Trademark Protection in Singapore

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.