Singapore

Change.org responds to The Independent Group new name, IPOS GI registry, and delays at IP Australia: news digest

In our latest round-up, we look at consumers being frustrated by “disjointed” brand experiences, an Oregon-based clothing retailer in a trademark fight against Under Armour, brands in an age of political division, and much more.

Change.org responds to The Independent Group new name, IPOS GI registry, and delays at IP Australia: news digest
26 Mar 2019

Lego prevails, Jaguar Land Rover wins big in China, and IPOS extends mediation scheme: news digest

In our latest round-up, we look at a major new anti-counterfeiting player entering the market, the Hollywood Walk of Fame taking issue with Dubai Stars, results of a study on the health benefits of plain packaging, and much more.

27 Feb 2019

IP offices of EU, Chile, Singapore and Spain named most innovative in the world

In exclusive research from WTR, the EUIPO has been ranked as the most innovative IP office in the world for the third year in a row. Closely behind are the registries of Chile, Singapore and Spain.

Latest

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15 Mar 2019

Chicago Mercantile Exchange v Intercontinental Exchange: exclusively descriptive names are not registrable trademarks

A recent decision of the IP Office of Singapore in invalidity proceedings illustrates that, even if a party is the sole provider of a particular product or service, it does not automatically acquire the right to register the mark covering that product or service. Read more

12 Feb 2019

Plain packaging passed in Singapore, cat photo trademarks, and US Senate IP subcommittee: news digest

In our latest round-up, we look at a new report showing 70% of Kenyans use counterfeit products, a new system developed to identify fake logos, the Spanish football league scoring a piracy win, and much more. Read more

1 Feb 2019

Appeal court holds that goods in transit are imported and thus could infringe trademark rights

The Singapore Court of Appeal has held that “goods in transit” are still considered to be imported for the purpose of the Trademarks Act. However, in the case at hand, although the respondent imported the goods, it did not use the signs at issue. Rather, it was merely providing a commercial service as freight forwarders, and to impose liability for infringement would be against the letter and spirit of the Trademarks Act. Read more

30 Jan 2019

5-HOUR ENERGY case: registrar finds bad faith by inference

In opposition proceedings brought by International IP Holdings LLC against Lehman Holdings Limited’s applications to register a series of marks, the Hong Kong registrar has found that the only reasonable inference was that the applicant had copied the opponent’s mark.   Read more

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Anti-counterfeiting

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18 Oct 2018

“Leveraging the law is not the whole solution”: interview with Philip Morris’ Herman Cheung

In an exclusive interview, the tobacco giant's Manager of Illicit Trade Prevention talks to WTR about the importance of anti-counterfeiting efforts as the company transitions to a smoke-free future. Read more

7 Jun 2018

New EUIPO report charts increasing sophistication and diversification of counterfeiters

The EUIPO has released a new report, compiling research since 2013, to present a comprehensive and updated picture of the scope and impact of IP rights infringement in the European Union. Read more

7 Dec 2017

Singapore counterfeit goods ruling highlights why brand owners and shipping companies must cooperate

The Singapore High Court has found a freight company not liable for the transport of counterfeit goods from China. The landmark decision is bad news for rights holders. Read more

2 Jun 2017

Proposed changes to Singapore’s customs regime could aid counterfeiters “looking for enforcement gaps”

Time is running out for rights holders to have their say on proposed changes to the Singaporean customs regime. Designed to increase the country’s attractiveness as a transshipment hub, one industry expert has warned that the proposed amendments to the Customs Act could have the opposite effect, and create enforcement gaps that could be exploited by those engaged in counterfeiting and other illicit activities. Read more

Brand management

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22 Mar 2018

Franchising: the legislative framework in Singapore and Malaysia

The rules governing franchise agreements vary greatly across Asia. Here, we look at the different legislation related to enforcement and termination in Singapore and Malaysia. Read more

1 Mar 2018

Franchising: a global guide to brand monetisation

In the first of a two-part series, we outline the legislative framework for franchising in nine jurisdictions across Asia and South America. Read more

10 Apr 2017

Co-branding: did the High Court in Samsonite get its description right?

In Samsonite IP Holdings Sarl v An Sheng Trading Pte Ltd, the High Court has considered whether the parallel importation of backpacks bearing the trademark SAMSONITE into Singapore, as part of what was called a co-branding agreement, was permitted under the doctrine of exhaustion of rights. Read more

7 Nov 2016

Crocodile’s former licensee held liable for damages

The IP court in Taiwan has ruled that Ya-E International, a former licensee of Crocodile International, should pay damages of NT$2,805,222 (US$95,416) for trademark infringement and breach of a trademark licence agreement. Read more

Enforcement and litigation

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15 Mar 2019

Chicago Mercantile Exchange v Intercontinental Exchange: exclusively descriptive names are not registrable trademarks

A recent decision of the IP Office of Singapore in invalidity proceedings illustrates that, even if a party is the sole provider of a particular product or service, it does not automatically acquire the right to register the mark covering that product or service. Read more

30 Jan 2019

5-HOUR ENERGY case: registrar finds bad faith by inference

In opposition proceedings brought by International IP Holdings LLC against Lehman Holdings Limited’s applications to register a series of marks, the Hong Kong registrar has found that the only reasonable inference was that the applicant had copied the opponent’s mark.   Read more

22 Jan 2019

Cracking the bad-faith code: U-LI case provides guidance on establishing bad faith

The decision of the Intellectual Property Office of Singapore in Tan Buck Hai v United U-LI Projects Pte Ltd offers a unique opportunity to understand the kinds of situations which will fall within the ground of bad faith.   Read more

2 Nov 2018

Azerbaijan pledges IP reforms, plain packaging in Singapore, and Ecuador plans mediation center: news round-up

In our latest round-up, we look at the JPO offering a souvenir certificate for long-time rights holders, fashion brands stepping up their tech game, a new director at the Tunisian IP Office, and much more. Read more

Goverment/policy

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21 May 2018

Fake press passes, ‘.sucks’ gun violence debate and the Annual Meeting heads to Singapore: INTA 2018 day one report

The trademark industry have descended on Seattle for INTA’s 2018 Annual Meeting. The World Trademark Review team is on the ground, and we present a daily round-up of event highlights and observations. Read more

5 Feb 2018

Singapore opens plain packaging consultation; hits out at “misleading” use of branding by tobacco companies

Singapore’s Ministry of Health has opened a public consultation on plain packaging. While doing so, it firmly dismisses legal and trade-related arguments against the measure, which should concern rights holders. Read more

19 May 2016

Australian and Singaporean courts clarify ‘own name’ defence

The bona fide use of ‘own name’ is a longstanding defence to trademark infringement in Singapore and Australia. However, although case law on the defence is sparse in both countries, the Court of Appeal of Singapore and the Federal Court of Australia have recently issued decisions which provide guidance. Read more

Law firms

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7 Nov 2016

Listed trademark firms look to Asia for growth as Spruson & Ferguson acquires Ella Cheong in $21 million deal

Trailblazing publicly traded IP law firm Spruson & Ferguson has made its first overseas acquisition with its parent company’s HK$162 million (US$20.9 million) purchase of Hong Kong-based boutique Ella Cheong and subsidiary Ella Cheong Intellectual Property Agency (Beijing). The deal will significantly expand Sprusons’ presence in Asia – a key objective in the growth plans of firms involved in Australia’s recent flurry of IP practice initial public offerings. Read more

IP offices

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2 Mar 2018

Singapore’s timid local trademark scene belies its branding strength: exclusive data analysis

This week’s country data report looks at the small but mighty trademark profile of Singapore. As well as exploring its nation brand strength, we identify its most important trademark-intensive industries and reveal the leading brand owners, both in value and portfolio size. Read more

30 Mar 2017

Singapore targets enhanced role for IP practitioners to secure future economic growth

The IP Office of Singapore and Workforce Singapore – an agency under the city-state’s labour ministry – have joined forces to launch a new educational programme aimed at equipping Singaporean professionals with IP-related skills. The introduction of the scheme follows the recent publication of the Singaporean government’s long-term economic plan, in which IP is a central pillar. Read more

1 Mar 2017

Building for the future

The chief executive of the IP Office of Singapore – which is renowned for its ground-breaking approach to trademark services – offers his vision of how its counterparts around the world can transform themselves into innovation agencies Read more

9 Feb 2017

IP Office of Singapore rejigs trademark fees; chief executive calls on all IP offices to transform into “innovation agencies”

The Intellectual Property Office of Singapore (IPOS) has announced it is slashing trademark filing fees in an effort to “keep them competitive with other countries”, although trademark renewal fees are set to rise “to discourage IP hoarding”. The move comes at a time when IPOS chief executive, Daren Tang, is urging IP offices to evolve beyond simply administrating an IP register. Read more

Portfolio management

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5 Oct 2018

Blow for Apple as its opposition to Swatch AG’s TICK DIFFERENT is dismissed

The registrar of the IP Office of Singapore has dismissed Apple’s opposition against the registration of Swatch AG’s TICK DIFFERENT mark based on its earlier THINK DIFFERENT mark. Read more

22 Mar 2018

Franchising: the legislative framework in Singapore and Malaysia

The rules governing franchise agreements vary greatly across Asia. Here, we look at the different legislation related to enforcement and termination in Singapore and Malaysia. Read more

1 Mar 2018

Gucci successfully opposes registration of GUCCITECH in Class 11

The IP adjudicator has upheld Guccio Gucci SpA’s opposition to the registration of the figurative mark GUCCITECH in Class 11 under Sections 8(2)(b), 8(4) and 8(7)(a) of the Trademarks Act. Read more

1 Mar 2018

Franchising: a global guide to brand monetisation

In the first of a two-part series, we outline the legislative framework for franchising in nine jurisdictions across Asia and South America. Read more

Trademark law

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10 Dec 2018

Servicing the global flow of innovation and ideas: the IP Office of Singapore year in review

The recent boom in economic activity across Asia has been reflected by a significant increase in the number of IP applications filed in the region – and the IP Office of Singapore is leading the way in innovation. Read more

2 Nov 2018

Azerbaijan pledges IP reforms, plain packaging in Singapore, and Ecuador plans mediation center: news round-up

In our latest round-up, we look at the JPO offering a souvenir certificate for long-time rights holders, fashion brands stepping up their tech game, a new director at the Tunisian IP Office, and much more. Read more

6 Sep 2018

IPOS dismisses adidas opposition on lack of similarity in basic geometric shapes

The IP Office of Singapore has rejected adidas’ opposition against a device mark on multiple grounds, holding that adidas’ earlier mark had only a normal level of inherent technical distinctiveness.   Read more

6 Jul 2018

Tencent v Monster Energy decision: partial oppositions unlikely to be allowed

The decision of the Intellectual Property Office of Singapore in Tencent v Monster Energy sheds some light on whether partial oppositions are allowed under the Trademarks Act. Read more

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Ik-Hyun Seo
Senior Partner
Seoul, South Korea
Cho & Partners