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23 January 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.

20 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.

26 April 2005

Registered design cancelled in dispute between electronics firms

In Nagasima Electronic Engineering Pte Ltd v APH Trading Pte Ltd, the High Court of Singapore has denied the plaintiff's claim that the defendant had infringed its design rights in an electrical isolator. The court upheld the defendant's counterclaim that the registered design was invalid.

08 April 2005

Singapore to accede to Geneva Act

Singapore is due to accede to the Geneva Act of the Hague Agreement on designs during the first half of 2005, in line with the Registered Designs (Amendment) Act 2004, which came into force on January 1 2005. This will allow Singapore to meet its obligations under the European Free Trade Association-Singapore Free Trade Agreement.

18 March 2005

ESPRIT opposition highlights persuasiveness of EU law in Singapore

The Singapore registrar of trademarks has upheld Esprit International's opposition to the registration of two SPA ESPRIT marks and a SPA ESPRIT WHERE MIND IS BODY mark. Citing decisions from the European Court of Justice, the registrar held that the marks were confusingly similar to Esprit International's famous ESPRIT mark.

03 December 2004

McDonald's appeal against MAC registrations fails again

The Singapore Court of Appeal has dismissed McDonald's appeal in its action against the registration of the marks MACNOODLES, MACTEA and MACCHOCOLATE. The court held, among other things, that the marks were neither similar nor aimed at the same market segments as McDonald's MAC marks, which precluded a finding of intent to deceive and bad-faith registration.

04 November 2004

Failed opposition to MTV registration is music to Viacom's ears

The trademark registrar has dismissed an opposition to the registration of MTV for online information services in Singapore. The registrar refuted the allegations that MTV, which stands for 'music television', (i) was descriptive of the services for which registration was sought, and (ii) had become generic.

29 July 2004

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. Among other things, the act has introduced the concept of dilution and statutory damages for the use of a counterfeit trademark.

14 July 2004

McDonald’s opposition to MAC marks fails

In McDonald's Corp v Future Enterprises Pte Ltd, the Singapore High Court has upheld a decision of the trademark registrar that rejected McDonald’s opposition to the registration of the word and device marks MACNOODLES, MACTEA and MACCHOCOLATE. The court held that Future Enterprises’ MAC marks were neither identical nor confusingly similar to McDonald’s MC/MAC series of marks.

07 May 2004

Consultation period on Trademarks Act amendments closes

The consultation period for the proposed amendments to the Trademarks Act has ended. The proposed amendments will enhance the rights accorded to well-known marks and provide extended remedies to trademark owners in cases of infringement. The changes are expected to allow Singapore to move away from a compensatory regime to one of deterrence.

02 March 2004

McDonald's appeals against registration of MAC marks

McDonald's has appealed to the High Court against a Registrar of Trademarks decision to allow Singapore company Future Enterprises Pte Ltd's application to register MACTEA, MACCHOCOLATE and MACNOODLES for instant tea mix, instant cocoa mix and instant noodles respectively. Judgment on the appeal has been reserved.

17 February 2004

Singapore introduces new registration rules

The Trademarks (Amendment) Rules 2003 came into force at the end of last year. While the new rules impose stricter requirements for, among other things, the translation of marks using non-Latin characters or non-English words, they generally simplify the application process.

14 January 2004

FTA will affect Singapore's trademark law practice

The US-Singapore Free Trade Agreement, which provides for amendments to Singapore's trademark law, has come into force. The agreement, the first of its kind between the United States and an Asian country, extends the definition of trademark in Singapore to cover sounds and smells, and creates new remedies for trademark infringement.

02 December 2003

Hugo Boss's cigarette marks stubbed out in Singapore

In Reemtsma Cigarettenfabriken GmbH v Hugo Boss AG, the Singapore High Court has ordered the revocation of German fashion house Hugo Boss's trademark registrations for BOSS and HUGO BOSS for cigarettes, cigars and other smoking accessories on the grounds of non-use.

27 November 2003

BLUE STAR revocation action fails

The High Court of Singapore has dismissed an application to revoke the trademark BLUE STAR and star device for non-use. The court held that although the respondent, Polykwan Trading, had not used the mark in the exact form registered, the distinctive part of the mark was the combination of the words 'Blue' and 'Star', which had been used in Polykwan's variant marks.