On 18/05/2013,
you requested for the version in force on 18/05/2013
incorporating all amendments published on or before 18/05/2013.
The closest version currently available is that of 21/12/1998.
PART II
REGISTRATION OF TRADE MARKS
Introductory
4.
—(1) 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.
(2) No proceedings shall lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act shall affect the law relating to passing off or rights under the Geographical Indications Act 1998.
Application for registration of trade mark
5.
—(1) An application for registration of a trade mark shall be made in the prescribed manner to the Registrar.
(2) The application shall state that the trade mark is being used in the course of trade, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used.
(3) The application shall be subject to the payment of the application fee and such other fees as may be appropriate.
Grounds for refusal of registration
7.
—(1) The following shall 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;
(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 shall 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.
(3) A sign shall not be registered as a trade mark if it consists exclusively of —
(a)
the shape which results from the nature of the goods themselves;
(b)
the shape of goods which is necessary to obtain a technical result; or
(c)
the shape which gives substantial value to the goods.
(4) A trade mark shall not be registered if it is —
(a)
contrary to public policy or to morality; or
(b)
of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).
(5) A trade mark shall not be registered if or to the extent that its use is prohibited in Singapore by any written law or rule of law.
(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.
(7) Notwithstanding subsection (2), a trade mark shall not be registered if it contains or consists of a geographical indication in respect of a wine or spirit and the trade mark is used or intended to be used in relation to a wine or spirit not originating from the place indicated in the geographical indication.
(8) Subsection (7) shall apply whether or not the trade mark has, or is accompanied by, an indication of the true geographical origin of the wine or spirit, as the case may be, or an expression such as “kind”, “type”, “style”, “imitation” or the like, and irrespective of the language the geographical indication is expressed in that trade mark.
(9) A trade mark shall not be refused registration by virtue of subsection (7) if the application for its registration had been made in good faith, or if it had been used continuously in good faith in the course of trade by the applicant for its registration or his predecessor in title, either —
(a)
before the commencement of this Act; or
(b)
before the geographical indication in question is protected in its country of origin.
(10) A trade mark shall not be refused registration by virtue of subsection (7) if the geographical indication in question —
(a)
has ceased to be protected; or
(b)
has fallen into disuse,
in its country of origin.
(11) A trade mark shall not be registered in the cases specified in sections 56 and 57.
(12) The Minister may make rules to provide that a sign specified in the rules shall not be registered as a trade mark, or shall not be so registered unless such conditions as may be prescribed are met.
(13) A trade mark shall not be registered if or to the extent that the registration contravenes any rule made under subsection (12).
8.
—(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is sought to be registered are identical with the goods or services for which the earlier trade mark is protected.
(2) A trade mark shall 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.
(3) A trade mark which —
(a)
is identical with or similar to an earlier trade mark; and
(b)
is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,
shall not be registered if —
(i)
the earlier trade mark is well known in Singapore;
(ii)
use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered would indicate a connection between those goods or services and the proprietor of the earlier trade mark;
(iii)
there exists a likelihood of confusion on the part of the public because of such use; and
(iv)
the interests of the proprietor of the earlier trade mark are likely to be damaged by such use.
(4) A trade mark shall not be registered if, or to the extent that, its use in Singapore is liable to be prevented —
(a)
by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade; or
(b)
by virtue of an earlier right other than those referred to in subsections (1), (2) and (3) or paragraph (a), in particular by virtue of the law of copyright or any law with regard to the protection of designs.
(5) A person entitled under subsection (4) to prevent the use of a trade mark is referred to in this Act as the proprietor of an earlier right in relation to the trade mark.
(6) The Registrar may, in his discretion, register a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.
(7) A trade mark which is an earlier trade mark by virtue of paragraph (a) of the definition of “earlier trade mark” in section 2(1) and whose registration expires shall continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry unless the Registrar is satisfied that there was no bona fide use of the mark during the 2 years immediately preceding the expiry.
9.
—(1) Where, on an application for the registration of a trade mark, it appears to the Registrar —
(a)
that there is an earlier trade mark in relation to which the conditions set out in section 8(1), (2) or (3) apply; or
(b)
that there is an earlier right in relation to which the condition set out in section 8(4) is satisfied,
but the applicant shows to the satisfaction of the Registrar that there has been honest concurrent use in the course of trade in Singapore of the trade mark for which registration is sought, the Registrar shall not refuse the application by reason of the earlier trade mark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.
(2) Nothing in this section shall affect —
(a)
the refusal of registration on the grounds mentioned in section 7; or
(b)
the making of an application for a declaration of invalidity under section 23(3).
Priority
10.
—(1) If —
(a)
a person has filed an application for the registration of a trade mark in a Convention country (referred to in this section as a Convention application); and
(b)
within 6 months after the date on which the Convention application is made, he or his successor in title applies under this Act for the registration of the trade mark in respect of some or all of the goods or services in respect of which registration was sought in that Convention country,
he or his successor in title may, when filing the application under this Act, claim a right of priority for the registration of the trade mark in respect of all or any of those goods or services.
(2) The priority claimed is for the registration of the trade mark in respect of the goods or services from (and including) the date on which the application was filed in that Convention country.
(3) The registrability of a trade mark shall not be affected by any use of the trade mark in Singapore in the period between the date of filing of the Convention application and the date of application under this Act.
(4) Any filing which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority.
(5) For the purposes of subsection (4), “regular national filing” means a filing which is adequate to establish the date on which the application was filed in the Convention country, whatever may be the subsequent fate of the application.
(6) Where a subsequent application concerning the same subject as an earlier Convention application was filed in the same Convention country, and —
(a)
the earlier application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and
(b)
the earlier application has not yet served as a basis for claiming a right of priority,
the date the subsequent application was filed, rather than that of the earlier application, shall be considered the starting date of the period of priority under subsection (2), and the earlier application may not thereafter serve as a basis for claiming priority.
(7) The Minister may make rules as to the manner of claiming priority under this section.
(8) A right to priority arising under this section may be assigned or otherwise transmitted, either with the application or independently, and the reference in subsection (1) to the applicant’s “successor in title” shall be construed accordingly.
11.
—(1) The Minister may by order confer on a person who has filed an application for the registration of a trade mark in a country or territory to which the Government has entered into a treaty, convention, arrangement or engagement for the reciprocal protection of trade marks, a right to priority, for the purpose of registering the same trade mark under this Act for some or all of the same goods or services, for a specified period from the date of filing of that application.
(2) An order under this section may make provision corresponding to that set out in section 10 or such other provision as appears to the Minister to be appropriate.
Registration procedure
12.
—(1) The Registrar shall examine whether an application for registration of a trade mark satisfies the requirements of this Act (including any requirements imposed by rules made under this Act).
(2) For the purpose of subsection (1), the Registrar may carry out a search, to such extent as he considers necessary, of earlier trade marks.
(3) If it appears to the Registrar that the requirements for registration are not met, the Registrar shall inform the applicant and give him an opportunity, within such period as may be prescribed, to make representations or to amend the application.
(4) If the applicant fails to satisfy the Registrar that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the prescribed period, the Registrar shall refuse to accept the application.
(5) If it appears to the Registrar that the requirements for registration are met, the Registrar shall accept the application.
13.
—(1) When an application for registration has been accepted, the Registrar shall cause the application to be published in the prescribed manner.
(2) Any person may, within the prescribed time from the date of the publication of the application, give notice to the Registrar of opposition to the registration.
(3) The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition and such other matter as may be prescribed.
(4) The Minister may make rules to provide for opposition proceedings and for matters relating thereto.
14.
—(1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application.
(2) If the application has been published, the withdrawal or restriction shall also be published.
(3) In other respects, an application may be amended, at the request of the applicant, only by correcting —
(a)
the name or address of the applicant;
(b)
errors of wording or of copying; or
(c)
obvious mistakes,
and then only where the correction does not substantially affect the identity of the trade mark or extend the goods or services covered by the application.
(4) The Minister may make rules for the publication of any amendment which affects the representation of the trade mark, or the goods or services covered by the application, and for the making of objections by any person claiming to be affected by it.
15.
—(1) Where an application has been accepted and —
(a)
no notice of opposition is given within the period referred to in section 13(2); or
(b)
all opposition proceedings are withdrawn or decided in favour of the applicant,
the Registrar shall register the trade mark.
(2) Subject to subsections (3) and (4), a trade mark when registered shall be registered as of the date of the application for registration, and that date shall be deemed for the purposes of this Act to be the date of registration.
(3) If —
(a)
the application was in respect of a trade mark whose registration had also been sought in a Convention country;
(b)
the applicant has a right to priority by virtue of section 10 for the registration of the trade mark in respect of particular goods or services; and
(c)
the trade mark is registered under this Act,
the registration of the trade mark in respect of those goods or services is taken to have had effect from (and including) the date on which the application was filed in that country.
(4) If —
(a)
the application was in respect of a trade mark whose registration had also been sought in a country or territory in relation to which an order under section 11 was made;
(b)
the applicant has a right to priority by virtue of that order for the registration of the trade mark in respect of particular goods or services; and
(c)
the trade mark is registered under this Act,
the registration of the trade mark in respect of those goods or services is taken to have had effect from (and including) the date on which the application was filed in that country or territory.
(5) On the registration of a trade mark, the Registrar shall issue to the applicant a certificate of registration.
16.
—(1) Notwithstanding section 15(1), if, before a trade mark is registered, the Registrar is satisfied —
(a)
that the application for registration of the trade mark was accepted because of an error or omission in the course of the examination; or
(b)
that, in the special circumstances of the case, the trade mark should not be registered,
the Registrar may revoke the acceptance of the application.
(2) If the Registrar revokes the acceptance —
(a)
the application is taken to have never been accepted; and
(b)
section 12 again applies in relation to the application.
Series of trade marks
17.
—(1) A person may make a single application under section 5 for the registration of a series of trade marks in respect of the same goods or services, or of similar goods or services which fall within a single class in accordance with the system of classification referred to in section 6.
(2) For the purposes of this Act, “series of trade marks” means a number of trade marks which resemble each other as to their material particulars and which differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.
(3) If the application meets all the requirements under this Act and the Registrar is required under section 15 to register the trade marks, he shall register them as a series in one registration.
Duration, renewal and alteration of registered trade mark
18.
—(1) A trade mark shall be registered for a period of 10 years from the date of registration.
(2) Registration may be renewed in accordance with section 19 for further periods of 10 years.
19.
—(1) The registration of a trade mark may be renewed at the request of the proprietor, subject to payment of the prescribed renewal fee.
(2) The Minister may make rules for the Registrar to inform the proprietor of a registered trade mark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed.
(3) A request for renewal shall be made, and the renewal fee paid, on or before the date of expiry of the registration.
(4) Renewal shall take effect from the expiry of the previous registration.
(5) If the registration is not renewed in accordance with this section and the rules referred to in subsection (2), the Registrar shall remove the trade mark from the register.
(6) The Minister may make rules to provide for the restoration of the registration of a trade mark which has been removed from the register, subject to such conditions, if any, as may be prescribed.
20.
—(1) Subject to subsection (2), a registered trade mark shall not be altered in the register, either during the period of registration or on renewal.
(2) The Registrar may, at the request of the proprietor, allow the alteration of a registered trade mark where the mark includes the proprietor’s name or address and the alteration is limited to alteration of that name or address and does not substantially affect the identity of the mark.
(3) The Minister may make rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it.
Cancellation, revocation and invalidity
21.
—(1) A registered trade mark may be cancelled by the proprietor in respect of some or all of the goods or services for which it is registered.
(2) The Minister may make rules —
(a)
to provide for the manner and effect of a cancellation; and
(b)
for protecting the interests of other persons having a right in the registered trade mark.
22.
—(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 his 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 his 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 shall 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 shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.
(5) The registration of —
(a)
a trade mark which consists of a geographical indication; or
(b)
that part of a trade mark which is a geographical indication,
may be revoked if the geographical indication —
(i)
is not protected;
(ii)
has ceased to be protected; or
(iii)
has fallen into disuse,
in its country of origin.
(6) 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, he may at any stage of the proceedings refer the application to the Court.
(7) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.
(8) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be 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.
23.
—(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 referred to in subsection (1)(b), (c) or (d) of that section, it shall 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 the conditions set out in section 8(1), (2) or (3) apply; or
(b)
that there is an earlier right in relation to which the condition set out in section 8(4) 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 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, he may at any stage of the proceedings refer the application to the Court.
(6) An application for a declaration of invalidity of the registration of a trade mark on the basis that it was in breach of section 7(7) shall not be made after the expiry of 5 years from —
(a)
the date of registration of the trade mark; or
(b)
the date on which use of the trade mark by the person who applied for its registration or his predecessor in title has become generally known in Singapore,
whichever is the earlier, unless the applicant shows to the satisfaction of the Registrar that the registration of the trade mark was applied for in bad faith.
(7) 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 shall be declared invalid as regards those goods or services only.
(8) Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made, but this shall not affect transactions past and closed.
24.
—(1) Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of 5 years in the use in the course of trade of a registered trade mark in Singapore, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark or other right —
(a)
to apply for a declaration that the registration of the later trade mark is invalid; or
(b)
to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used,
unless the registration of the later trade mark was applied for in bad faith.
(2) Where subsection (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark or right may no longer be invoked against his later trade mark.
Miscellaneous
25. The Registrar may, at the written request of the person who has made an application (other than an application for the registration of a trade mark), or filed a notice or other document for the purposes of this Act, or at the written request of the person’s agent, amend the application, notice or document —
(a)
to correct a clerical error or an obvious mistake; or
(b)
if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.