Region: Singapore

MCCAFÉ opposition dissolves MACCOFFEE application on appeal

The Singapore High Court has dismissed an appeal by Future Enterprises Pte Ltd against a decision of the principal assistant registrar of trademarks to refuse registration to Future's MACCOFFEE mark in Class 30 of the Nice Classification. The registrar held that the MACCOFFEE mark was confusingly similar to McDonald's Corporation's earlier MCCAFÉ mark in the same class.

27 October 2006

Time to stop use of DA VINCI mark on watches, says High Court

In <i>Richemont International SA v Da Vinci Collections Pte Ltd</i>, the Singapore High Court has ruled that the defendant had infringed the plaintiff's Singapore registered trademark DA VINCI in respect of "watches". It held that the defendant had used a sign that was identical to the plaintiff's earlier DA VINCI trademark on watches and watch straps.

11 October 2006

Statutory bad faith considered for the first time

In <i>Rothmans of Pall Mall Limited v Maycolson International Ltd</i>, the Singapore High Court has examined the issue of bad faith under the Singapore Trademarks Act for the first time. Among other things, the court noted that a "trademark applicant should bear a positive duty to investigate into the <i>bona fides</i> of a mark before seeking registration".

24 April 2006

Spanish company's registration for NIKE revoked

The Singapore Court of Appeal has overruled a High Court decision in which it upheld the registration of the trademark NIKE owned by Spanish company Campomar SL. The appellate court ordered the revocation of the mark on the grounds that it had not been put to genuine use in Singapore.

24 March 2006

Amendments to examination practice issued

The Statutes (Miscellaneous Amendments) (No 2) Act 2005 (which amends the Trademarks Act) and the Trademarks (Amendment) Rules 2005 came into effect on January 1 2006. The new laws change the way trademark applications under examination are handled by the Registry of Trademarks.

01 March 2006

Competition guidelines on IP rights finalized

The Competition Commission of Singapore has finalized a set of guidelines outlining how it plans to treat IP agreements and the conduct of IP rights holders under the country's new competition law. The commission has stated that it will regard IP rights as being "essentially comparable" to other forms of property but that it will scrutinize certain types of agreements and conduct.

22 February 2006

2-D mark not automatically a 3-D mark under new Trademarks Act

The Singapore High Court has dealt with a case raising issues as to the legal status of shape marks and various other points relating to infringement and revocation. Among other things, the court held that two-dimensional drawings registered by Oystertec Plc as trademarks under previous trademark legislation did not automatically cover three-dimensional shapes following the enactment of the new Trademarks Act in 1999.

07 February 2006

Nestlé fails to win GOLD in opposition action

The Singapore Trademarks Registry has rejected Nestlé's application to register the mark GOLD for cereals in Class 30 of the Nice Classification. It upheld an opposition action in which it was claimed that the mark GOLD was incapable of distinguishing Nestlé's goods and was devoid of distinctive character.

23 January 2006

McDonald's MCCAFÉ mark wards off MACCOFFEE application

The Singapore Trademarks Registry has upheld McDonald's opposition to Future Enterprises' application for the mark MACCOFFEE on the grounds that it was confusingly similar to McDonald's prior registration for MCCAFÉ. The case contrasts with the Court of Appeal's decision in 2004 dismissing McDonald's appeal against the registration of the marks MACTEA, MACNOODLES and MACCHOCOLATE.

20 January 2006

Free Trade Agreement's effect on border enforcement measures

Where national forces have not managed to impose the introduction of new anti-counterfeiting legislation, obligations contracted under international or bilateral trade agreements may do the trick. Penny Leng of Drew & Napier LLC in Singapore explains that the US-Singapore Free Trade Agreement, signed in 2003, led to significant amendments to the country's border measures. The amendments, which came into force 18 months ago, provide for a simplified notice procedure, new seizure powers, a new search warrant procedure and enhanced enforcement measures.

18 January 2006

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