Licences of pending trademark applications may now be recorded

The Singapore Parliament passed the Trademarks Amendment Act (3 of 2007) on January 22 2007. The act introduces a few changes to the Trademarks Act 1998, in particular in respect of the recordation of transactions.

Under Section 39 of the Trademarks Act, only transactions relating to registered trademarks were recordable. The amendment act provides that licences, assignments and security interests in respect of an application for a trademark may also be recorded.

Section 41 of the Trademarks Act, which recognizes pending applications as personal property, has also been amended to replicate most of Section 39, in particular the fact that a mark for which application is pending may be licensed and that licence may be recorded.

However, Section 42, which addresses the legal nature of trademarks licences, has not been amended and continues to refer to licences of registered trademarks only.

The Trademarks Amendment Act implies that a licence with respect to a trademark application would be a licence in respect of personal property; however, it is not entirely clear what rights are being licensed. This is particularly the case for an applicant that files a trademark application on an intent-to-use basis. If the trademark application is pending, and the applicant has not used the mark in Singapore and therefore has no goodwill to bring a passing off action, what is being licensed?

Jim Lim and Jeffrey Lim, Shook Lin & Bok Singapore, Singapore