A General Overview,” 4 SAcLJ 32 (1992), 33-34
2 Susan K. Sell, “The Origins of a Trade-Based Approach to Intellectual Property Protection – The role of industry
associations,” Science Communication 17 (1995): 165.

applications. However in this context, it needs to be noted that, as stated above, Singapore
operates on first to file system and it is recommended that an early application for the mark
should be made, ideally before the product or the service has been released in the market.3
Where the trademark has been granted before actual use the right holder is required to put the
mark to genuine use in course of trade within a period of five years after the date when the
registration procedure was completed or there is a risk that registration may be revoked on the
grounds of non-use.4
Obtaining trademark registrations in Singapore: an application for the registration of a trademark
can be made in Singapore by an individual, company or a firm who claims to be the owner of the
mark. Although in this regard is no restrictions related residency or nationality. It is required that
a Singapore address should be provided for the service where all the correspondence can be sent.
The Trade Mark Act provides that the owner of a registered trademark can enforce the trademark
rights against an alleged infringement of trademark or the diluted use of the mark. For this
purpose, a claim of infringement needs to be made in the High Court. The proprietor of
trademark also has the right to get relief like an injunction or an account of profits and damages
has provided by the Trade Mark Act for the infringement of the trademark. In this regard, the
acts that may amount to the infringement of registered trademark has been mentioned in section
27 of the Act.5 Apart from the provisions which are related with the infringement of trademark,
the Act also contains provisions relating to the acts that may be considered as a criminal offense,
3 Peters, J. W., “Toward Negotiating a Remedy to Copyright Piracy in Singapore”, Nw. J. Int’l L. & Bus. 7 (1985-
1986), 563
4 George Wei, “A look back at public policy, the legislature, the courts and the development of copyright law in
Singapore”, SAcLJ 24 (2012): 870.
5 Susanna Leong, Intellectual Property Law of Singapore (Singapore: Academy Pub., 2013), 12

particularly the counterfeiting of registered trademark, a false application for a registered
trademark to goods or services and importing or selling goods by using falsely applied
trademark. The tariff that can be applied in case of a criminal act of infringement as mentioned in
the Trade Mark Act is up to $10,000 per infringing article and it may go up to an aggregate of
$100,000 maximum or an imprisonment or five years or both.
It also needs to be noted that it is not compulsory to register a trademark in Singapore. Any
person, company or firm, owning a trademark and using the same in connection of goods or
services, acquires rights under the common law in such mark and as a result of the use and
reputation of the mark.6 In case of a mark, that has not been registered, the owner of the mark can
only rely on the common law action of "passing off" for the purpose of protecting the mark
owned by him against unauthorized use or imitation and by the other parties. However, the
remedy requires that the owner of the mark should be able to establish his reputation and
goodwill. The requirement of establishing reputation and goodwill may result in certain
problems, particularly where the business or the use of trademark is not established for a
significant amount of time. On the other hand, a registered trademark provides a statutory
monopoly to the owner. If the same or a similar mark is used by someone else on similar goods
or services regarding which the mark has been registered, the owner of registered trademarks can
only rely on the registration of the trademark has the proof of his right over the mark and for
suing the other party for the purpose of the infringement of trademark.
In the present case, the mark 'AROMA CAKES' has been registered by Delicious Bakery Pte
Ltd. Their products were received well in the market and they also featured in local gourmet
magazines. Recently Sweet Treats have started using the Mark, "AROMATIC CAKE" for one of
6 Wee Loon Ng-Loy, “Singapore,” in Intellectual Property in Asia: Law, Economics, History and Politics, ed. Paul
Goldstein et al. (Berlin:Springer, 2009), 240.

its latest products, the dessert pastry. Some clients ordered the pastry under the impression that it
was a product of Delicious Bakery. Under these circumstances, it is clear that in this case there is
an infringement of the registered trademark owned by Delicious Bakery under the name of
'AROMA CAKES' as Sweet Treats had been using the similar name for its products. This
amounts to an infringement of the right that is available to Delicious Bakery and it can take civil
as well as criminal action for such breach.
b) Can Sweet Treats Pte Ltd rely on any possible defenses?
Sometimes, a business may find that its business or product name had inadvertently infringed on
a trademark that has been already present on the register. However it needs to be noted that in
this regard certain defenses are available against the allegation of the infringement of trademark
that can be used for the purpose of avoiding liability. These defenses have been mentioned in the
Trade Marks Act. Some of the defenses have been discussed below in order to see if they are
available to Sweet Treats Pte Ltd against the allegations that it had infringed the registered
trademark of Delicious Bakery.
Invalidity of the registration of earlier trademark: When a particular business is being sued for
the infringement of trademark, it can retaliate by counter claiming that the other trademark is
invalid. The registration of trademark gives evidence regarding the validity of the mark for all
purposes and intense but according to section 101 of the Act. The party is required to give
evidence regarding non-validity of the trademark for supporting the claim in the court.7 Some of
the grounds under which a claim of the validity can be brought are described as follows:
7 Ng-Loy, Wee Loon “The IP Chapter in the US-Singapore Free Trade Agreement”. 16 SAcLJ 42 2004, 44.

The trademark should be refused registration because it was in breach of section 7 of the Trade
Marks Act. This provision is present in section 23(1) of the Act. A trademark will be considered
to be in breach of section 7 if, for example it fails to fulfill the definition of trademark as
provided by section 2(1) of the Act or if it does not have any distinctive character or if the mark
has been exclusively made out of signs and indications that may serve in trade for designating
some characteristics of the goods like in the quality of goods, kind of goods or the intended
purpose of goods. But it needs to be mentioned that according to section 23(2), if the trademark
is able to satisfy the definition of trademark as provided in section 2(1), the mark may not be
declared as invalid. If after the registration of the mark, it has required a distinctive character
regarding the goods or services, in case of which it was registered.
A claim of invalidity can also be initiated if the other mark is identical to the mark that has been
registered before it and the goods provided under the two trademarks are identical and there is a
chance that the public being confused. This has been mentioned in section 23(3)(a)(i) when it is
read with section 8(1).
It can also be initiated in the other trademark is identical to the market that has been registered
before it and the goods or services that are provided under the two marks are similar so that there
is a possibility that and the people may be confused (section 23(1)(a)(i) and along with section
8(2) Trade Marks Act).
Another situation is where the other trademark has been registered on account of fraud or
misrepresentation. This provision can be found in section 23(4), Trade Marks Act.
Own name, defense: when the own name of the person has been trademarked as the name of the
business, it is a legitimate defense while facing an action for the infringement of trademark. It

has been provided by section 28(1)(a) of the Trade Marks Act, and it is applicable even if the
business provides the goods and services that are identical to the ones provided by the other
business. However it is required that the use of your own name should be according to be honest
practices related with commercial or industrial matters. Therefore, the defense will not be
available if the use of your own name as the trademark is dishonest.
Indication of quality etc.: According to section 28(1)(b), a defense is available if the trademark
has been used for indicating:-
 Characteristics like the quality, kind or the intended purpose of the goods; or
 The time of production or provision of goods or services.
But in this regard, it needs to be noted that such use should be in accordance with honest
practices related with commercial or industrial matters. Therefore, for example there will be no
liability for infringement of the trademark if the product has been labeled as 'Oreo cheesecake'.
The reason is that in this case, Oreo is the popular chocolate sandwich cookie and the word Oreo
is only being used for the purpose of mentioning the flavor of the cheesecake. A similar defenses
available if the other trademark is quite well known and it can be referred to under section
55A(1)(b). According to section 2(7), if a vertical trademark can be considered as well known in
Singapore there are certain factors like the extent, duration and the geographical area of any use
of the mark. According to section 2(8) however a trademark is going to be automatically
considered as well known in Singapore, if it is well known to the relevant section of the people
in Singapore.

In the present case also, Sweet Treats may rely on the defense that the use of the mark
'AROMATIC CAKES' was only an indication of quality of the dessert pastries produced by it.
Therefore the company may claim that even if Delicious Bakery had registered teh mark,
'AROMA CAKES' but the mark 'AROMATIC CAKES' is merely the use of the mark for the
purpose of indicating the quality of its product, the dessert pastry.

Bibliography
Ng Siew Kuan, “Intellectual Property Law in Singapore: A General Overview,” 4 SAcLJ 32
(1992), 33-34
Susan K. Sell, “The Origins of a Trade-Based Approach to Intellectual Property Protection – The
role of industry associations,” Science Communication 17 (1995): 165.
Peters, J. W., “Toward Negotiating a Remedy to Copyright Piracy in Singapore”, Nw. J. Int’l L.
& Bus. 7 (1985-1986), 563
George Wei, “A look back at public policy, the legislature, the courts and the development of
copyright law in Singapore”, SAcLJ 24 (2012): 870.
Susanna Leong, Intellectual Property Law of Singapore (Singapore: Academy Pub., 2013), 12
Wee Loon Ng-Loy, “Singapore,” in Intellectual Property in Asia: Law, Economics, History and
Politics, ed. Paul Goldstein et al. (Berlin: Springer, 2009), 240.
Ng-Loy, Wee Loon “The IP Chapter in the US-Singapore Free Trade Agreement” 16 SAcLJ 42
2004, 44