Region: Singapore

Unprecedented amount of statutory damages for trademark infringement awarded

In <I>Converse Inc v Ramchandani</I>, the High Court has awarded Converse an unprecedented sum of S$100,000 - the maximum amount of statutory damages under Section 31(5) of the Trademarks Act - for infringement of its CONVERSE mark. There seems to be an inherent tension in the decision: on the one hand, it requires plaintiffs to adduce sufficient evidence of their loss, while on the other, it accepts that plaintiffs may be unable to provide such evidence.

15 September 2014

New Geographical Indications Act passed by Parliament

The Geographical Indications Act has been passed by Parliament. The new act will repeal and re-enact with amendments the existing act, and amendments will be made to the Trademarks Act. The new act will introduce the following features into the GI regime: a registration system; the extension of the enhanced level of protection currently available only for wine and spirits to all registered GIs; and access to enhanced border enforcement measures for owners of registered GIs.

12 June 2014

Registrar allows cross-examination of witness in cancellation proceedings

In <I>PT Eigerindo Multi Produk Industri v Sports Connection Pte Ltd</I>, the registrar has deviated from the default rule and allowed an application for cross-examination of the applicant's witness in cancellation proceedings. The registrar held that, in view of the serious nature of the applicant’s bad-faith claim, the prejudice to the mark owner justified the exercise of her discretion to allow the cross-examination of the applicant’s deponent.

11 April 2014

Good-faith mistake may not be sufficient for registrar to grant extension of time

In <I>V Hotel Pte Ltd v Jelco Properties Ltd</I>, the registrar has rejected a request for restoration of a trademark application and extension of time to file evidence in opposition proceedings. The registrar held that a good-faith mistake, <I>per se</I>, may not be sufficient for the registrar to exercise his discretion to grant an extension of time. There must be some extenuating circumstances to explain the oversight or delay.

28 March 2014

How Singapore’s PTO is harnessing art to take pro-IP message to the masses

This week <i>World Trademark Review</i> was the first media outlet to receive a sneak preview of the Intellectual Property Office of Singapore’s (IPOS) new service centre, which opens next month and is designed to serve both IP novices and experts. To attract the former, it has placed an emphasis on artistic creation and will use art installations, band performances and photography exhibits to entice the public to learn more.

27 March 2014

Court of Appeal issues landmark decision on likelihood of confusion assessment

The Court of Appeal has released its ruling in <i>Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts</i>, which is probably the most important IP decision of 2013. The court considered two key issues in relation to the assessment of the likelihood of confusion – namely, whether there is a difference in approach between opposition proceedings and infringement proceedings, and whether extraneous factors are relevant.

07 January 2014

IPOS decision provides guidance on how to establish well-known status

In <i>Formula One Licensing BV v Idea Marketing SA</i>, the Intellectual Property Office has held that F1 was not a well-known mark for motor racing in Singapore as of the date of application for registration of the mark F1H2O. The office provided useful guidance regarding the evidence to be submitted to prove the well-known status of a mark.

13 December 2013

Inclusion of prior mark in later mark does not guarantee success in opposition

In <i>Kenzo v Kenzo</i>, the hearing officer has rejected fashion house Kenzo’s opposition against the registration of KENZO ESTATE by Tsujimoto Kenzo, a winemaker based in California. The case reiterates that the mere inclusion of a prior mark in a later mark will not guarantee success in an opposition. It also highlights the evidentiary burden that any prospective opponent faces when seeking to rely on the protection afforded to well-known marks.

25 September 2013

Court of Appeal clarifies assessment of likelihood of confusion

The decision of the Court of Appeal in <i>Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd</i> may be considered as one of the more important rendered by the court in recent years. In particular, the court clarified two areas of trademark law: the comparison of composite marks and the assessment of the likelihood of confusion.

10 July 2013

SGX guidelines on disclosure of IP rights: impact on trademarks-focused businesses

SGX has released an advisory providing guidance on the disclosure of IP rights by listed companies and companies seeking listing. The advisory makes it clear that companies seeking listing or listed companies which are materially dependent on IP rights must disclose information on their IP rights where this can affect the price or value of their securities.

28 June 2013

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