Consultation period on Trademarks Act amendments closes

The consultation period for the proposed amendments to the Singapore Trademarks Act has ended. The most notable proposals include the following:

• Non-visual marks (eg, sounds and scents) will be registrable.
  
  
• The requirement that the owner of a well-known mark show a likelihood of confusion to oppose the registration of a junior mark will be removed. Similarly, proof of likelihood of confusion will no longer be necessary for a finding of infringement of a well-known registered mark.
  
  
• The recourse to injunctions for owners of well-known marks will no longer be restricted to cases where a likelihood of confusion arises from use of an identical or similar trademark in relation to identical or similar goods or services. Instead, owners of well-known marks will be entitled to an injunction in any of the following situations:

  o An identical trademark is used in relation to identical goods or services.

  o An identical trademark is used in relation to similar goods or services and there is a likelihood of confusion.

  o A similar mark is used in relation to identical or similar goods or services and there is a likelihood of confusion.

  o Use of an identical or similar trademark or business identifier on any goods or services where such use (i) would indicate a connection with the mark owner, and (ii) is likely to cause damage to the owner's interests.

  o Use of an identical or similar trademark or business identifier on any goods or services where it would dilute in an unfair manner, or take unfair advantage of, the distinctive character of the well-known mark, provided that the mark is well-known to the public at large.

  Where the last two criteria are met, rights in a well-known mark would (i) prevent the registration of a conflicting mark, and (ii) entitle the rights holder to start an infringement action.

• A licensee will acquire rights even if the licence is not recorded. A person who purchases the interest in the trademark in good faith and without actual or constructive notice of the licence will not be bound by the licence. However, if the licence is recorded, the record will be deemed to be notice to the purchaser.
  
  
• Where both the mark owner and the exclusive licensee have concurrent rights of action, one party will be able to bring proceedings for infringement without having to join or add the other as a party to the action.
  
  
• Courts will be able to award damages plus an account of any profits attributable to the infringement that have not been taken into account when computing damages - as opposed to either damages or an account of profits under the current act.
  
  
• Statutory damages of up to S$100,000 per type of infringement will be introduced where there is a false application of the trademark to goods or services, or where counterfeit goods or services are sold or offered for sale.
  
  
• Strengthened enforcement regimes and tighter border measures will be introduced. Mark owners will have to provide less information to the authorities for the seizure of infringing imported goods. Further, authorized officers will be empowered to detain goods imported into or about to be exported from Singapore upon reasonable suspicion that they are counterfeits. However, these goods will be released unless the trademark owner gives security and/or institutes an action for infringement.

It is clear that the proposed amendments will enhance the rights of the owners of well-known marks. However, the main impact of the proposals will be in the remedies available in infringement cases: they will allow Singapore to move away from a compensatory regime to one of deterrence. The public feedback will be considered during the debates in Parliament scheduled to start next week. The changes are expected to take effect on July 1.

Daniel Lim, Peter Lo and Cindy Quek, Shook Lin & Bok, Singapore