Region: Singapore

First decision recognizing mark as well known issued by High Court

In <i>Amanresorts Ltd v Novelty Pte Ltd</i>, the High Court of Singapore has, for the first time, recognized a trademark as being well known in Singapore. Based on this finding, the court granted injunctive relief to the plaintiffs pursuant to Section 55(3)(a) of the Trademarks Act.

29 May 2007

WARMAN first user fails to invalidate later registration

The Singapore High Court has held that proprietorship of a trademark based on prior use is merely a default right under common law, which can be removed by an agreement concerning the right to register the mark. In the case at hand, the court found that the defendant had not registered the WARMAN mark in bad faith, even though the plaintiff had been using the mark in Singapore for much longer.

22 May 2007

Trademark law amendments to come into force on July 1

The amendments to the Singapore Trademarks Act 1998 introduced among other reasons to comply with the Singapore Treaty on the Law of Trademarks, will come into force on July 1 2007. The main changes include the introduction of a multi-class system and the possibility to divide a trademark application.

11 May 2007

Only material error of principle leads to reversal of findings of fact

In a landmark decision relating to McDonald's Corporation's opposition against the registration of the mark MACCOFFEE, the Singapore Court of Appeal has ruled that an appellate court should not disturb the findings of fact of a trademark tribunal, except where there is a material error of principle.

10 April 2007

Singapore is first to ratify new Trademark Law Treaty

On March 26 2007 Singapore became the first member of the World Intellectual Property Organization to deposit its instrument of ratification for the Singapore Treaty on the Law of Trademarks. The Singapore Trademarks Act was also subsequently amended to give effect to the treaty.

04 April 2007

Nestlé fails to register 3-D shape of red mug in Singapore

The Singapore Trademarks Registry has refused Société des Produits Nestlé SA's application, under the Madrid Protocol, to register the three-dimensional shape of a red mug as a trademark for coffee in Singapore. Among other things, the registrar concluded that the mark was devoid of distinctive character and the evidence of use provided was for a two-dimensional, as opposed to three-dimensional, mark.

12 March 2007

Licences of pending trademark applications may now be recorded

The Singapore Parliament has passed the Trademarks Amendment Act, which introduces changes in respect of the recordation of transactions. Under the Trademarks Act 1998, 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.

05 March 2007

JWEST opposition upheld on bad faith grounds only

The High Court of Singapore has overturned in part a registrar's decision in relation to an opposition against the registration of the mark JWEST for goods in Class 25 of the Nice Classification. Although the court upheld the earlier finding that the application had been filed in bad faith, which was sufficient for the opposition to succeed, it did not consider the mark to be confusingly similar to an earlier JEFFERY-WEST mark for similar goods.

21 February 2007

Confusion likely between CAREFREE and CAREREE marks

In <i>Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corporation)</i>, the Singapore High Court has overturned an earlier decision and has allowed Johnson & Johnson's opposition against the registration of the mark CAREREE for incontinence products. The court reasoned that the mark was likely to cause confusion with Johnson & Johnson's CAREFREE mark used for feminine hygiene products.

30 January 2007

Inverse passing off examined by High Court

In <i>QB Net Co Ltd v Earnson Management (S) Pte Ltd</i>, the High Court of Singapore has examined, among other things, the plaintiff's claims of inverse passing off and breach of confidence against the defendants in relation to a system of operation for 10-minute haircut salons. Dismissing the inverse passing off claim, the court held that the plaintiff had failed to establish goodwill in its system for hair salons.

23 January 2007

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