Singapore Trademarks (Amendment) Act comes into force

The Trademarks (Amendment) Act 2004 has come into force. It incorporates significant changes to the Trademarks Act 1998, in line with Singapore's commitments under the IP chapter of the US-Singapore Free Trade Agreement (see FTA will affect Singapore's trademark law practice).

The main amendments are highlighted below:

• A trademark no longer needs to be "visually perceptible". Accordingly, a sound or a smell may now be registered as a trademark provided that it meets the registrability criteria under the Trademarks Act (eg, that it is capable of being represented graphically).
  
  
• Priority claims are now restricted to applications where the owner claims the first filing date for the same mark in another country that is (i) signatory to the Paris Convention for the Protection of Industrial Property, or (ii) a member of the World Trade Organization.
  
  
• The registration date of a trademark filed on or after July 1 2004 will be backdated to its filing date, even for applications claiming a priority date. Renewal dates will be calculated accordingly.
  
  
• The renewal of a trademark registration due on or after July 1 2004 may be filed within six months of the date of expiry of the registration with payment of a penalty fee. If the mark is not renewed within that period, it will be removed from the register and an application to restore the mark will have to be filed for the registrar's consideration within six months of the date of removal.
  
  
• Owners of well-known marks are afforded enhanced protection where third parties either register the mark in their own name, or use it without consent as a mark or business identifier (ie, a sign that is capable of being represented graphically and is used to identify a business), where such use (i) indicates a connection between the third party and the owner of the well-known mark, and (ii) is likely to damage the interests of the owner of the well-known mark. The requirement that the registration or use creates a likelihood of confusion no longer exists.
  
  
• The concepts of dilution and unfair advantage have been introduced and provide enhanced protection to the owner of a trademark that qualifies as "well-known to the public at large in Singapore" as from July 1 2004. The provisions apply where a third party (i) applies for, registers or uses a mark, or (ii) uses a business identifier, the whole or an essential part of which is identical or similar to the well-known mark. The provisions apply regardless of whether there is any likelihood of confusion on the part of the public.
  
  
• A new relief of statutory damages has been introduced and may be granted by the courts in cases of infringement involving the use of a counterfeit trademark. In particular, the courts may award statutory damages not exceeding S$100,000 (approximately $58,300) for each type of goods or services in relation to which the counterfeit trademark has been used. The total may not exceed S$1 million, unless the plaintiff proves that its actual loss from such infringement is in excess of S$1 million.
  
  
• Specific provisions in the trademark legislation for increased enforcement powers have been introduced to substitute the relevant provisions of the Criminal Procedure Code.
  
  
• Border measures have been improved through the introduction of less onerous notification requirements for customs enforcement action, as well as provisions permitting ex officio measures such as the examination and detention of counterfeit goods without a prior request from the mark owner.
  
  
• A licence to use a registered trademark is now binding on every successor in title to the licensor's interest except where (i) the licence provides otherwise, or (ii) a person has purchased the interest in a trademark in good faith and without actual or constructive notice of the licence. Further, every person shall be deemed to have notice of a licence if the application to record the licence on the register is filed on or after July 1 2004.

  In addition, the administrative requirements concerning licences have been relaxed. A licence will still warrant enforcement rights, and damages, an account of profits or statutory damages for infringement, even if it is not recorded.

These latest changes are part of a concerted effort by the Singapore government to consolidate Singapore's leading position among countries where valuable IP rights are respected and protected, as well as to complement its aim to develop into the region's IP hub. They also reflect Singapore's proactive approach in developing laws, suitable for small countries, which strive to balance fairly the rights of IP owners with those of the public.

For background information on the amendments, see Consultation period on Trademarks Act amendments closes.

Kevin Wong, Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd, Singapore