Long Title

Part I PRELIMINARY

Part II REGISTRATION OF TRADE MARKS

Introductory

Application for registration of trade mark

Grounds for refusal of registration

Priority

Registration procedure

Series of trade marks

Duration, renewal and alteration of registered trade mark

Cancellation, revocation and invalidity

Miscellaneous

Part III RIGHTS AND REMEDIES OF PROPRIETOR OF REGISTERED TRADE MARK

Rights of proprietor of registered trade mark

Infringement proceedings

Part IV REGISTERED TRADE MARK AS OBJECT OF PROPERTY

Part V LICENSING

Part VI OFFENCES

Part VII INTERNATIONAL MATTERS

The Madrid Protocol, etc.

The Paris Convention, the TRIPS Agreement and well known trade marks: supplementary provisions

Part VIII COLLECTIVE MARKS AND CERTIFICATION MARKS

Part IX ADMINISTRATIVE AND OTHER SUPPLEMENTARY PROVISIONS

The Registrar

The Register

Powers and duties of Registrar

Forms, fees, hours of business and publication

Trade mark agents

Part X ASSISTANCE BY BORDER AUTHORITIES

Border enforcement measures

Powers of search

Part XI MISCELLANEOUS AND GENERAL PROVISIONS

FIRST SCHEDULE Collective Marks

SECOND SCHEDULE Certification Marks

THIRD SCHEDULE Transitional Provisions

Legislative Source Key

Legislative History

Comparative Table

PART X
ASSISTANCE BY BORDER AUTHORITIES
Border enforcement measures
Interpretation of this Part
81.  In this Part, unless the context otherwise requires —
“authorised officer” means —
(a)
an officer of customs as defined in section 3 of the Customs Act (Cap. 70); or
(b)
any officer or class or description of officers appointed by the Minister by notification in the Gazette to exercise the powers and perform the duties conferred and imposed on an authorised officer by this Part;
“conveyance” has the same meaning as in section 2 of the Regulation of Imports and Exports Act (Cap. 272A);
“Director-General” means the Director-General of Customs appointed under section 4(1) of the Customs Act;
“goods in transit” means goods imported, whether or not landed or transhipped within Singapore, which are to be carried to another country either by the same or another conveyance;
“infringement action” means an action for an infringement of the relevant registered trade mark constituted by the importation of seized goods;
“master” has the same meaning as in section 2 of the Regulation of Imports and Exports Act;
“objector”, in relation to particular seized goods, means the person who gave the notice under section 82 as a result of the giving of which the goods were seized;
“pilot of an aircraft” has the same meaning as in section 2 of the Regulation of Imports and Exports Act;
“proprietor”, in relation to a registered trade mark, includes a licensee of the trade mark;
“retention period”, in relation to seized goods, means —
(a)
the period specified in a notice given under section 85 in respect of the goods; or
(b)
if that period has been extended under section 85, that period as so extended;
“seized goods” means goods seized under section 82;
“senior authorised officer” means —
(a)
a senior officer of customs as defined in section 3 of the Customs Act; and
(b)
any officer or class or description of officers appointed by the Minister by notification in the Gazette to exercise the powers and perform the duties conferred and imposed on a senior authorised officer by this Part;
“vessel” has the same meaning as in section 2 of the Regulation of Imports and Exports Act.
[Copyright 1998 Ed., s. 140A]
[4/2003; 20/2004]
Restriction of importation of infringing goods
82.
—(1)  A person who is the proprietor or a licensee of a registered trade mark may give the Director-General a written notice —
(a)
stating that he is —
(i)
the proprietor of the registered trade mark; or
(ii)
a licensee thereof having the power to give such a notice;
(b)
stating that goods which, in relation to the registered trade mark, are infringing goods are expected to be imported;
(c)
providing sufficient information —
(i)
to identify the goods;
(ii)
to enable the Director-General to ascertain when and where the goods are expected to be imported; and
(iii)
to satisfy the Director-General that the goods are infringing goods; and
(d)
stating that he objects to such importation.
[20/2004]
(2)  A notice given under subsection (1) shall be supported by such documents and information, and accompanied by such fee, as may be prescribed by rules made under this Act.
(3)  A notice under subsection (1) shall remain in force until the end of the period of 60 days commencing on the day on which the notice was given, unless it is revoked, before the end of that period, by notice in writing given to the Director-General —
(a)
if the person giving the first-mentioned notice is a licensee of the registered trade mark and he has power to revoke the notice, by the licensee;
(b)
in any other case, by the person who is then the proprietor of the registered trade mark.
(4)  If —
(a)
a notice has been given under this section in respect of a registered trade mark;
(b)
the notice has not lapsed or been revoked; and
(c)
a person imports goods, not being goods in transit, which bear a sign that, or whose packaging bears a sign that, in the opinion of an authorised officer, is identical with or similar to the registered trade mark in question,
an authorised officer may seize the goods.
(5)  The Minister may make rules to provide for —
(a)
the forms of notices under this section;
(b)
the times at which, and the manner in which, notices are to be given; and
(c)
the giving of information and evidence to the Director-General.
[Copyright 1988 Ed., s. 140B]
Security for liability or expense of seizure
83.  An authorised officer may refuse to seize goods under section 82 unless —
(a)
the objector has deposited with the Director-General a sum of money that, in the opinion of the Director-General, is sufficient to —
(i)
reimburse the Government for any liability or expense it is likely to incur as a result of the seizure of the goods; and
(ii)
pay such compensation as may be ordered by the Court under section 89(2) or 90(6); or
(b)
the objector has given security, to the satisfaction of the Director-General, for the reimbursement of the Government for any such liability or expense and the payment of such compensation.
[Copyright 1988 Ed., s. 140C]
Secure storage of seized goods
84.  Seized goods shall be taken to such secure place as the Director-General directs.
[Copyright 1988 Ed., s. 140D]
Notice of seizure
85.
—(1)  As soon as is practicable after goods are seized under section 82, the Director-General shall give to the importer and the objector, either personally or by post, a written notice identifying the goods and stating that they have been seized.
(2)  A notice under subsection (1) shall state that the goods will be released to the importer unless —
(a)
an infringement action in respect of the goods is instituted by the objector within a specified period from the day specified in the notice; and
(b)
the objector gives written notice to the Director-General within that period stating that the infringement action has been instituted.
(3)  The period to be specified for the purpose of paragraph (a) of subsection (2) is the period prescribed for the purposes of that paragraph.
(4)  The day specified for the purposes of subsection (2)(a) shall not be earlier than the day on which the notice is given.
(5)  The objector may, by written notice given to the Director-General before the end of the period specified in a notice for the purposes of subsection (2)(a) (the initial period), request that the period be extended.
(6)  Subject to subsection (7), if —
(a)
a request is made in accordance with subsection (5); and
(b)
the Director-General is satisfied that it is reasonable that the request be granted,
the Director-General may extend the initial period by such period as is prescribed.
(7)  A decision on a request made in accordance with subsection (5) must be made within 2 working days after the request is made, but such a decision cannot be made after the end of the initial period to which the request relates.
[Copyright 1988 Ed., s. 140E]
Inspection, release, etc., of seized goods
86.
—(1)  The Director-General may permit the objector or the importer to inspect the seized goods.
(2)  If the objector gives the requisite undertakings, the Director-General may permit the objector to remove a sample of the seized goods from the custody of the Director-General for inspection by the objector.
(3)  If the importer gives the Director-General the requisite undertakings, the Director-General may permit the importer to remove a sample of the seized goods from the custody of the Director-General for inspection by the importer.
(4)  The requisite undertakings are undertakings in writing that the person giving the undertaking will —
(a)
return the sample to the Director-General at a specified time that is satisfactory to the Director-General; and
(b)
take reasonable care to prevent damage to the sample.
(5)  If the Director-General permits inspection of the seized goods, or the removal of a sample, by the objector in accordance with this section, the Director-General is not liable to the importer for any loss or damage suffered by the importer arising out of —
(a)
damage to any of the seized goods incurred during that inspection; or
(b)
anything done by the objector or any other person to, or in relation to, a sample removed from the custody of the Director-General or any use made by the objector of such a sample.
[Copyright 1988 Ed., s. 140F]
Forfeiture of seized goods by consent
87.
—(1)  Subject to subsection (2), the importer may, by written notice to the Director-General, consent to the seized goods being forfeited to the Government.
(2)  The notice shall be given before any infringement action in relation to the seized goods is instituted.
(3)  If the importer gives such a notice, the seized goods are forfeited to the Government and shall be disposed of —
(a)
in the manner prescribed by rules made under this Act; or
(b)
if no manner of disposal is so prescribed, as the Director-General directs.
[Copyright 1988 Ed., s. 140G]
Compulsory release of seized goods to importer
88.
—(1)  The Director-General shall release seized goods (not being goods forfeited to the Government under section 87) to the importer on the expiration of the retention period for the goods if the objector has not, before the expiration of that period —
(a)
instituted an infringement action in relation to the goods; and
(b)
given written notice to the Director-General stating that the action has been instituted.
(2)  If —
(a)
an infringement action has been instituted in relation to the seized goods; and
(b)
at the end of a period of 3 weeks commencing on the day on which the action was instituted, there is not in force an order of the Court in which the action was instituted preventing the release of the goods,
the Director-General shall release the goods to the importer.
(3)  If the objector gives written notice to the Director-General stating that he consents to the release of the seized goods, the Director-General shall release the goods to the importer.
(4)  This section has effect subject to section 91.
[Copyright 1988 Ed., s. 140H]
Compensation for failure to take action
89.
—(1)  Where goods have been seized pursuant to a notice given under section 82 and the objector concerned fails to take infringement action within the retention period for the goods, a person aggrieved by such seizure may apply to the Court for an order of compensation against the objector.
(2)  Where the Court is satisfied that the applicant had suffered loss or damage as a result of the seizure of the goods, the Court may order the objector to pay compensation in such amount as the Court thinks fit to the applicant.
Actions for infringement of registered trade mark
90.
—(1)  The Court in which an infringement action is pending may, on the application of a person having a sufficient interest in the subject-matter of the action, allow the person to be joined as a defendant to the action.
(2)  An authorised officer is entitled to be heard on the hearing of an infringement action.
(3)  In addition to any relief that may be granted apart from this section, the Court may —
(a)
at any time, order that the seized goods be released to the importer subject to such conditions, if any, as the Court thinks fit;
(b)
order that the seized goods not be released to the importer before the end of a specified period; or
(c)
order that the seized goods be forfeited to the Government.
(4)  A Court may not make an order under subsection (3) (a) if it is satisfied that the Government or any statutory authority is required or permitted under any other law to retain control of the seized goods.
(5)  The Director-General shall comply with an order made under subsection (3).
(6)  If —
(a)
the action is dismissed or discontinued, or if the Court decides that the relevant registered trade mark was not infringed by the importation of the seized goods; and
(b)
a defendant to the infringement action satisfies the Court that he has suffered loss or damage as a result of the seizure of the goods,
the Court may order the objector to pay compensation in such amount as the Court thinks fit to that defendant.
[Copyright 1988 Ed., s. 140I]
Retention of control of seized goods
91.  Notwithstanding section 88, in a case in which no order has been made under section 90(3) in relation to seized goods, the Director-General is not obliged to release or dispose of the goods if the Government is required or permitted, under any other law, to retain control of the goods.
[Copyright 1988 Ed., s. 140J]
Disposal of seized goods ordered to be forfeited
92.  If the Court orders that seized goods are to be forfeited to the Government, the goods shall be disposed of —
(a)
in the manner prescribed by rules made under this Act; or
(b)
if no manner of disposal is so prescribed, as the Director-General directs.
[Copyright 1988 Ed., s. 140K]
Insufficient security
93.
—(1)  If the reasonable expenses incurred by the Director-General in relation to any action taken by the Director-General under this Part, or taken in accordance with an order of court under this Part exceed the amount deposited, or the amount of the security given, under section 83, the amount of the excess is a debt due to the Government.
(2)  The debt created by subsection (1) is due by the objector, or, if there are 2 or more objectors, by the objectors jointly and severally.
[Copyright 1988 Ed., s. 140L]
Detention and examination of counterfeit goods
93A.
—(1)  Notwithstanding section 82(4), any authorised officer may —
(a)
detain any goods —
(i)
that are imported into, or that are to be exported from, Singapore; and
(ii)
that are not goods in transit, unless the goods are consigned to any person with a commercial or physical presence in Singapore; or
(b)
examine any goods, including goods in transit,
which he reasonably suspects are counterfeit goods in relation to a registered trade mark.
[20/2004]
(2)  As soon as practicable after goods are detained under subsection (1)(a), the Director-General shall give —
(a)
to the importer, exporter or consignee, as the case may be, of the detained goods; and
(b)
to the proprietor of the registered trade mark,
a written notice identifying the goods, stating that they have been detained and setting out the matters referred to in subsection (3).
[20/2004]
(3)  The detained goods shall be released to the importer, exporter or consignee, as the case may be, of the goods, unless, within the prescribed period, the proprietor of the registered trade mark —
(a)
in the case of goods that are imported into Singapore and that are not goods in transit —
(i)
gives the Director-General a written notice referred to in section 82(1);
(ii)
submits the documents and information, and pays the fee, referred to in section 82(2) to the Director-General; and
(iii)
deposits with the Director-General the sum of money referred to in section 83(a) or gives the security referred to in section 83(b); or
(b)
in the case of goods that are to be exported from Singapore or goods in transit that are consigned to a person with a commercial or physical presence in Singapore —
(i)
institutes an action for the infringement of his trade mark;
(ii)
serves on the Director-General an order of the Court authorising the further detention of the goods; and
(iii)
deposits with the Director-General a sum of money that, in the opinion of the Director-General, is sufficient to —
(A)
reimburse the Government for any liability or expense it has incurred and is likely to further incur as a result of the detention of the goods; and
(B)
pay such compensation to any person who suffers loss or damage as a result of the detention of the goods as may be ordered by the Court; or
gives security, to the satisfaction of the Director-General, for the reimbursement of the Government for any such liability or expense and the payment of such compensation.
[20/2004]
(4)  Every order of the Court authorising the further detention of goods under subsection (3)(b)(ii) shall be subject to the condition that the proprietor of the registered trade mark complies with subsection (3)(b)(iii) within the period prescribed under subsection (3).
[20/2004]
(5)  Where the Court has made an order authorising the further detention of goods under subsection (3)(b) —
(a)
the detained goods shall be taken to such secure place as the Director-General directs; and
(b)
sections 86, 87 and 89 to 93 shall apply, with the necessary modifications, to the further detention of the goods, and for the purposes of such application —
(i)
any reference to the objector shall be read as a reference to the proprietor of the registered trade mark;
(ii)
any reference to the importer shall be read as a reference to the exporter or consignee, as the case may be, of the detained goods;
(iii)
any reference to the seized goods shall be read as a reference to the detained goods;
(iv)
any reference to the seizure of goods shall be read as a reference to the detention or further detention of the goods;
(v)
any reference to the import or importation of goods shall be read —
(A)
in the case of goods that are to be exported from Singapore, as a reference to the export of the goods; or
(B)
in the case of goods in transit that are consigned to a person with a commercial or physical presence in Singapore, as a reference to the import, importation or export, of the goods by the consignee;
(vi)
any reference to infringement action shall be read as a reference to an action for the infringement of the registered trade mark under subsection (3)(b)(i); and
(vii)
any reference to the retention period shall be read as a reference to the prescribed period under subsection (3).
[20/2004]
Powers of search
Powers of search in relation to vessels, aircraft and vehicles
94.
—(1)  A senior authorised officer or an authorised officer acting in accordance with the general or special directions of a senior authorised officer may board any conveyance in Singapore and may rummage and search all parts of the conveyance for goods liable to be seized under section 82 or detained under section 93A.
[20/2004]
(2)  For the more effective exercise of the powers conferred by this section, a senior authorised officer may do all or any of the following:
(a)
require the master of any vessel in Singapore to heave to;
(b)
by direction to the master of any vessel or the pilot of any aircraft in Singapore, require the vessel or aircraft, as the case may be, not to proceed until so authorised;
(c)
require any documents which ought to be on board any vessel or aircraft, being documents relating to any goods therein, to be brought to him for inspection;
(d)
break open and forcibly enter any place or receptacle in any conveyance to which he cannot otherwise reasonably obtain access;
(e)
by direction to the master of any vessel in Singapore, require the vessel to proceed to any specified anchorage, wharf or place to which the vessel may lawfully go;
(f)
by direction to the master of any vessel in Singapore, require him to move or discharge any cargo or other goods therein;
(g)
require the person in charge of a vehicle —
(i)
to stop and not to proceed until so authorised; or
(ii)
to bring the vehicle to any police station or examination station;
(h)
direct that the removal of any goods from or placed in any vessel be prohibited until so authorised;
(i)
require the master of any vessel or the pilot of any aircraft to produce a complete manifest of the whole cargo of the vessel or aircraft and a complete list of stores carried by that vessel or aircraft.
(3)  An authorised officer may exercise, in respect of any vehicle or any vessel not exceeding 75 tons net tonnage, the powers which are conferred upon a senior authorised officer by subsection (2) other than the powers conferred by paragraph (d) of that subsection.
(4)  It shall be presumed in any proceedings arising out of any thing done under this section, unless the contrary is proved, that any authorised officer, not being a senior authorised officer, by whom the thing was done was acting in accordance with the general or special direction of a senior authorised officer.
(5)  If any vessel or aircraft fails to comply with any lawful requisition or direction given or made under this section, a senior authorised officer may take all such steps as appear to him necessary to secure such compliance.
(6)  Any person who contravenes this section or who fails to comply with any lawful requisition or direction given or made thereunder shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $6,000 or to imprisonment for a term not exceeding 12 months or to both.
(7)  An authorised officer may exercise the powers conferred by this section in respect of a vessel under way if he reasonably suspects that it is not in transit through Singapore.
[Copyright 1988 Ed., s. 140M]
Examination of packages, etc.
95.
—(1)  Any goods, package, box, chest or other article which is being or has recently been imported and in regard to which a reasonable suspicion exists that it is or that it contains goods liable to be seized under section 82 or detained under section 93A may be —
(a)
examined and searched by an authorised officer or detained until any person in charge thereof has opened it for examination and search;
(b)
subjected to such tests or analysis as the authorised officer thinks fit;
(c)
forcibly opened by, or by order of, a senior authorised officer to facilitate the examination and search except that any person in charge of the package, box, chest or other article shall be afforded every reasonable facility for being present at the opening, examination and search; or
(d)
marked, locked, sealed or otherwise secured by an authorised officer pending examination and search.
[20/2004]
(2)  Any person, other than an authorised officer, who removes, opens, breaks or tampers with any mark, lock, seal or other means of securing any goods, package, box, chest or other article referred to in subsection (1)(d) shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $6,000 or to imprisonment for a term not exceeding 6 months or to both.
[Copyright 1988 Ed., s. 140N]
Power to remove packages and goods to police station or examination station
96.
—(1)  For the more convenient exercise of the powers conferred by section 95, an authorised officer may remove any package, box, chest or other article or any goods to a police station or examination station or may require it to be so removed by the owner thereof or his agent or any person having the custody, charge or control thereof.
(2)  Any person who fails to comply with any such requisition shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $6,000.
(3)  Upon the failure by a person to comply with such a requisition, an authorised officer may remove the goods in the manner provided by subsection (1) and all the expenses of such removal (as certified by a senior authorised officer) shall be recoverable as a fine from that person or from the owner of the goods.
[Copyright 1988 Ed., s. 140O]
Search of persons and baggage
97.
—(1)  Any person landing or being about to land or having recently landed from any vessel or aircraft, or leaving any vessel or aircraft in Singapore whether for the purpose of landing or otherwise, or entering or having recently entered Singapore by land, sea or air, shall —
(a)
on demand by an authorised officer, either permit his person and goods and baggage to be searched by the officer for any goods liable to be seized under section 82 or detained under section 93A or, together with the goods and baggage, accompany the officer to a police station or an examination station, and there permit his person and goods and baggage to be searched in the presence and under the supervision of a senior authorised officer for any goods liable to be seized under section 82 or detained under section 93A; or
(b)
on demand by a senior authorised officer, permit his person and goods and baggage to be searched by the officer, or in the presence and under the supervision of the officer, for any goods liable to be seized under section 82 or detained under section 93A.
[20/2004]
(2)  Whenever it is necessary to cause a woman to be searched, the search shall be made by another woman and with strict regard to decency.
(3)  The goods and baggage of any person who requests to be present when they are searched shall not be searched except in his presence, unless he fails to be present after being given reasonable facility for being present.
(4)  Any person who refuses to comply with any lawful demand made under this section may be arrested without warrant by the officer making the demand.
[Copyright 1988 Ed., s. 140P]
Powers of authorised officers to enter certain premises
98.
—(1)  For the purpose of exercising the powers conferred by sections 94 to 97, an authorised officer may, without warrant, enter upon any islet, landing place, wharf, dock, railway or quay or the premises of a provider of port services or facilities licensed or exempted under the Maritime and Port Authority of Singapore Act (Cap. 170A) or of the Civil Aviation Authority of Singapore.
(2)  In this section, “railway” has the same meaning as in the Railways Act (Cap. 263).
[Copyright 1988 Ed., s. 140Q]
Obstruction
99.  Any person who —
(a)
refuses any authorised officer or senior authorised officer access to any vessel, aircraft, vehicle or place which the officer is entitled to under this Part; or
(b)
obstructs or hinders any authorised officer or senior authorised officer in the execution of any power conferred upon that officer by this Part,
shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $15,000 or to imprisonment for a term not exceeding 12 months or to both.
[Copyright 1988 Ed., s. 140R]
Immunity of Government, etc.
100.  No action or other legal proceedings shall lie against the Government or any officer or employee thereof for anything which is in good faith done or omitted to be done in the exercise of any power, duty or function under this Part.