Trade Marks Act 1998
(No. 46 of 1998)
TABLE OF CONTENTS
Article
Part I: Preliminary
Short Title and Commencement.................................... 1
Interpretation................................................................. 2
Meaning of Infringing Goods, Material or Articles....... 3
Part II: Registration of Trade Marks
Other Introductory
Registered Trade Marks................................................ 4
Application for Registration of Trade Mark
Application for Registration.......................................... 5
Classification of Trade Marks....................................... 6
Grounds for Refusal of Registration
Absolute Grounds for Refusal of Registration.............. 7
Relative Grounds for Refusal of Registration............... 8
Raising of Relative Grounds in Case of Honest Concurrent Use............................................................. 9
Priority
Claim to Priority of Convention Application................ 10
Claim to Priority from Other Relevant Overseas Application.................................................................... 11
Registration Procedure
Examination of Application.......................................... 12
Publication and Opposition Proceedings....................... 13
Withdrawal, Restriction or Amendment of Application 14
Registration................................................................... 15
Revocation of Acceptance............................................. 16
Series of Trade Marks
Registration of Series of Trade Marks.......................... 17
Duration, Renewal and Alteration of Registered Trade Mark
Duration of Registration................................................ 18
Renewal of Registration................................................ 19
Alteration of Registered Trade Mark............................ 20
Cancellation, Revocation and Invalidity
Cancellation of Registered Trade Mark........................ 21
Revocation of Registration............................................ 22
Grounds for Invalidity of Registration.......................... 23
Effect of Acquiescence................................................. 24
Miscellaneous
Amendment of Other Documents.................................. 25
Part III: Rights and Remedies of Proprietor of Registered Trade Mark
Rights of Proprietor of Registered Trade Mark
Rights Conferred by Registered Trade Mark................ 26
Acts Amounting to Infringement of Registered Trade Mark.............................................................................. 27
Acts not Amounting to Infringement............................ 28
Exhaustion of Rights Conferred by Registered Trade Mark.............................................................................. 29
Registration Subject to Disclaimer or Limitation.......... 30
Infringement Proceedings
Action for Infringement................................................ 31
Order for Erasure, etc., of Offending Sign.................... 32
Order for Delivery Up of Infringing Goods, Material or Articles..................................................................... 33
Order as to Disposal of Infringing Goods, Material or Articles.......................................................................... 34
Remedy for Groundless Threats of Infringement Proceedings................................................................... 35
Part IV: Registered Trade Mark as Object of Property
Nature of Registered Trade Mark.................................. 36
Co-Ownership of Registered Trade Mark..................... 37
Assignment, etc., of Registered Trade Mark................. 38
Registration of Transactions Affecting Registered Trade Mark................................................................... 39
Trusts and Equities........................................................ 40
Application for Registration of Trade Mark as Object of Property.................................................................... 41
Part V: Licensing
Licensing of Registered Trade Mark............................. 42
Exclusive Licences........................................................ 43
General Provisions as to Rights of Licensees in Case of Infringement............................................................. 44
Exclusive Licensee Having Rights and Remedies of Assignee........................................................................ 45
Part VI: Offences
Counterfeiting a Trade Mark......................................... 46
Falsely Applying a Registered Trade Mark to Goods and Services.................................................................. 47
Making or Possessing of Article for Committing Offence.......................................................................... 48
Importing or Selling, etc., Goods with Falsely Applied Trade Mark................................................................... 49
Falsification of Register, etc.......................................... 50
Falsely Representing Trade Mark as Registered........... 51
Representation on Trade Marks of Arms or Flags Prohibited, etc............................................................... 52
Forfeiture of Articles, etc., on Conviction..................... 53
Part VII: International Matters
The Madrid Protocol, etc.
Power to Make Provision Giving Effect to Madrid Protocol, etc.................................................................. 54
Supplementary Provisions
Protection of Well-Known Trade Marks: Article 6bis of Paris Convention, etc................................................ 55
National Emblems, etc., of Convention Countries: Article 6ter of Paris Convention, etc............................. 56
Emblems, etc., of Certain International Organisations: Article 6ter of Paris Convention, etc............................. 57
Notification Under Article 6ter of Paris Convention, etc.................................................................................. 58
Acts of Agent or Representative: Article 6septies of the Paris Convention, etc............................................... 59
Part VIII: Collective Marks and Certification Marks
Collective Marks........................................................... 60
Certification Marks....................................................... 61
Part IX: Administrative and Other Supplementary Provisions
The Registrar
Registrar of Trade Marks and Other Officers................ 62
Delegation by Registrar................................................. 63
Registry of Trade Marks............................................... 64
Seal of Registry............................................................. 65
The Register
The Register.................................................................. 66
Rectification or Correction of Register......................... 67
Inspection of and Extract from Register........................ 68
Powers and Duties of the Registrar
Costs awarded by Registrar........................................... 69
Security for Costs.......................................................... 70
Evidence Before Registrar............................................ 71
Disobedience to Summons an Offence......................... 72
Refusal to Give Evidence an Offence........................... 73
Exclusion of Liability in Respect of Official Acts........ 74
Appeals from Registrar................................................. 75
Forms, Fees, Hours of Business and Publication
Forms............................................................................ 76
Fees............................................................................... 77
Hours of Business and Excluded Days.......................... 78
Publication of Trade Mark Applications, etc................. 79
Trade Mark Agents
Recognition of Agents.................................................. 80
Part X: Importation of Infringing Goods
Border Enforcement Measures
Interpretation of this Part.............................................. 81
Restriction of Importation of Infringing Goods............ 82
Security for Liability or Expense of Seizure................. 83
Secure Storage of Seized Goods................................... 84
Notice of Seizure........................................................... 85
Inspection, Release, etc., of Seized Goods.................... 86
Forfeiture of Seized Goods by Consent......................... 87
Compulsory Release of the Seized Goods to Importer.. 88
Compensation for Failure to Take Action..................... 89
Actions for Infringement of Registered Trade Mark..... 90
Retention of Control of Seized Goods.......................... 91
Disposal of Seized Goods Ordered to be Forfeited....... 92
Insufficient Security...................................................... 93
Powers of Search
Powers of Search in Relation to Vessels, Aircraft and Vehicles........................................................................ 94
Examination of Packages.............................................. 95
Power to Remove Packages and Goods to Police Station or Examination Station..................................... 96
Search of Persons and Baggage.................................... 97
Powers of Authorised Officers to Enter Certain Premises........................................................................ 98
Obstruction.................................................................... 99
Immunity of Government, etc....................................... 100
Part XI: Miscellaneous And General Provisions
Registration to Be Prima Facie Evidence of Validity.... 101
Certificate of Validity of Contested Registration.......... 102
Certificate of Registrar.................................................. 103
Costs of Proceedings Before Court............................... 104
Burden of Proving Use of Trade Mark.......................... 105
Jurisdiction of Courts.................................................... 106
Offence Committed by Partnership or Body Corporate 107
Power to Make Rules.................................................... 108
Repeal........................................................................... 109
Transitional Provisions................................................. 110
Consequential Amendments.......................................... 111
First Schedule:
Collective Marks
General.......................................................................... 1
Signs of Which a Collective Mark May Consist........... 2
Indication of Geographical Origin................................ 3
Mark Not to Be Misleading as to Character or Significance.................................................................. 4
Regulations Governing Use of Collective Mark........... 5
Approval of Regulations by Registrar........................... 6
[Without Title].............................................................. 7
[Without Title].............................................................. 8
Regulations to Be Open to Inspection........................... 9
Amendment of Regulations........................................... 10
Infringement: Rights of Authorised Users................... 11
[Without Title].............................................................. 12
Grounds for Revocation of Registration........................ 13
Grounds for Invalidity of Registration.......................... 14
Second Schedule:
Certification Marks
General.......................................................................... 1
Signs of Which a Certification Mark May Consist....... 2
Indication of Geographical Origin................................ 3
Nature of Proprietor’s Business.................................... 4
Mark Not to Be Misleading as to Character or Significance.................................................................. 5
Regulations Governing Use of Certification Mark........ 6
Approval of Regulations, etc......................................... 7
[Without Title].............................................................. 8
[Without Title].............................................................. 9
Regulations to Be Open to Inspection........................... 10
Amendment of Regulations........................................... 11
Consent to Assignment of Registered Certification Mark.............................................................................. 12
Infringement: Rights of Authorised Users................... 13
[Without Title].............................................................. 14
Grounds for Revocation of Registration........................ 15
Grounds for Invalidity of Registration.......................... 16
Third Schedule:
Transitional Provisions
Introductory.................................................................. 1
Existing Registered Marks............................................ 2
[Without Title].............................................................. 3
Effects of Registration: Infringement........................... 4
Infringing Goods, Material or Articles.......................... 5
Rights and Remedies of Licensee or Authorised User.. 6
Co-Ownership of Registered Mark............................... 7
Assignment, etc., of Registered Mark........................... 8
Licensing of Registered Mark....................................... 9
Pending Applications for Registration.......................... 10
Conversion of Pending Application.............................. 11
Claim to Priority from Overseas Application................ 12
[Without Title].............................................................. 13
Renewal of Registration................................................ 14
Pending Application for Alteration of Registered Mark 15
Revocation for Non-Use............................................... 16
Application for Rectification, etc.................................. 17
Regulations as to Use of Certification Mark................. 18
Certificate of Validity of Contested Registration.......... 19
Fourth Schedule:
Consequential Amendments
The following Act was passed by Parliament on 26th November 1998 and assented to by the President on 11th December 1998:—
I assent.
Ong Teng Cheong,
President.
11th December 1998.
ACT 46 of 1998
An Act to establish a new law for trade marks, to enable Singapore to give effect to certain international conventions on intellectual property and for matters connected therewith, to repeal the Trade Marks Act (Chapter 332 of the 1992 Revised Edition) and to make consequential amendments to certain other written laws .
Be it enacted by the President with the advice and consent of the Parliament of Singapore, as follows:
PART I PRELIMINARY
1.—(1) This Act may be cited as the Trade Marks Act 1998 and shall come into operation on such date as the Minister may, by notification in the Gazette, appoint.
(2) The Minister may appoint different dates for the coming into operation of the different Parts or provisions of this Act.
2.—(1) In this Act, unless the context otherwise requires—
“business” includes a trade or profession;
“certification mark” has the meaning assigned to it in section 61;
“collective mark” has the meaning assigned to it in section 60;
“Convention country” means a country or territory, other than Singapore, which is a party to the Paris Convention or a member of the World Trade Organisation;
“Court” means the High Court;
“earlier trade mark” means—
(a) a registered trade mark or international trade mark (Singapore), the application for registration of which was made earlier than the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks; or
(b) a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention or the TRIPS Agreement as a well known trade mark,
and includes a trade mark in respect of which an application for registration has been made and which, if registered, would be an earlier trade mark by virtue of paragraph (a) subject to its being so registered;
“geographical indication” has the same meaning as in section 2 of the Geographical Indications Act 1998;
“international trade mark (Singapore)” has the meaning given to it under section 54;
“Paris Convention” means the Convention for the Protection of Industrial Property signed at Paris on 20th March 1883, as revised or amended from time to time;
“proprietor” , in relation to a registered trade mark, means the person in whose name the trade mark is registered;
“register” means the register of trade marks maintained by the Registrar under section 66;
“Registrar” means the Registrar of Trade Marks referred to in section 62 and includes any Deputy Registrar of Trade Marks referred to in that section;
“Registry” means the Registry of Trade Marks established under section 64;
“repealed Act” means the Trade Marks Act (Cap.332) repealed by this Act;
“sign” includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof;
“trade” includes any business or profession;
“trade mark” means any visually perceptible sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person;
“TRIPS Agreement” means the Agreement on Trade-Related Aspects of Intellectual Property Rights, set out in Annex 1C to the WTO Agreement, as revised or amended from time to time;
“WTO Agreement” means the World Trade Organisation Agreement signed in Marrakesh in 1994 as revised or amended from time to time.
(2) References in this Act to a trade mark include any trade mark which relates to a service that is ancillary to goods or services dealt with or provided in the course of trade by a person, whether or not the service is provided for money or money’s worth.
(3) References in this Act to a trade mark include, unless the context otherwise requires, a collective mark or certification mark.
(4) References in this Act to use (or any particular description of use) of a trade mark, or of a sign identical with, similar to, or likely to be mistaken for a trade mark, include use (or that description of use) otherwise than by means of a graphic representation.
(5) References in this Act to registration (in particular, in the expression “registered trade mark”) are, unless the context otherwise requires, to registration in the register.
(6) In this Act, a sign is taken to be applied to goods, material or any other thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing.
(7) In deciding, for the purposes of this Act, whether a trade mark is well known in Singapore, one shall take into account the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or any other reason.
3.—(1) For the purposes of this Act, “infringing goods”, “infringing material” and “infringing articles” shall be construed in accordance with subsections (2), (3) and (4), respectively.
(2) Goods are “infringing goods”, in relation to a registered trade mark, if they or their packaging bear a sign identical with or similar to that mark and—
(a) the application of the sign to the goods or their packaging was an infringement of the registered trade mark;
(b) the goods are proposed to be imported into Singapore and the application of the sign in Singapore to them or their packaging would be an infringement of the registered trade mark; or
(c) the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trade mark.
(3) Material is “infringing material”, in relation to a registered trade mark, if it bears a sign identical with or similar to that mark and either—
(a) it is used for labelling or packaging goods, as a business paper, or for advertising goods or services, in such a way as to infringe the registered trade mark; or
(b) it is intended to be so used and such use would infringe the registered trade mark.
(4) “Infringing articles”, in relation to a registered trade mark, means articles—
(a) which are predominantly used for making copies of a sign identical with or similar to that mark; and
(b) which a person has in his possession, custody or control, knowing or having reason to believe that they have been or are to be used to produce infringing goods or material.
PART II REGISTRATION OF TRADE MARKS
4.—(1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.
(2) No proceedings shall lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act shall affect the law relating to passing off or rights under the Geographical Indications Act 1998.
5.—(1) An application for registration of a trade mark shall be made in the prescribed manner to the Registrar.
(2) The application shall state that the trade mark is being used in the course of trade, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used.
(3) The application shall be subject to the payment of the application fee and such other fees as may be appropriate.
6.—(1) Goods and services shall be classified for the purposes of the registration of trade marks according to a prescribed system of classification.
(2) Any question arising as to the class within which any goods or services fall shall be determined by the Registrar, whose decision shall be final.
7.—(1) The following shall not be registered:
(a) signs which do not satisfy the definition of a trade mark in section 2(1);
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
(2) A trade mark shall not be refused registration by virtue of subsection (1)(b), ( c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.
(3) A sign shall not be registered as a trade mark if it consists exclusively of—
(a) the shape which results from the nature of the goods themselves;
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
(4) A trade mark shall not be registered if it is—
(a) contrary to public policy or to morality; or
(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).
(5) A trade mark shall not be registered if or to the extent that its use is prohibited in Singapore by any written law or rule of law.
(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.
(7) Notwithstanding subsection (2), a trade mark shall not be registered if it contains or consists of a geographical indication in respect of a wine or spirit and the trade mark is used or intended to be used in relation to a wine or spirit not originating from the place indicated in the geographical indication.
(8) Subsection (7) shall apply whether or not the trade mark has, or is accompanied by, an indication of the true geographical origin of the wine or spirit, as the case may be, or an expression such as “kind”, “type”, “style”, “imitation” or the like, and irrespective of the language the geographical indication is expressed in that trade mark.
(9) A trade mark shall not be refused registration by virtue of subsection (7) if the application for its registration had been made in good faith, or if it had been used continuously in good faith in the course of trade by the applicant for its registration or his predecessor in title, either—
(a) before the commencement of this Act; or
(b) before the geographical indication in question is protected in its country of origin.
(10) A trade mark shall not be refused registration by virtue of subsection (7) if the geographical indication in question—
(a) has ceased to be protected; or
(b) has fallen into disuse,
in its country of origin.
(11) A trade mark shall not be registered in the cases specified in sections 56 and 57.
(12) The Minister may make rules to provide that a sign specified in the rules shall not be registered as a trade mark, or shall not be so registered unless such conditions as may be prescribed are met.
(13) A trade mark shall not be registered if or to the extent that the registration contravenes any rule made under subsection (12).
8.—(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is sought to be registered are identical with the goods or services for which the earlier trade mark is protected.
(2) A trade mark shall not be registered if because—
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public.
(3) A trade mark which—
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,
shall not be registered if—
(i) the earlier trade mark is well known in Singapore;
(ii) use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered would indicate a connection between those goods or services and the proprietor of the earlier trade mark;
(iii) there exists a likelihood of confusion on the part of the public because of such use; and
(iv) the interests of the proprietor of the earlier trade mark are likely to be damaged by such use.
(4) A trade mark shall not be registered if, or to the extent that, its use in Singapore is liable to be prevented—
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade; or
(b) by virtue of an earlier right other than those referred to in subsections (1), (2) and (3) or paragraph (a), in particular by virtue of the law of copyright or any law with regard to the protection of designs.
(5) A person entitled under subsection (4) to prevent the use of a trade mark is referred to in this Act as the proprietor of an earlier right in relation to the trade mark.
(6) The Registrar may, in his discretion, register a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.
(7) A trade mark which is an earlier trade mark by virtue of paragraph (a) of the definition of “earlier trade mark” in section 2 (1) and whose registration expires shall continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry unless the Registrar is satisfied that there was no bona fide use of the mark during the 2 years immediately preceding the expiry.
9.—(1) Where, on an application for the registration of a trade mark, it appears to the Registrar—
(a) that there is an earlier trade mark in relation to which the conditions set out in section 8(1), (2) or (3) apply; or
(b) that there is an earlier right in relation to which the condition set out in section 8(4) is satisfied,
but the applicant shows to the satisfaction of the Registrar that there has been honest concurrent use in the course of trade in Singapore of the trade mark for which registration is sought, the Registrar shall not refuse the application by reason of the earlier trade mark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.
(2) Nothing in this section shall affect—
(a) the refusal of registration on the grounds mentioned in section 7; or
(b) the making of an application for a declaration of invalidity under section 23(3).
10.—(1) If—
(a) a person has filed an application for the registration of a trade mark in a Convention country (referred to in this section as a Convention application); and
(b) within 6 months after the date on which the Convention application is made, he or his successor in title applies under this Act for the registration of the trade mark in respect of some or all of the goods or services in respect of which registration was sought in that Convention country,
he or his successor in title may, when filing the application under this Act, claim a right of priority for the registration of the trade mark in respect of all or any of those goods or services.
(2) The priority claimed is for the registration of the trade mark in respect of the goods or services from (and including) the date on which the application was filed in that Convention country.
(3) The registrability of a trade mark shall not be affected by any use of the trade mark in Singapore in the period between the date of filing of the Convention application and the date of application under this Act.
(4) Any filing which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority.
(5) For the purposes of subsection (4), “regular national filing” means a filing which is adequate to establish the date on which the application was filed in the Convention country, whatever may be the subsequent fate of the application.
(6) Where a subsequent application concerning the same subject as an earlier Convention application was filed in the same Convention country, and—
(a) the earlier application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and
(b) the earlier application has not yet served as a basis for claiming a right of priority,
the date the subsequent application was filed, rather than that of the earlier application, shall be considered the starting date of the period of priority under subsection (2), and the earlier application may not thereafter serve as a basis for claiming priority.
(7) The Minister may make rules as to the manner of claiming priority under this section.
(8) A right to priority arising under this section may be assigned or otherwise transmitted, either with the application or independently, and the reference in subsection (1) to the applicant’s “successor in title” shall be construed accordingly.
11.—(1) The Minister may by order confer on a person who has filed an application for the registration of a trade mark in a country or territory to which the Government has entered into a treaty, convention, arrangement or engagement for the reciprocal protection of trade marks, a right to priority, for the purpose of registering the same trade mark under this Act for some or all of the same goods or services, for a specified period from the date of filing of that application.
(2) An order under this section may make provision corresponding to that set out in section 10 or such other provision as appears to the Minister to be appropriate.
12.—(1) The Registrar shall examine whether an application for registration of a trade mark satisfies the requirements of this Act (including any requirements imposed by rules made under this Act).
(2) For the purpose of subsection (1), the Registrar may carry out a search, to such extent as he considers necessary, of earlier trade marks.
(3) If it appears to the Registrar that the requirements for registration are not met, the Registrar shall inform the applicant and give him an opportunity, within such period as may be prescribed, to make representations or to amend the application.
(4) If the applicant fails to satisfy the Registrar that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the prescribed period, the Registrar shall refuse to accept the application.
(5) If it appears to the Registrar that the requirements for registration are met, the Registrar shall accept the application.
13.—(1) When an application for registration has been accepted, the Registrar shall cause the application to be published in the prescribed manner.
(2) Any person may, within the prescribed time from the date of the publication of the application, give notice to the Registrar of opposition to the registration.
(3) The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition and such other matter as may be prescribed.
(4) The Minister may make rules to provide for opposition proceedings and for matters relating thereto.
14.—(1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application.
(2) If the application has been published, the withdrawal or restriction shall also be published.
(3) In other respects, an application may be amended, at the request of the applicant, only by correcting—
(a) the name or address of the applicant;
(b) errors of wording or of copying; or
(c) obvious mistakes,
and then only where the correction does not substantially affect the identity of the trade mark or extend the goods or services covered by the application.
(4) The Minister may make rules for the publication of any amendment which affects the representation of the trade mark, or the goods or services covered by the application, and for the making of objections by any person claiming to be affected by it.
15.—(1) Where an application has been accepted and—
(a) no notice of opposition is given within the period referred to in section 13(2); or
(b) all opposition proceedings are withdrawn or decided in favour of the applicant,
the Registrar shall register the trade mark.
(2) Subject to subsections (3) and (4), a trade mark when registered shall be registered as of the date of the application for registration, and that date shall be deemed for the purposes of this Act to be the date of registration.
(3) If—
(a) the application was in respect of a trade mark whose registration had also been sought in a Convention country;
(b) the applicant has a right to priority by virtue of section 10 for the registration of the trade mark in respect of particular goods or services; and
(c) the trade mark is registered under this Act,
the registration of the trade mark in respect of those goods or services is taken to have had effect from (and including) the date on which the application was filed in that country.
(4) If—
(a) the application was in respect of a trade mark whose registration had also been sought in a country or territory in relation to which an order under section 11 was made;
(b) the applicant has a right to priority by virtue of that order for the registration of the trade mark in respect of particular goods or services; and
(c) the trade mark is registered under this Act,
the registration of the trade mark in respect of those goods or services is taken to have had effect from (and including) the date on which the application was filed in that country or territory.
(5) On the registration of a trade mark, the Registrar shall issue to the applicant a certificate of registration.
16.—(1) Notwithstanding section 15(1), if, before a trade mark is registered, the Registrar is satisfied—
(a) that the application for registration of the trade mark was accepted because of an error or omission in the course of the examination; or
(b) that, in the special circumstances of the case, the trade mark should not be registered,
the Registrar may revoke the acceptance of the application.
(2) If the Registrar revokes the acceptance—
(a) the application is taken to have never been accepted; and
(b) section 12 again applies in relation to the application.
17.—(1) A person may make a single application under section 5 for the registration of a series of trade marks in respect of the same goods or services, or of similar goods or services which fall within a single class in accordance with the system of classification referred to in section 6.
(2) For the purposes of this Act, “series of trade marks” means a number of trade marks which resemble each other as to their material particulars and which differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.
(3) If the application meets all the requirements under this Act and the Registrar is required under section 15 to register the trade marks, he shall register them as a series in one registration.
18.—(1) A trade mark shall be registered for a period of 10 years from the date of registration.
(2) Registration may be renewed in accordance with section 19 for further periods of 10 years.
19.—(1) The registration of a trade mark may be renewed at the request of the proprietor, subject to payment of the prescribed renewal fee.
(2) The Minister may make rules for the Registrar to inform the proprietor of a registered trade mark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed.
(3) A request for renewal shall be made, and the renewal fee paid, on or before the date of expiry of the registration.
(4) Renewal shall take effect from the expiry of the previous registration.
(5) If the registration is not renewed in accordance with this section and the rules referred to in subsection (2), the Registrar shall remove the trade mark from the register.
(6) The Minister may make rules to provide for the restoration of the registration of a trade mark which has been removed from the register, subject to such conditions, if any, as may be prescribed.
20.—(1) Subject to subsection (2), a registered trade mark shall not be altered in the register, either during the period of registration or on renewal.
(2) The Registrar may, at the request of the proprietor, allow the alteration of a registered trade mark where the mark includes the proprietor’s name or address and the alteration is limited to alteration of that name or address and does not substantially affect the identity of the mark.
(3) The Minister may make rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it.
21.—(1) A registered trade mark may be cancelled by the proprietor in respect of some or all of the goods or services for which it is registered.
(2) The Minister may make rules—
(a) to provide for the manner and effect of a cancellation; and
(b) for protecting the interests of other persons having a right in the registered trade mark.
22.—(1) The registration of a trade mark may be revoked on any of the following grounds:
(a) that, within the period of 5 years following the date of completion of the registration procedure, it has not been put to genuine use in the course of trade in Singapore, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of 5 years, and there are no proper reasons for non-use;
(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for the product or service for which it is registered;
(d) that, in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
(2) For the purposes of subsection (1), use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in Singapore includes applying the trade mark to goods or to materials for the labelling or packaging of goods in Singapore solely for export purposes.
(3) The registration of a trade mark shall not be revoked on the ground mentioned in paragraph (a) or (b) of subsection (1) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the 5 year period and before the application for revocation is made.
(4) Any commencement or resumption of use referred to in subsection (3) after the expiry of the 5 year period but within the period of 3 months before the making of the application for revocation shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.
(5) The registration of—
(a) a trade mark which consists of a geographical indication; or
(b) that part of a trade mark which is a geographical indication,
may be revoked if the geographical indication—
(i) is not protected;
(ii) has ceased to be protected; or
(iii) has fallen into disuse,
in its country of origin.
(6) An application for revocation may be made by any person, and may be made either to the Registrar or to the Court, except that—
(a) if proceedings concerning the trade mark in question are pending in the Court, the application must be made to the Court; and
(b) if in any other case the application is made to the Registrar, he may at any stage of the proceedings refer the application to the Court.
(7) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.
(8) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from—
(a) the date of the application for revocation; or
(b) if the Registrar or the Court is satisfied that the grounds for revocation existed at an earlier date, that date.
23.—(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 7.
(2) Where the registered trade mark was registered in breach of section 7 in that it is a trade mark referred to in subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
(3) The registration of a trade mark may be declared invalid on the ground—
(a) that there is an earlier trade mark in relation to which the conditions set out in section 8(1), (2) or (3) apply; or
(b) that there is an earlier right in relation to which the condition set out in section 8(4) is satisfied,
unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.
(4) The registration of a trade mark may be declared invalid on the ground of fraud in the registration or that the registration was obtained by misrepresentation.
(5) An application for a declaration of invalidity may be made by any person, and may be made either to the Registrar or to the Court, except that—
(a) if proceedings concerning the trade mark in question are pending in the Court, the application must be made to the Court; and
(b) if in any other case the application is made to the Registrar, he may at any stage of the proceedings refer the application to the Court.
(6) An application for a declaration of invalidity of the registration of a trade mark on the basis that it was in breach of section 7(7) shall not be made after the expiry of 5 years from—
(a) the date of registration of the trade mark; or
(b) the date on which use of the trade mark by the person who applied for its registration or his predecessor in title has become generally known in Singapore,
whichever is the earlier, unless the applicant shows to the satisfaction of the Registrar that the registration of the trade mark was applied for in bad faith.
(7) Where the ground of invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.
(8) Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made, but this shall not affect transactions past and closed.
24.—(1) Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of 5 years in the use in the course of trade of a registered trade mark in Singapore, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark or other right—
(a) to apply for a declaration that the registration of the later trade mark is invalid; or
(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used,
unless the registration of the later trade mark was applied for in bad faith.
(2) Where subsection (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark or right may no longer be invoked against his later trade mark.
25. The Registrar may, at the written request of the person who has made an application (other than an application for the registration of a trade mark), or filed a notice or other document for the purposes of this Act, or at the written request of the person’s agent, amend the application, notice or document—
(a) to correct a clerical error or an obvious mistake; or
(b) if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.
PART III RIGHTS AND REMEDIES OF PROPRIETOR OF REGISTERED TRADE MARK
26.—(1) The proprietor of a registered trade mark has the exclusive rights—
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark,
in relation to the goods or services for which the trade mark is registered.
(2) The proprietor has the right to obtain relief under this Act for infringement of his trade mark.
(3) The acts amounting to infringement of a registered trade mark are set out in section 27, and references in this Act to the infringement of a registered trade mark shall be construed accordingly.
(4) The rights shall accrue to the proprietor as from the date of registration of the trade mark, except that—
(a) no infringement proceedings may be begun before the date on which the trade mark is in fact registered; and
(b) no offence under section 46, 47, 48 or 49 is committed by anything done before the date on which the trade mark is in fact registered.
(5) the trade mark is registered subject to any disclaimer or limitation, the rights of the proprietor are restricted by the disclaimer or limitation.
27.—(1) A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
(2) A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because—
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public.
(3) A person infringes a registered trade mark which is well known in Singapore if—
(a) without the consent of the proprietor of the trade mark, he uses in the course of trade a sign which is identical with or similar to the trade mark, in relation to goods or services which are not similar to those for which the trade mark is registered;
(b) the use of the trade mark in relation to those goods or services would indicate a connection between those goods or services and the proprietor and would be likely to cause confusion to the public;
(c) there exists a likelihood of confusion on the part of the public because of such use; and
(d) the interests of the proprietor are likely to be damaged by such use.
(4) For the purposes of this section, sections 28 and 29, a person uses a sign if, in particular, he—
(a) applies it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;
(c) imports or exports goods under the sign;
(d) uses the sign on an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document; or
(e) uses the sign in advertising.
(5) Notwithstanding subsection (4), a person who applies a sign to any material used or intended to be used for labelling or packaging goods, or who uses it on any document described in subsection (4)(d) or in advertising, is deemed not to use the sign if, at the time of such application or use, he does not know nor has reason to believe that the proprietor or a licensee of the registered trade mark did not consent to such application or use of the sign.
(6) Nothing in subsections (1) to (5) shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee, but any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.
28.—(1) Notwithstanding section 27, a person does not infringe a registered trade mark when—
(a) he uses—
(i) his name or the name of his place of business; or
(ii) the name of his predecessor in business or the name of his predecessor’s place of business;
(b) he uses a sign to indicate—
(i) the kind, quality, quantity, intended purpose, value, geographical origin or other characteristic of goods or services; or
(ii) the time of production of goods or of the rendering of services; or
(c) he uses the trade mark to indicate the intended purpose of goods (in particular as accessories or spare parts) or services,
and such use is in accordance with honest practices in industrial or commercial matters.
(2) Notwithstanding section 27, a person does not infringe a registered trade mark by using an unregistered trade mark that is identical with or similar to the registered trade mark in relation to goods or services identical with or similar to those for which the trade mark is registered if he, or he and his predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before—
(a) the date of registration of the registered trade mark; or
(b) the date the proprietor of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Act, first used the trade mark,
whichever is the earlier.
(3) Notwithstanding section 27, a registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered.
29.—(1) Notwithstanding section 27, a registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market, whether in Singapore or outside Singapore, under that trade mark by the proprietor of the registered trade mark or with his express or implied consent (conditional or otherwise).
(2) Subsection (1) does not apply where the condition of the goods has been changed or impaired after they have been put on the market, and the use of the registered trade mark in relation to those goods is detrimental to the distinctive character or repute of the registered trade mark.
30.—(1) An applicant for registration of a trade mark, or the proprietor of a registered trade mark, may—
(a) disclaim any right to the exclusive use of any specified element of the trade mark; or
(b) agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation,
and where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 26 are restricted accordingly.
(2) The Minister may make rules as to the publication and entry in the register of a disclaimer or limitation.
31.—(1) An infringement of a registered trade mark is actionable by the proprietor of the trade mark.
(2) Subject to the provisions of this Act, the relief the Court may grant in an action for an infringement includes—
(a) an injunction (subject to such terms, if any, as the Court thinks fit); and
(b) either damages or an account of profits.
32.—(1) Where a person is found to have infringed a registered trade mark, the Court may make an order requiring him—
(a) to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in his possession, custody or control; or
(b) if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure the destruction of the infringing goods, material or articles in question.
(2) If an order under subsection (1) is not complied with, or it appears to the Court likely that such an order would not be complied with, the Court may order that the infringing goods, material or articles be delivered to such person as the Court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be.
33.—(1) The Court may, in addition to any relief granted under sections 31 and 32 in any action for an infringement of a registered trade mark, order any infringing goods, material or articles in the possession of the defendant or before the Court to be delivered up to the plaintiff.
(2) No order shall be made under this section unless the Court also makes, or it appears to the Court that there are grounds for making, an order under section 34.
(3) A person to whom any infringing goods, material or articles are delivered up in pursuance of an order under this section shall, if an order under section 34 is not made, retain them pending the making of an order, or the decision not to make an order, under that section.
34.—(1) Where infringing goods, material or articles have been delivered up in pursuance of an order under section 33, an application may be made to the Court—
(a) for an order that they be destroyed or forfeited to such person as the Court may think fit; or
(b) for a decision that no such order should be made.
(2) In considering what order, if any, should be made, the Court shall have regard to—
(a) whether other remedies available in an action for infringement of the registered trade mark would be adequate to compensate the plaintiff and protect his interest; and
(b) the need to ensure that no infringing goods, material or articles are disposed of in a manner that would adversely affect the plaintiff.
(3) The Court shall issue directions as to the service of notice on persons having an interest in the goods, material or articles.
(4) Any person having an interest in the goods, material or articles is entitled—
(a) to appear in proceedings for an order under this section, whether or not that person is served with notice; and
(b) to appeal against any order made, whether or not that person appears in the proceedings.
(5) An order made under this section shall not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on the appeal.
(6) Where there is more than one person interested in the goods, material or articles, the Court may direct that the goods, material or articles be sold, or otherwise dealt with, and the proceeds divided, and shall make any other order as it thinks just.
(7) If the Court decides that no order should be made under this section, the person in whose possession, custody or control the goods, material or articles were before being delivered up is entitled to their return.
35.—(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than—
(a) the application of the mark to goods or to material used or intended to be used for labelling or packaging goods;
(b) the importation of goods to which, or to the packaging of which, the mark has been applied; or
(c) the supply of services under the mark,
any aggrieved person may bring proceedings for relief under this section.
(2) The relief which may be applied for is any of the following:
(a) a declaration that the threats are unjustifiable;
(b) an injunction against the continuance of the threats;
(c) damages in respect of any loss he has sustained by the threats,
and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.
(3) If the defendant showed that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned, the plaintiff is nevertheless entitled to relief if he shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.
(4) The mere notification that a trade mark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section.
PART IV REGISTERED TRADE MARK AS OBJECT OF PROPERTY
36. A registered trade mark is personal property.
37.—(1) Where a registered trade mark is granted to 2 or more persons jointly, each of them is entitled, subject to any agreement to the contrary, to an equal undivided share in the registered trade mark.
(2) Subsections (3) to (8) apply where 2 or more persons are co-proprietors of a registered trade mark, by virtue of subsection (1) or otherwise.
(3) Subject to any agreement to the contrary, each co-proprietor is entitled, by himself or his agents, to do for his own benefit and without the consent of or the need to account to the other or others, any act which would otherwise amount to an infringement of the registered trade mark.
(4) One co-proprietor may not, without the consent of the other or others—
(a) grant a licence to use the registered trade mark; or
(b) assign or charge his share in the registered trade mark.
(5) Infringement proceedings may be brought by any co-proprietor, but he may not, without the leave of the Court, proceed with the action unless the other, or each of the others, is either joined as a plaintiff or added as a defendant.
(6) A co-proprietor who is added as a defendant under subsection (5) shall not be made liable for any costs in the action unless he takes part in the proceedings.
(7) Nothing in subsection (5) shall affect the granting of interlocutory relief on the application of a single co-proprietor.
(8) Nothing in this section affects the mutual rights and obligations of trustees or personal representatives, or their rights and obligations as such.
38.—(1) A registered trade mark is assignable and transmissible in the same way as other personal or movable property, and is so assignable or transmissible either in connection with the goodwill of a business or independently.
(2) An assignment or transmission of a registered trade mark may be partial, that is, limited so as to apply in relation to some but not all of the goods or services for which the trade mark is registered.
(3) An assignment of a registered trade mark, or an assent relating to a registered trade mark, is not effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative.
(4) Subsection (3) may be satisfied in a case where the assignor or personal representative is a body corporate by the affixing of its seal.
(5) Subsections (1) to (4) shall apply to assignment by way of security as they apply to any other assignment.
(6) A registered trade mark may be the subject of a charge in the same way as other personal or movable property.
(7) Nothing in this Act shall be construed as affecting the assignment or transmission of an unregistered trade mark as part of the goodwill of a business.
39.—(1) On application being made to the Registrar by—
(a) a person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction; or
(b) any other person claiming to be affected by such a transaction,
the prescribed particulars of the transaction shall be entered in the register.
(2) The following are registrable transactions under subsection (1):
(a) an assignment of a registered trade mark or any right in it;
(b) the grant of a licence under a registered trade mark;
(c) the granting of any security interest (whether fixed or floating) over a registered trade mark or any right in or under it;
(d) the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it;
(e) an order of the Court or other competent authority transferring a registered trade mark or any right in or under it.
(3) Until an application has been made for registration of the prescribed particulars of a registrable transaction—
(a) the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of it; and
(b) a person claiming to be a licensee by virtue of the transaction does not have the protection of section 44 or 45.
(4) A person who becomes the proprietor or a licensee of a registered trade mark by virtue of a registrable transaction is not entitled to damages or account of profits in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the date of application for registration of the prescribed particulars of the transaction.
(5) Provision may be made by rules as to—
(a) the amendment of registered particulars relating to a licence so as to reflect any alteration of the terms of the licence; and
(b) the removal of such particulars from the register—
(i) where it appears from the registered particulars that the licence was granted for a fixed period and that period has expired; or
(ii) where no such period is indicated and, after such period as may be prescribed, the Registrar has notified the parties of his intention to remove the particulars from the register.
(6) Provision may also be made by rules as to the amendment or removal from the register of particulars relating to a security interest on the application of, or with the consent of, the person entitled to the benefit of that interest.
40.—(1) No notice of any trust (express, implied or constructive) shall be entered in the register, and the Registrar shall not be affected by any such notice.
(2) Subject to the provisions of this Act, equities in respect of a registered trade mark may be enforced in like manner as in respect of other personal or movable property.
41.—(1) The provisions of sections 36, 37, 38 and 40 shall apply, with the necessary modifications, in relation to an application for the registration of a trade mark as they apply in relation to a registered trade mark.
(2) For the purposes of subsection (1), the reference in section 37 (1) to the granting of a registration shall be construed as a reference to the making of an application for the registration of a trade mark.
(3) A person claiming to be entitled to an interest in or under an application for registration of a trade mark by virtue of a registrable transaction, or a person claiming to be affected by such a transaction, shall give to the Registrar notice of the prescribed particulars of the transaction.
(4) The following are registrable transactions under subsection (3):
(a) an assignment of an application for registration of a trade mark or any right in or under it;
(b) the granting of any security interest (whether fixed or floating) over an application for registration of a trade mark or any right in or under it;
(c) the making by personal representatives of an assent in relation to an application for registration of a trade mark or any right in or under it;
(d) an order of the Court or other competent authority transferring an application for registration of a trade mark or any right in or under it.
(5) Until the notice referred to in subsection (3) has been given to the Registrar, the transaction is ineffective as against a person acquiring a conflicting interest in or under the application for registration of the trade mark in ignorance of it.
PART V LICENSING
42.—(1) A licence to use a registered trade mark may be general or limited.
(2) A limited licence may, in particular, apply in relation to some but not all of the goods or services for which the trade mark is registered.
(3) A licence is not effective unless it is in writing signed by or on behalf of the grantor.
(4) Subsection (3) may be satisfied in a case where the grantor is a body corporate by the affixing of its seal.
(5) Unless the licence provides otherwise, it is binding on a successor in title to the grantor’s interest, and references in this Act to doing anything with, or without, the consent of the proprietor of a registered trade mark shall be construed accordingly.
(6) Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include a sub-licence or sub-licensee.
43.—(1) In this Act, an “exclusive licence” means a licence (whether general or limited) authorising the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorised by the licence, and the expression “exclusive licensee” shall be construed accordingly.
(2) Unless the exclusive licence provides otherwise, it is binding on a successor in title to the grantor’s interest.
44.—(1) This section has effect with respect to the rights of a licensee in relation to infringement of a registered trade mark.
(2) The provisions of this section do not apply where or to the extent that, by virtue of section 45(1), the licensee has a right to bring proceedings in his own name.
(3) A licensee is entitled, unless his licence, or any licence through which his interest is derived, provides otherwise, to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects his interests.
(4) If the proprietor—
(a) refuses to do so; or
(b) fails to do so within 2 months after being called upon,
the licensee may bring the proceedings in his own name as if he were the proprietor.
(5) Where infringement proceedings are brought by a licensee by virtue of this section, the licensee may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant.
(6) Subsection (5) does not affect the granting of interlocutory relief on an application by a licensee alone.
(7) A proprietor who is added as a defendant under subsection (5) shall not be made liable for any costs in the action unless he takes part in the proceedings.
(8) In infringement proceedings brought by the proprietor of a registered trade mark, any loss suffered or likely to be suffered by licensees shall be taken into account; and the Court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of licensees.
(9) The provisions of this section shall apply in relation to an exclusive licensee if or to the extent that he has, by virtue of section 45(1), the rights and remedies of an assignee as if he were the proprietor of the registered trade mark.
45.—(1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.
(2) Where or to the extent that the provision referred to in subsection (1) is made, the licensee is entitled, subject to the provisions of the licence and to the provisions of this section, to bring infringement proceedings, against any person other than the proprietor, in his own name.
(3) Any such rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered trade mark, and references to the proprietor of a registered trade mark in the provisions of this Act relating to infringement shall be construed accordingly.
(4) In an action brought by an exclusive licensee by virtue of this section, a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trade mark.
(5) Where proceedings for infringement of a registered trade mark brought by the proprietor or an exclusive licensee relate wholly or partly to an infringement in respect of which they have concurrent rights of action, the proprietor or, as the case may be, the exclusive licensee may not, without the leave of the Court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.
(6) Subsection (5) does not affect the granting of interlocutory relief on an application by a proprietor or exclusive licensee alone.
(7) A person who is added as a defendant as mentioned in subsection (5) shall not be made liable for any costs in the action unless he takes part in the proceedings.
(8) Where an action for infringement of a registered trade mark is brought which relates wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action—
(a) the Court shall in assessing damages take into account—
(i) the terms of the licence; and
(ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement;
(b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and
(c) the Court shall if an account of profits is directed apportion the profits between them as the Court considers just, subject to any agreement between them.
(9) Subsection (8) shall apply whether or not the proprietor and the exclusive licensee are both parties to the action, and if they are not both parties the Court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.
(10) The Court, in making an order under section 33, may have regard to the terms of any exclusive licence.
(11) The provisions of subsections (5) to (10) shall have effect subject to any agreement to the contrary between the exclusive licensee and the proprietor.
PART VI OFFENCES
46.—(1) Any person who counterfeits a registered trade mark shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $100,000 or to imprisonment for a term not exceeding 5 years or to both.
(2) A person who—
(a) makes a sign identical to or so nearly resembling a registered trade mark as to be calculated to deceive; or
(b) falsifies a genuine registered trade mark, whether by alteration, addition, effacement, partial removal or otherwise,
without the consent of the proprietor of the registered trade mark shall be deemed to counterfeit a registered trade mark.
(3) In a prosecution under this section, the burden of proving the consent of the proprietor lies on the accused.
47.—(1) Any person who falsely applies a registered trade mark to goods or services shall, unless he proves that he acted innocently, be guilty of an offence and shall be liable on conviction to a fine not exceeding $100,000 or to imprisonment for a term not exceeding 5 years or to both.
(2) For the purposes of this section and section 49, a sign shall be deemed to be applied to goods or services if—
(a) it is applied to the goods themselves;
(b) it is applied to a covering, label, reel or thing in or with which the goods are sold or exposed or had in possession for a purpose of trade or manufacture; or
(c) it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services.
(3) For the purposes of this section and section 49, a trade mark shall be deemed to be applied to goods or services if it is used in—
(a) a sign or an advertisement including a televised advertisement; or
(b) an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document,
and the goods are delivered, or services provided, as the case may be, to a person in pursuance of a request or order made by reference to the trade mark as so used.
(4) For the purposes of subsection (2), “covering” includes a stopper, glass, bottle, vessel, box, capsule, case, frame or wrapper, and “label” includes a band or ticket.
(5) For the purposes of this section and section 49, a person falsely applies a registered trade mark to goods or services if—
(a) without the consent of the proprietor of the registered trade mark, the person applies the trade mark or a sign likely to be mistaken for that trade mark to the goods or services; and
(b) in the case of an application to goods, the goods are not the genuine goods of the proprietor or licensee of the registered trade mark.
(6) In a prosecution under this section or section 49, the burden of proving the consent of the proprietor lies on the accused.
48. Any person who—
(a) makes an article specifically designed or adapted for making copies of a registered trade mark or a sign likely to be mistaken for that trade mark; or
(b) has such an article in his possession, custody or control,
knowing or having reason to believe that it has been, or is to be, used for, or in the course of, committing an offence against section 46 or 47, shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $100,000 or to imprisonment for a term not exceeding 5 years or to both.
49. Any person who—
(a) imports into Singapore for the purpose of trade or manufacture;
(b) sells or exposes for sale; or
(c) has in his possession for the purpose of trade or manufacture,
any goods to which a registered trade mark is falsely applied shall, unless he proves that—
(i) having taken all reasonable precautions against committing an offence under this section, he had, at the time of the commission of the alleged offence, no reason to suspect the genuineness of the mark and on demand made by or on behalf of the prosecution, he gave all the information in his power with respect to the persons from whom he obtained the goods; or
(ii) he had acted innocently,
be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000 for each goods or thing to which the trade mark is falsely applied (but not exceeding in the aggregate $100,000) or to imprisonment for a term not exceeding 5 years or to both.
50. Any person who—
(a) makes, or causes to be made, a false entry in the register;
(b) makes, or causes to be made, any thing false purporting to be a copy of an entry in the register; or
(c) produces or tenders or cause to be produced or tendered in evidence any thing referred to in paragraph (b),
knowing or having reason to believe that the entry or thing, as the case may be, is false shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $50,000 or to imprisonment for a term not exceeding 5 years or to both.
51.—(1) Any person who—
(a) falsely represents that a mark is a registered trade mark; or
(b) makes a false representation as to the goods or services for which a trade mark is registered,
knowing or having reason to believe that the representation is false shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000.
(2) For the purposes of this section, the use in the course of trade in Singapore in relation to a trade mark of—
(a) the word “registered”; or
(b) any other word or symbol importing a reference (express or implied) to registration,
shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in Singapore and that the trade mark is in fact so registered for the goods or services in question.
52.—(1) Any person who causes or permits to appear on a trade mark used by him for the purposes of his trade any representation of the Arms or the Flag of Singapore, or of any arms or devices likely to be mistaken for them, shall, unless such trade mark is authorised to be used by order of the President, be guilty of an offence.
(2) Any person who—
(a) imports into Singapore for the purpose of trade or manufacture;
(b) sells or exposes for sale; or
(c) has in his possession for the purpose of trade or manufacture,
any goods or things to which a trade mark bearing any representation prohibited by subsection (1) is applied shall be guilty of an offence.
(3) Any person guilty of an offence under subsection (1) or (2) shall be liable on conviction to a fine not exceeding $50,000 or to imprisonment for a term not exceeding 5 years or to both, and shall forfeit to the Government any goods or things to which the trade mark bearing the prohibited representation is applied.
53.—(1) A court may, where it considers appropriate, order a person convicted of an offence under any provision of this Part to forfeit to the Government all articles or goods by means of which, or in relation to which, the offence was committed.
(2) Such forfeiture is in addition to any punishment referred to in that provision.
PART VII INTERNATIONAL MATTERS
54.—(1) The Minister may make rules to give effect in Singapore to the provisions of the Madrid Protocol or of any treaty, convention, arrangement or engagement relating to trade marks to which Singapore is a party.
(2) Rules may, in particular, be made to provide for—
(a) the making of applications for international registrations by way of the Registry as office of origin;
(b) the procedures to be followed where the basic Singapore application or registration fails or ceases to be in force;
(c) the procedures to be followed where the Registry receives from the International Bureau or any body specified in the rules a request for extension of protection to Singapore;
(d) the effects of a successful request for extension of protection to Singapore;
(e) the transformation of an application for an international registration, or an international registration, into a national application for registration;
(f) the communication of information to the International Bureau; and
(g) the payment of fees and amounts prescribed in respect of applications for international registrations, extensions of protection and renewals.
(3) Provision may also be made in the rules to apply in relation to an international trade mark (Singapore) the provisions of section 35 and Parts VI and X.
(4) For the purposes of this section—
“International Bureau” has the meaning given by Article 2 (1) of the Madrid Protocol;
“international trade mark (Singapore)” means a trade mark which is entitled to protection in Singapore under the Madrid Protocol or a trade mark prescribed by the Minister as an international trade mark (Singapore);
“Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27th June 1989, as revised or amended from time to time.
55.—(1) References in this section to a trade mark which is entitled to protection under the Paris Convention or the TRIPS Agreement as a well-known trade mark are to a mark which is well-known in Singapore as being the mark of a person who—
(a) is a national of a Convention country; or
(b) is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country,
whether or not that person carries on business, or has any goodwill, in Singapore, and references to the proprietor of such a mark shall be construed accordingly.
(2) The proprietor of a trade mark which is entitled to protection under the Paris Convention or the TRIPS Agreement as a well-known trade mark is entitled to restrain by injunction the use in Singapore in the course of trade and without the proprietor’s consent of a trade mark which, or the essential part of which, is identical with or similar to the proprietor’s mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.
(3) The right referred to in subsection (2) is subject to section 24.
(4) Nothing in subsection (2) shall affect the continuation of any bona fide use of a trade mark begun before the commencement of this Act.
(5) For the purposes of this section and sections 56, 57 and 59, “use”, in relation to a trade mark, means use within the meaning of section 27(4).
56.—(1) A trade mark which consists of or contains the flag of a Convention country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the Registrar that use of the flag in the manner proposed is permitted without such authorisation.
(2) A trade mark which consists of or contains the armorial bearings or any other state emblem of a Convention country which is protected under the Paris Convention or the TRIPS Agreement shall not be registered without the authorisation of the competent authorities of that country.
(3) A trade mark which consists of or contains an official sign or hallmark adopted by a Convention country and indicating control and warranty shall not, where the sign or hallmark is protected under the Paris Convention or the TRIPS Agreement, be registered in relation to goods or services of the same, or a similar kind, as those in relation to which it indicates control and warranty, without the authorisation of the competent authorities of the country concerned.
(4) The provisions of this section as to national flags and other state emblems, and official signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.
(5) Nothing in this section prevents the registration of a trade mark on the application of a national of a country who is authorised to make use of a state emblem, or official sign or hallmark, of that country, notwithstanding that it is similar to that of another country.
(6) Where by virtue of this section the authorisation of the competent authorities of a Convention country is or would be required for the registration of a trade mark, those authorities are entitled to restrain by injunction any use in the course of trade of the trade mark in Singapore without their authorisation.
57.—(1) This section shall apply to—
(a) the armorial bearings, flags or other emblems; and
(b) the abbreviations and names,
of international intergovernmental organisations of which one or more Convention countries are members.
(2) A trade mark which consists of or contains any such emblem, abbreviation or name which is protected under the Paris Convention or the TRIPS Agreement shall not be registered without the authorisation of the international organisation concerned, unless it appears to the Registrar that the use of the emblem, abbreviation or name in the manner proposed—
(a) is not such as to suggest to the public that a connection exists between the organisation and the trade mark; or
(b) is not likely to mislead the public as to the existence of a connection between the user and the organisation.
(3) The provisions of this section as to emblems of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem.
(4) Where by virtue of this section the authorisation of an international organisation is or would be required for the registration of a trade mark, that organisation is entitled to restrain by injunction any use in the course of trade of the trade mark in Singapore without its authorisation.
(5) Nothing in this section shall affect the rights of a person whose bona fide use of the trade mark in question began before 23rd February 1995 (when the relevant provisions of the Paris Convention entered into force in relation to Singapore).
58.—(1) For the purposes of section 56, state emblems of a Convention country (other than the national flag), and official signs or hallmarks, shall be regarded as protected under the Paris Convention or the TRIPS Agreement only if, or to the extent that—
(a) the country in question has notified Singapore in accordance with Article 6ter (3) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, that it desires to protect that emblem, sign or hallmark;
(b) the notification remains in force; and
(c) Singapore has not objected to it in accordance with Article 6ter (4) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, or any such objection has been withdrawn.
(2) For the purposes of section 57, the emblems, abbreviations and names of an international organisation shall be regarded as protected under the Paris Convention or the TRIPS Agreement only if, or to the extent that—
(a) the organisation in question has notified Singapore in accordance with Article 6ter (3) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, that it desires to protect that emblem, abbreviation or name;
(b) the notification remains in force; and
(c) Singapore has not objected to it in accordance with Article 6ter (4) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, or any such objection has been withdrawn.
(3) Notification under Article 6ter (3) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, shall have effect only in relation to applications for registration made more than 2 months after the receipt of the notification.
(4) The Registrar shall keep and make available for public inspection by any person, at all reasonable hours and free of charge, a list of—
(a) the state emblems and official signs or hallmarks; and
(b) the emblems, abbreviations and names of international organisations,
which are for the time being protected under the Paris Convention or the TRIPS Agreement by virtue of a notification under Article 6ter (3) of that Convention or under that Article as applied by the TRIPS Agreement.
59.—(1) Subsections (2) to (6) shall apply where an application for registration of a trade mark is made by a person who is an agent or representative of a person who is the proprietor of the trade mark in a Convention country.
(2) If the proprietor opposes the application, registration shall be refused.
(3) If the application (not being so opposed) is granted, the proprietor may—
(a) apply for a declaration of the invalidity of the registration; or
(b) apply for the rectification of the register so as to substitute his name as the proprietor of the registered trade mark.
(4) The proprietor may (notwithstanding the rights conferred by this Act in relation to a registered trade mark) by injunction restrain any use in the course of trade of the trade mark in Singapore which is not authorised by him.
(5) Subsections (2), (3) and (4) shall not apply if, or to the extent that, the agent or representative justifies his action.
(6) An application under subsection (3)(a) or (b) must be made within 3 years of the proprietor becoming aware of the registration; and no injunction shall be granted under subsection (4) in respect of a use in which the proprietor has acquiesced for a continuous period of 3 years or more.
PART VIII COLLECTIVE MARKS AND CERTIFICATION MARKS
60.—(1) A collective mark is a sign used, or intended to be used, in relation to goods or services dealt with or provided in the course of trade by members of an association to distinguish those goods or services from goods or services so dealt with or provided by persons who are not members of the association.
(2) The provisions of this Act shall apply to collective marks subject to the provisions of the First Schedule.
61.—(1) A certification mark is a sign used, or intended to be used, to distinguish goods or services—
(a) dealt with or provided in the course of trade; and
(b) certified by the proprietor of the certification mark in relation to origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics,
from other goods or services dealt with or provided in the course of trade but not so certified.
(2) The provision of this Act shall apply to certification marks subject to the provisions of the Second Schedule.
PART IX ADMINISTRATIVE AND OTHER SUPPLEMENTARY PROVISIONS
62.—(1) There shall be a Registrar of Trade Marks who shall have the control of the Registry of Trade Marks.
(2) There shall be one or more Deputy Registrars of Trade Marks who shall, subject to the control of the Registrar, have all the powers and functions of the Registrar under this Act, other than the powers of the Registrar under section 63.
(3) There shall be one or more Assistant Registrars of Trade Marks.
(4) The Registrar and all the other officers under this section shall be appointed by the Minister.
63.—(1) The Registrar may, in relation to a particular matter or class of matters, by writing under his hand, delegate all or any of his powers or functions under this Act (except this power of delegation) to an Assistant Registrar of Trade Marks or any public officer so that the delegated powers and functions may be exercised by the delegate with respect to the matter or class of matters specified in the instrument of delegation.
(2) A delegation under this section is revocable at will and no delegation shall prevent the exercise of a power or function by the Registrar or by a Deputy Registrar of Trade Marks.
64. For the purposes of this Act, there shall be an office which shall be known as the Registry of Trade Marks.
65. There shall be a seal of the Registry and impressions of the seal shall be judicially noticed.
66.—(1) The Registrar shall maintain a register of trade marks.
(2) There shall be entered in the register in accordance with this Act—
(a) registered trade marks;
(b) such particulars as may be prescribed of registrable transactions affecting a registered trade mark; and
(c) such other matters relating to registered trade marks as may be prescribed.
(3) The register may be kept in whole or in part using a computer.
(4) Any record of a particular or other matter made by using a computer for the purpose of keeping the register is taken to be an entry in the register.
67.—(1) Any person having a sufficient interest may apply for the rectification of an error or omission in the register.
(2) An application for rectification may not be made in respect of a matter affecting the validity of the registration of a trade mark.
(3) An application for rectification may be made either to the Registrar or to the Court, except that—
(a) if proceedings concerning the trade mark in question are pending in the Court, the application must be made to the Court; and
(b) if in any other case the application is made to the Registrar, he may at any stage of the proceedings refer the application to the Court.
(4) Except where the Registrar or the Court directs otherwise, the effect of rectification of the register is that the error or omission in question shall be deemed never to have been made.
(5) The Registrar may, on request made in the prescribed manner by the proprietor of a registered trade mark, or a licensee, enter any change in his name or address as recorded in the register.
(6) The Registrar may remove from the register matter appearing to him to have ceased to have effect.
68.—(1) The register shall be available at the Registry for inspection by any person during the hours when the Registry is open for business.
(2) If the register, or any part of the register, is kept by using a computer, subsection (1) is satisfied if a person who wants to inspect the register or that part of the register is given access to a computer terminal from which he can read on a screen, or obtain a printed copy of, the particulars or other matters recorded in the register or that part of the register.
(3) Any person who applies for a certified copy of an entry in the register or a certified extract from the register shall be entitled to obtain such a copy or extract on payment of the prescribed fee; and any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of the prescribed fee.
(4) In relation to any portion of the register kept otherwise than in documentary form, the right to a copy or extract conferred by subsection (3) is a right to a copy or extract in a form in which it can be taken away.
(5) In this section, “certified copy” and “certified extract” mean a copy and extract certified by the Registrar and sealed with the seal of the Registrar.
69.—(1) The Registrar may award costs in respect of the matters, and in the amounts provided for in rules made under this Act, against any party to proceedings brought before him.
(2) The rules may provide for the taxation of the costs, or any part of the costs, by the Registrar.
(3) A party desirous to obtain costs or to have the costs taxed must apply to the Registrar in accordance with the rules.
(4) If a party is ordered to pay the costs of another party, the costs may be recovered in a court of competent jurisdiction as a debt due by the first party to the other party.
70. If a person who neither resides nor carries on business in Singapore—
(a) gives notice of opposition under section 13; or
(b) applies to the Registrar under section 22 or 23 for the registration of a trade mark to be revoked or to be declared invalid, as the case may be,
the Registrar may require the person to give security for the costs for the proceedings and may, if security is not given, dismiss the proceedings.
71. The Registrar may, for the purposes of any proceedings before him under this Act—
(a) summon witnesses;
(b) receive evidence on oath, whether orally or otherwise; and
(c) require the production of documents or articles.
72.—(1) A person who has been summoned to appear as a witness before the Registrar shall not, without lawful excuse, fail to appear in obedience to the summons.
(2) A person who has been required by the Registrar to produce a document or article shall not, without lawful excuse, fail to produce the document or article.
(3) Any person who contravenes subsection (1) or (2) shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $2,000 or to imprisonment for a term not exceeding 3 months or to both.
73.—(1) A person who appears before the Registrar shall not, without lawful excuse, refuse to be sworn or to make an affirmation, or to produce documents or articles, or to answer questions, which he is lawfully required to produce or answer.
(2) Any person who contravenes subsection (1) shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $2,000 or to imprisonment for a term not exceeding 3 months or to both.
74.—(1) The Registrar shall not be taken to warrant the validity of the registration of a trade mark under this Act or under any treaty, convention, arrangement or engagement to which Singapore is a party.
(2) The Registrar is not subject to any liability by reason of, or in connection with, any examination required or authorised by this Act, or any such treaty, convention, arrangement or engagement, or any report or other proceedings consequent on such examination.
(3) No proceedings lie against an officer of the Registrar in respect of any matter for which, by virtue of this section, the Registrar is not liable.
75.—(1) Except as provided under subsection (2) or by rules made under this Act, there shall be no appeal from a decision of the Registrar for any matter under this Act or the rules made thereunder.
(2) The following shall be subject to appeal to the Court:
(a) decision of the Registrar as to the registrability of a trade mark;
(b) decision of the Registrar not to allow any alteration of a registered trade mark as described in section 20;
(c) decision of the Registrar relating to an application for revocation under section 22;
(d) decision of the Registrar relating to an application for a declaration of invalidity under section 23;
(e) decision of the Registrar under section 67.
76. The Minister may prescribe the forms to be used for any purpose relating to the registration of a trade mark or any other proceedings before the Registrar under this Act.
77.—(1) There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed.
(2) The Minister may make rules as to the remission of fees in the prescribed circumstances.
78.—(1) The Minister may make rules to specify the hour at which the Registry shall be taken to be closed on any day for purposes of the transaction by the public of business under this Act or of any class of such business, and may specify days as excluded days for any such purposes.
(2) Any business done under this Act on any day after the hour so specified in relation to business of that class, or on a day which is an excluded day in relation to business of that class, shall be taken to have been done on the next following day not being an excluded day; and where the time for doing anything under this Act expires on an excluded day, that time shall be extended to the next following day not being an excluded day.
79. The Minister may make rules for the publication by the Registrar of the particulars of any application for the registration of a trade mark (including a representation of the mark) and such other information relating to trade marks as the Registrar thinks fit.
80. Except as otherwise provided by rules, any act required or authorised by this Act to be done by or to a person in connection with the registration of a trade mark, or any procedure relating to a registered trade mark, may be done by or to an agent authorised by that person orally or in writing.
PART X IMPORTATION OF INFRINGING GOODS
81. In this Part, unless the context otherwise requires—
“aircraft” has the same meaning as in the Regulation of Imports and Exports Act (Cap.272A);
“authorised officer” means—
(a) an officer of customs as defined in section 3 of the Customs Act (Cap.70); or
(b) any officer or class or description of officers appointed by the Minister by notification in the Gazette to exercise the powers and perform the duties conferred and imposed on an authorised officer by this Part;
“conveyance” has the same meaning as in the Regulation of Imports and Exports Act (Cap.272A);
“Director-General” means the Director-General of Customs and Excise appointed under section 4(1) of the Customs Act (Cap. 70);
“goods in transit” means goods imported, whether or not landed or transhipped within Singapore, which are to be carried to another country either by the same or another conveyance;
“infringement action” means an action for an infringement of the relevant registered trade mark constituted by the importation of seized goods;
“master” has the same meaning as in the Regulation of Imports and Exports Act;
“objector” , in relation to particular seized goods, means the person who gave the notice under section 82 as a result of the giving of which the goods were seized;
“pilot of an aircraft” has the same meaning as in the Regulation of Imports and Exports Act;
“proprietor”, in relation to a registered trade mark, includes a licensee of the trade mark;
“retention period”, in relation to seized goods, means—
(a) the period specified in a notice given under section 85 in respect of the goods; or
(b) if that period has been extended under section 85, that period as so extended;
“seized goods” means goods seized under section 82;
“senior authorised officer” means—
(a) a senior officer of customs as defined in section 3 of the Customs Act (Cap.70); and
(b) any officer or class or description of officers appointed by the Minister by notification in the Gazette to exercise the powers and perform the duties conferred and imposed on a senior authorised officer by this Part;
“vehicle” has the same meaning as in the Regulation of Imports and Exports Act;
“vessel” has the same meaning as in the Regulation of Imports and Exports Act (Cap.272A).
82.—(1) A person may give the Director-General a written notice stating—
(a) that he is the proprietor of a registered trade mark or a licensee thereof having the power to give such a notice;
(b) that, at a time and place specified in the notice, goods which, in relation to the registered trade mark, are infringing goods are expected to be imported for the purpose of trade; and
(c) that he objects to such importation.
(2) A notice given under subsection (1) shall be supported by such documents and information, and accompanied by such fee, as may be prescribed by rules made under this Act.
(3) A notice under subsection (1) remains in force until the end of the period of 60 days commencing on the day on which the notice was given, unless it is revoked, before the end of that period, by notice in writing given to the Director-General—
(a) if the person giving the first-mentioned notice is a licensee of the registered trade mark and he has power to revoke the notice, by the licensee;
(b) in any other case, by the person who is then the proprietor of the registered trade mark.
(4) If—
(a) a notice has been given under this section in respect of a registered trade mark;
(b) the notice has not lapsed or been revoked; and
(c) a person imports goods, not being goods in transit, which bear a sign that, or whose packaging bear a sign that, in the opinion of an authorised officer, is identical with or similar to the registered trade mark in question,
an authorised officer may seize the goods.
(5) The Minister may make rules to provide for—
(a) the forms of notices under this section;
(b) the times at which, and the manner in which, notices are to be given; and
(c) the giving of information and evidence to the Director-General.
83. An authorised officer may refuse to seize goods under section 82 unless—
(a) the objector has deposited with the Director-General a sum of money that, in the opinion of the Director-General, is sufficient to—
(i) reimburse the Government for any liability or expense it is likely to incur as a result of the seizure of the goods; and
(ii) pay such compensation as may be ordered by the Court under section 89(2) or 90(6); or
(b) the objector has given security, to the satisfaction of the Director-General, for the reimbursement of the Government for any such liability or expense and the payment of such compensation.
84. Seized goods shall be taken to such secure place as the Director-General directs.
85.—(1) As soon as is practicable after goods are seized under section 82, the Director-General shall give to the importer and the objector, either personally or by post, a written notice identifying the goods and stating that they have been seized.
(2) A notice under subsection (1) shall state that the goods will be released to the importer unless—
(a) an infringement action in respect of the goods is instituted by the objector within a specified period from the day specified in the notice; and
(b) the objector gives written notice to the Director-General within that period stating that the infringement action has been instituted.
(3) The period to be specified for the purpose of paragraph (a) of subsection (2) is the period prescribed for the purposes of that paragraph.
(4) The day specified for the purposes of subsection (2)(a) shall not be earlier than the day on which the notice is given.
(5) The objector may, by written notice given to the Director-General before the end of the period specified in a notice for the purposes of subsection (2)(a) (the initial period), request that the period be extended.
(6) Subject to subsection (7), if—
(a) a request is made in accordance with subsection (5); and
(b) the Director-General is satisfied that it is reasonable that the request be granted,
the Director-General may extend the initial period by such period as is prescribed.
(7) A decision on a request made in accordance with subsection (5) must be made within 2 working days after the request is made, but such a decision cannot be made after the end of the initial period to which the request relates.
86.—(1) The Director-General may permit the objector or the importer to inspect the seized goods.
(2) If the objector gives the requisite undertakings, the Director-General may permit the objector to remove a sample of the seized goods from the custody of the Director-General for inspection by the objector.
(3) If the importer gives the Director-General the requisite undertakings, the Director-General may permit the importer to remove a sample of the seized goods from the custody of the Director-General for inspection by the importer.
(4) The requisite undertakings are undertakings in writing that the person giving the undertaking will—
(a) return the sample to the Director-General at a specified time that is satisfactory to the Director-General; and
(b) take reasonable care to prevent damage to the sample.
(5) If the Director-General permits inspection of the seized goods, or the removal of a sample, by the objector in accordance with this section, the Director-General is not liable to the importer for any loss or damage suffered by the importer arising out of—
(a) damage to any of the seized goods incurred during that inspection; or
(b) anything done by the objector or any other person to, or in relation to, a sample removed from the custody of the Director-General or any use made by the objector of such a sample.
87.—(1) Subject to subsection (2), the importer may, by written notice to the Director-General, consent to the seized goods being forfeited to the Government.
(2) The notice shall be given before any infringement action in relation to the seized goods is instituted.
(3) If the importer gives such a notice, the seized goods are forfeited to the Government and shall be disposed of—
(a) in the manner prescribed by rules made under this Act; or
(b) if no manner of disposal is so prescribed, as the Director-General directs.
88.—(1) The Director-General shall release seized goods (not being goods forfeited to the Government under section 87) to the importer on the expiration of the retention period for the goods if the objector has not, before the expiration of that period—
(a) instituted an infringement action in relation to the goods; and
(b) given written notice to the Director-General stating that the action has been instituted.
(2) If—
(a) an infringement action has been instituted in relation to the seized goods; and
(b) at the end of a period of 3 weeks commencing on the day on which the action was instituted, there is not in force an order of the Court in which the action was instituted preventing the release of the goods,
the Director-General shall release the goods to the importer.
(3) If the objector gives written notice to the Director-General stating that he consents to the release of the seized goods, the Director-General shall release the goods to the importer.
(4) This section has effect subject to section 91.
89.—(1) Where goods have been seized pursuant to a notice given under section 82 and the objector concerned fails to take infringement action within the retention period for the goods, a person aggrieved by such seizure may apply to the Court for an order of compensation against the objector.
(2) Where the Court is satisfied that the applicant had suffered loss or damage as a result of the seizure of the goods, the Court may order the objector to pay compensation in such amount as the Court thinks fit to the applicant.
90.—(1) The Court in which an infringement action is pending may, on the application of a person having a sufficient interest in the subject-matter of the action, allow the person to be joined as a defendant to the action.
(2) An authorised officer is entitled to be heard on the hearing of an infringement action.
(3) In addition to any relief that may be granted apart from this section, the Court may—
(a) at any time, order that the seized goods be released to the importer subject to such conditions, if any, as the Court thinks fit;
(b) order that the seized goods not be released to the importer before the end of a specified period; or
(c) order that the seized goods be forfeited to the Government.
(4) A Court may not make an order under subsection (3)(a) if it is satisfied that the Government or any statutory authority is required or permitted under any other law to retain control of the seized goods.
(5) The Director-General shall comply with an order made under subsection (3).
(6) If—
(a) the action is dismissed or discontinued, or if the Court decides that the relevant registered trade mark was not infringed by the importation of the seized goods; and
(b) a defendant to the infringement action satisfies the Court that he has suffered loss or damage as a result of the seizure of the goods,
the Court may order the objector to pay compensation in such amount as the Court thinks fit to that defendant.
91. Notwithstanding section 88, in a case in which no order has been made under section 90(3) in relation to seized goods, the Director-General is not obliged to release or dispose of the goods if the Government is required or permitted, under any other law, to retain control of the goods.
92. If the Court orders that seized goods are to be forfeited to the Government, the goods shall be disposed of—
(a) in the manner prescribed by rules made under this Act; or
(b) if no manner of disposal is so prescribed, as the Director-General directs.
93.—(1) If the reasonable expenses incurred by the Director-General in relation to any action taken by the Director-General under this Part, or taken in accordance with an order of court under this Part exceed the amount deposited, or the amount of the security given, under section 83, the amount of the excess is a debt due to the Government.
(2) The debt created by subsection (1) is due by the objector, or, if there are 2 or more objectors, by the objectors jointly and severally.
94.—(1) A senior authorised officer or an authorised officer acting in accordance with the general or special directions of a senior authorised officer may board any conveyance in Singapore and may rummage and search all parts of the conveyance for goods liable to be seized under section 82.
(2) For the more effective exercise of the powers conferred by this section, a senior authorised officer may do all or any of the following:
(a) require the master of any vessel in Singapore to heave to;
(b) by direction to the master of any vessel or the pilot of any aircraft in Singapore, require the vessel or aircraft, as the case may be, not to proceed until so authorised;
(c) require any documents which ought to be on board any vessel or aircraft, being documents relating to any goods therein, to be brought to him for inspection;
(d) break open and forcibly enter any place or receptacle in any conveyance to which he cannot otherwise reasonably obtain access;
(e) by direction to the master of any vessel in Singapore, require the vessel to proceed to any specified anchorage, wharf or place to which the vessel may lawfully go;
(f) by direction to the master of any vessel in Singapore, require him to move or discharge any cargo or other goods therein;
(g) require the person in charge of a vehicle—
(i) to stop and not to proceed until so authorised; or
(ii) to bring the vehicle to any police station or examination station;
(h) direct that the removal of any goods from or placed in any vessel be prohibited until so authorised;
(i) require the master of any vessel or the pilot of any aircraft to produce a complete manifest of the whole cargo of the vessel or aircraft and a complete list of stores carried by that vessel or aircraft.
(3) An authorised officer may exercise, in respect of any vehicle or any vessel not exceeding 75 tons net tonnage, the powers which are conferred upon a senior authorised officer by subsection (2) other than the powers conferred by paragraph (d) of that subsection.
(4) It shall be presumed in any proceedings arising out of any thing done under this section, unless the contrary is proved, that any authorised officer, not being a senior authorised officer, by whom the thing was done was acting in accordance with the general or special direction of a senior authorised officer.
(5) If any vessel or aircraft fails to comply with any lawful requisition or direction given or made under this section, a senior authorised officer may take all such steps as appear to him necessary to secure such compliance.
(6) Any person who contravenes this section or who fails to comply with any lawful requisition or direction given or made thereunder shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $6,000 or to imprisonment for a term not exceeding 12 months or to both.
(7) An authorised officer may exercise the powers conferred by this section in respect of a vessel under way if he reasonably suspects that it is not in transit through Singapore.
95.—(1) Any goods, package, box, chest or other article which is being or has recently been imported and in regard to which a reasonable suspicion exists that it is or that it contains goods liable to be seized under section 82 may be—
(a) examined and searched by an authorised officer or detained until any person in charge thereof has opened it for examination and search;
(b) subjected to such tests or analysis as the authorised officer thinks fit;
(c) forcibly opened by, or by order of, a senior authorised officer to facilitate the examination and search except that any person in charge of the package, box, chest or other article shall be afforded every reasonable facility for being present at the opening, examination and search; or
(d) marked, locked, sealed or otherwise secured by an authorised officer pending examination and search.
(2) Any person, other than an authorised officer, who removes, opens, breaks or tampers with any lock, seal or other means of securing any goods, package, box, chest or other article referred to in subsection (1)(d) shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $6,000 or to imprisonment for a term not exceeding 6 months or to both.
96.—(1) For the more convenient exercise of the powers conferred by section 95, an authorised officer may remove any package, box, chest or other article or any goods to a police station or examination station or may require it to be so removed by the owner thereof or his agent or any person having the custody, charge or control thereof.
(2) Any person who fails to comply with any such requisition shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $6,000.
(3) Upon the failure by a person to comply with such a requisition, an authorised officer may remove the goods in the manner provided by subsection (1) and all the expenses of such removal (as certified by a senior authorised officer) shall be recoverable as a fine from that person or from the owner of the goods.
97.—(1) Any person landing or being about to land or having recently landed from any vessel or aircraft, or leaving any vessel or aircraft in Singapore whether for the purpose of landing or otherwise, or entering or having recently entered Singapore by land, sea or air, shall—
(a) on demand by an authorised officer, either permit his person and goods and baggage to be searched by the officer for any goods liable to be seized under section 82 or, together with the goods and baggage, accompany the officer to a police station or an examination station, and there permit his person and goods and baggage to be searched in the presence and under the supervision of a senior authorised officer for any goods liable to be seized under section 82; or
(b) on demand by a senior authorised officer, permit his person and goods and baggage to be searched by the officer, or in the presence and under the supervision of the officer, for any goods liable to be seized under section 82.
(2) Whenever it is necessary to cause a woman to be searched, the search shall be made by another woman and with strict regard to decency.
(3) The goods and baggage of any person who requests to be present when they are searched shall not be searched except in his presence, unless he fails to be present after being given reasonable facility for being present.
(4) Any person who refuses to comply with any lawful demand made under this section may be arrested without warrant by the officer making the demand.
98.—(1) For the purpose of exercising the powers conferred by sections 94 to 97, an authorised officer may, without warrant, enter upon any islet, landing place, wharf, dock, railway or quay or the premises of a provider of port services or facilities licensed or exempted under the Maritime and Port Authority of Singapore Act (Cap.170A) or of the Civil Aviation Authority of Singapore.
(2) In this section, “railway” has the same meaning as in the Railways Act (Cap.263).
99. Any person who—
(a) refuses any authorised officer or senior authorised officer access to any vessel, aircraft, vehicle or place which the officer is entitled under this Part; or
(b) obstructs or hinders any authorised officer or senior authorised officer in the execution of any power conferred upon that officer by this Part,
shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $15,000 or to imprisonment for a term not exceeding 12 months or to both.
100. No action or other legal proceedings shall lie against the Government or any officer or employee thereof for anything which is in good faith done or omitted to be done in the exercise of any power, duty or function under this Part.
PART XI MISCELLANEOUS AND GENERAL PROVISIONS
101. In all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register), the registration of a person as proprietor of a registered trade mark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it.
102.—(1) If in proceedings before the Court the validity of the registration of a trade mark is contested and it is found by the Court that the trade mark is validly registered, the Court may give a certificate to that effect.
(2) If the Court gives such a certificate and in subsequent proceedings—
(a) the validity of the registration is again questioned; and
(b) the proprietor obtains a final order or judgment in his favour,
he is entitled to his costs as between solicitor and client unless the Court directs otherwise.
(3) Subsection (2) does not extend to the costs of an appeal in any such proceedings.
103. A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing which he is authorised to make or do under this Act or the rules made thereunder, shall be prima facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or not done.
104. In all proceedings before the Court under this Act, the Court may award to any party (including the Registrar) such costs as it may consider reasonable, but the Registrar shall not be ordered to pay the costs of any other of the parties.
105. If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it.
106. A District Court or a Magistrate’s Court shall have jurisdiction to hear and determine all offences under this Act and, notwithstanding anything to the contrary in the Criminal Procedure Code (Cap.68), shall have power to impose the full penalty or punishment in respect of any such offence.
107.—(1) Proceedings for an offence under this Act alleged to have been committed by a partnership shall be brought against the partnership in the name of the firm and not in that of the partners; but without prejudice to any liability of the partners under subsection (3).
(2) A fine imposed on a partnership on its conviction in such proceedings shall be paid out of the partnership assets.
(3) Where a partnership is guilty of an offence under this Act, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent the commission of the offence, is also guilty of the offence and liable to be proceeded against and punished accordingly.
(4) Where an offence under this Act committed by a body corporate is proved to have been committed with the consent or connivance of a director, manager, secretary or other similar officer of the body, or a person purporting to act in any such capacity, he as well as the body corporate is guilty of the offence and liable to be proceeded against and punished accordingly.
108.—(1) The Minister may make rules—
(a) for any purpose for which rules are required or authorised to be made under this Act;
(b) for prescribing matters authorised or required by this Act to be prescribed;
(c) for prescribing matters necessary or convenient to be prescribed for carrying out or giving effect to this Act;
(d) for prescribing matters necessary or convenient to be prescribed for the conduct of any proceedings or other matter before the Registrar.
(2) Without prejudice to the generality of subsection (1), the rules may make provision—
(a) as to the practice and procedure of any proceedings or other matter before the Registrar;
(b) as to the manner of filing of applications or other documents;
(c) requiring persons to make such statutory declarations as may be prescribed in support of any application, notice or request;
(d) requiring and regulating the translation of documents and the filing and authentication of any translation;
(e) as to the service of documents;
(f) authorising the rectification of irregularities of procedure;
(g) prescribing time limits for anything required to be done in connection with any proceeding under this Act;
(h) providing for the extension of any time limit so prescribed, or specified by the Registrar, whether or not it has already expired; and
(i) as to the giving of evidence in proceedings before the Registrar under this Act by affidavit or statutory declaration.
109. The Trade Marks Act (Cap.332) is repealed.
110.—(1) The provisions of the Third Schedule have effect with respect to transitional matters on the commencement of this Act.
(2) The Minister may, by order published in the Gazette, amend the Third Schedule to make such further transitional provisions as he may consider necessary and expedient.
111. The provisions of the written laws specified in the first column of the Fourth Schedule are amended in the manner set out in the second column thereof.
FIRST SCHEDULE
Section 60
1.—(1) The provisions of this Act shall apply to collective marks subject to the following provisions.
(2) For the purposes of this Schedule, “published” means made available to the public (whether in Singapore or elsewhere), and a document shall be taken to be published if it can be inspected as of right at any place in Singapore by members of the public, whether on payment of a fee or not.
2. In relation to a collective mark, the reference in the definition of “trade mark” in section 2(1) to distinguishing goods or services dealt with or provided in the course of trade by a person from those so dealt with or provided by any other person shall be construed as a reference to distinguishing goods or services dealt with or provided in the course of trade by members of an association which is the proprietor of the mark from those so dealt with or provided by persons who are not members of the association.
3.—(1) Notwithstanding section 7(1)(c), a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.
(2) However, the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, by a person who is entitled to use a geographical name).
4.—(1) A collective mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a collective mark.
(2) The Registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a collective mark.
(3) Notwithstanding section 14(3), an application may be amended so as to comply with any such requirement.
5.—(1) An applicant for registration of a collective mark must file with the Registrar regulations governing the use of the mark.
(2) The regulations must specify the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including any sanctions against misuse.
(3) Further requirements with which the regulations have to comply may be imposed by rules made under this Act.
6.—(1) A collective mark shall not be registered unless the regulations governing the use of the mark—
(a) comply with paragraph 5(2) and any further requirements imposed by rules; and
(b) are not contrary to public policy or to accepted principles of morality.
(2) Before the end of the prescribed period after the date of the application for registration of a collective mark, the applicant must file the regulations with the Registrar and pay the prescribed fee.
(3) If the applicant does not comply with sub-paragraph (2), the application shall be deemed to be withdrawn.
7. (1) The Registrar shall consider whether the requirements mentioned in paragraph 6(1) are met.
(2) If it appears to the Registrar that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the Registrar may specify, to make representations or to file amended regulations.
(3) If the applicant fails to satisfy the Registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the Registrar shall refuse the application.
(4) If it appears to the Registrar that those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 13.
8. The regulations shall be published and notice of opposition may be given relating to the matters mentioned in paragraph 6(1), in addition to any other grounds on which the application may be opposed.
9. The regulations governing the use of a registered collective mark shall be open to public inspection in the same way as the register.
10.—(1) An amendment of the regulations governing the use of a registered collective mark is not effective unless and until the amended regulations are filed with the Registrar and accepted by him.
(2) Before accepting any amended regulations the Registrar may in any case where it appears to him expedient to do so cause them to be published.
(3) If he does so, notice of opposition may be given relating to the matters mentioned in paragraph 6(1).
11. The following provisions shall apply in relation to an authorised user of a registered collective mark as in relation to a licensee of a trade mark:
(a) section 27(5);
(b) section 82.
12.—(1) The following provisions (which correspond to the provisions of section 44) have effect as regards the rights of authorised user in relation to infringement of a registered collective mark.
(2) An authorised user is entitled, subject to any agreement to the contrary between him and the proprietor, to call on the proprietor to take infringement proceedings in respect of any matter which affects his interests.
(3) If the proprietor—
(a) refuses to do so; or
(b) fails to do so within 2 months after being called upon,
the authorised user may bring the proceedings in his own name as if he were the proprietor.
(4) Where infringement proceedings are brought by virtue of this paragraph, the authorised user may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant.
(5) Sub-paragraph (4) does not affect the granting of interlocutory relief on an application by an authorised user alone.
(6) A proprietor who is added as a defendant as mentioned in sub-paragraph (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.
(7) In infringement proceedings brought by the proprietor of a registered collective mark any loss suffered or likely to be suffered by authorised users shall be taken into account; and the Court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.
13. Apart from the grounds of revocation provided for in section 22, the registration of a collective mark may be revoked on the ground—
(a) that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in paragraph 4(1); or
(b) that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark; or
(c) that an amendment of the regulations has been made so that the regulations—
(i) no longer comply with paragraph 5(2) and any further conditions imposed by rules; or
(ii) are contrary to public policy or morality.
14. Apart from the grounds of invalidity provided for in section 23, the registration of a collective mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4(1) or 6(1).
SECOND SCHEDULE
Section 61
1.—(1) The provisions of this Act shall apply to certification marks subject to the provisions of this Schedule.
(2) For the purposes of this Schedule, “published” means made available to the public (whether in Singapore or elsewhere), and a document shall be taken to be published if it can be inspected as of right at any place in Singapore by members of the public, whether on payment of a fee or not.
2. In relation to a certification mark, the reference in the definition of “trade mark” in section 2(1) to distinguishing goods or services dealt with or provided in the course of trade by a person from those so dealt with or provided by any other person shall be construed as a reference to distinguishing goods or services dealt with or provided in the course of trade and which are certified in the manner referred to in section 61(1)(b) from those which are not so certified.
3.—(1) Notwithstanding section 7(1)(c), a certification mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.
(2) However, the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, by a person who is entitled to use a geographical name).
4. A certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified.
5.—(1) A certification mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a certification mark.
(2) The Registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a certification mark.
(3) Notwithstanding section 14(3), an application may be amended so as to comply with any such requirement.
6.—(1) An applicant for registration of a certification mark must file with the Registrar regulations governing the use of the mark.
(2) The regulations must indicate who is authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes.
(3) Further requirements with which the regulations have to comply may be imposed by rules made under this Act.
7.—(1) A certification mark shall not be registered unless—
(a) the regulations governing the use of the mark—
(i) comply with paragraph 6(2) and any further requirements imposed by rules; and
(ii) are not contrary to public policy or to accepted principles of morality; and
(b) the applicant is competent to certify the goods or services for which the mark is to be registered.
(2) Before the end of the prescribed period after the date of the application for registration of a certification mark, the applicant must file the regulations with the Registrar and pay the prescribed fee.
(3) If the applicant does not comply with sub-paragraph (2), the application shall be deemed to be withdrawn.
8.—(1) The Registrar shall consider whether the requirements mentioned in paragraph 7(1) are met.
(2) If it appears to the Registrar that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the Registrar may specify, to make representations or to file amended regulations.
(3) If the applicant fails to satisfy the Registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the Registrar shall refuse the application.
(4) If it appears to the Registrar that those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 13.
9. The regulations shall be published and notice of opposition may be given relating to the matters mentioned in paragraph 7 (1), in addition to any other grounds on which the application may be opposed.
10. The regulations governing the use of a registered certification mark shall be open to public inspection in the same way as the register.
11.—(1) An amendment of the regulations governing the use of a registered certification mark is not effective unless and until the amended regulations are filed with the Registrar and accepted by him.
(2) Before accepting any amended regulations the Registrar may in any case where it appears to him expedient to do so cause them to be published.
(3) If he does so, notice of opposition may be given relating to the matters mentioned in paragraph 7(1).
12. The assignment or other transmission of a registered certification mark is not effective without the consent of the Registrar.
13. The following provisions apply in relation to an authorised user of a registered certification mark as in relation to a licensee of a trade mark—
(a) section 27(5);
(b) section 82.
14. In infringement proceedings brought by the proprietor of a registered certification mark any loss suffered or likely to be suffered by authorised users shall be taken into account; and the Court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.
15. Apart from the grounds of revocation provided for in section 22, the registration of a certification mark may be revoked on the ground—
(a) that the proprietor has begun to carry on such a business as is mentioned in paragraph 4;
(b) that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in paragraph 5(1);
(c) that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark;
(d) that an amendment of the regulations has been made so that the regulations—
(i) no longer comply with paragraph 6(2) and any further conditions imposed by rules; or
(ii) are contrary to public policy or morality; or
(e) that the proprietor is no longer competent to certify the goods or services for which the mark is registered.
16. Apart from the grounds of invalidity provided for in section 23, the registration of a certification mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4, 5(1) or 7(1).
THIRD SCHEDULE
Section 110
1.—(1) In this Schedule, unless the context otherwise requires—
“existing registered mark” means a trade mark or certification trade mark registered under the Trade Marks Act (Cap.332, 1992 Ed.) immediately before the commencement of this Act;
“the old law” means the repealed Act and any other enactment or rule of law applying to existing registered marks immediately before the commencement of this Act.
(2) For the purposes of this Schedule—
(a) an application shall be treated as pending on the commencement of this Act if it was made but not finally determined before commencement; and
(b) the date on which it was made shall be the date of filing under the repealed Act.
2.—(1) Existing registered marks, whether registered in Part A or B of the register kept under the repealed Act, are registered trade marks for the purposes of this Act.
(2) Existing registered marks registered as certification trade marks in the register kept under the repealed Act are registered certification marks for the purposes of this Act.
(3) Existing registered marks registered as a series of trade marks in the register kept under the repealed Act are similarly registered in the new register for the purposes of this Act.
(4) In any other case notes indicating that existing registered marks are associated with other marks shall cease to have effect on the commencement of this Act.
3. (1) A condition entered on the register kept under the repealed Act in relation to an existing registered mark immediately before the commencement of this Act shall cease to have effect on commencement.
(2) Proceedings under section 39(3) of the repealed Act which are pending on the commencement of this Act shall be dealt with under the old law and any necessary alteration made to the new register.
(3) A disclaimer or limitation entered on the register kept under the repealed Act in relation to an existing registered mark immediately before the commencement of this Act shall be deemed to be transferred to the new register and have effect as if entered on the register in pursuance of section 30 of this Act.
4.—(1) Sections 26 to 29 of this Act apply in relation to an existing registered mark as from the commencement of this Act and section 31 of this Act applies in relation to infringement of an existing registered mark committed after the commencement of this Act, subject to sub-paragraph (3).
(2) The old law continues to apply in relation to infringements committed before the commencement of this Act.
(3) It is not an infringement of—
(a) an existing registered mark; or
(b) a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services,
to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law.
5. Section 33 of this Act shall apply to infringing goods, material or articles whether made before or after the commencement of this Act.
6.—(1) Section 44 of this Act shall apply to licences granted before the commencement of this Act, but only in relation to infringements committed after commencement.
(2) Paragraph 14 of the Second Schedule of this Act applies only in relation to infringements committed after the commencement of this Act.
7.—(1) Subject to sub-paragraph (2), the provisions of section 37 of this Act apply as from the commencement of this Act to an existing registered mark of which 2 or more persons were immediately before commencement registered as joint proprietors.
(2) So long as the relations between the joint proprietors remain such as are described in section 12(11) of the repealed Act there shall be taken to be an agreement to exclude the operation of section 37(1) and (3) of this Act.
8.—(1) Section 38 of this Act shall apply to transactions and events occurring after the commencement of this Act in relation to an existing registered mark; and the old law continues to apply in relation to transactions and events occurring before commencement.
(2) Entries in the register kept under the repealed Act relating to the assignment of registered trade marks and of the benefits of applications for registration of trade marks shall be deemed to be transferred on the commencement of this Act to the register kept under this Act and have effect as if made under section 39 of this Act.
(3) Provision may be made by rules for putting entries referred to in sub-paragraph (2) in the same form as is required for entries made under this Act.
(4) An application for registration of an assignment of a registered trade mark or of an assignment of the benefits of an application for registration of a trade mark, made to the Registrar before the commencement of this Act, shall be treated as an application for registration under section 39 of this Act and shall proceed accordingly.
(5) The Registrar may require the applicant to amend his application so as to conform with the requirements of this Act.
(6) An application for registration under section 43 of the repealed Act which has been determined by the Registrar but not finally determined before the commencement of this Act shall be dealt with under the old law; and sub-paragraphs (2) and (3) shall apply in relation to any resulting entry in the register.
(7) Where before the commencement of this Act a person has become entitled by assignment or transmission to an existing registered mark but has not registered his title, any application for registration after commencement shall be made under section 39 of this Act.
(8) In cases to which sub-paragraph (4) or (7) applies, section 43(2) of the repealed Act continues to apply (and section 39(3) and (4) of this Act do not apply) as regards the consequences of failing to register.
9.—(1) Sections 42 and 43 (2) of this Act shall apply only in relation to licences granted after the commencement of this Act; and the old law continues to apply in relation to licences granted before commencement.
(2) Existing entries under section 30 of the repealed Act shall be deemed transferred on the commencement of this Act to the register kept under this Act and have effect as if made under section 39 of this Act.
(3) Provision may be made by rules for putting entries referred to in sub-paragraph (2) in the same form as is required for entries made under this Act.
(4) An application for registration as a registered user which is pending before the Registrar on the commencement of this Act shall be treated as an application for registration of a licence under section 39(1) of this Act and shall proceed accordingly.
(5) The Registrar may require the applicant to amend his application so as to conform with the requirements of this Act.
(6) An application for registration as a registered user which has been determined by the Registrar but not finally determined before the commencement of this Act shall be dealt with under the old law; and sub-paragraphs (2) and (3) shall apply in relation to any resulting entry in the register.
(7) Any proceedings pending on the commencement of this Act under section 30(9) or (10) of the repealed Act shall be dealt with under the old law and any necessary alteration made to the new register.
10.—(1) Subject to paragraph 11, an application for registration of a mark under the old law which is pending on the commencement of this Act shall be dealt with under the old law, and if registered the mark shall be treated for the purposes of this Schedule as an existing registered mark.
(2) The power of the Minister under section 108 of this Act to make rules regulating practice and procedure, and as to the matters mentioned in subsection (2) of that section, is exercisable in relation to such an application; and different provision may be made for such applications from that made for other applications.
(3) Section 26 of the repealed Act shall be disregarded in dealing after the commencement of this Act with an application for registration.
(4) Subject to sub-paragraph (6), a mark shall not be registered under this paragraph if it contains or consists of a geographical indication in respect of a wine or spirit and the mark is used or intended to be used in relation to a wine or spirit not originating from the geographical origin indicated by the geographical indication.
(5) Sub-paragraph (4) shall apply whether or not the mark has, or is accompanied by, an indication of the true geographical origin of the wine or spirit (as the case may be) or an expression such as “kind”, “type”, “style”, “imitation” or the like, and irrespective of the language the geographical indication is expressed in that trade mark.
(6) A mark shall not be refused registration by virtue of sub-paragraph (4) if the application had been made in good faith, or if it had been used continuously in good faith in the course of trade by the applicant for its registration or his predecessor in title, either—
(a) before the commencement of this Act; or
(b) before the geographical indication concerned is protected in its country of origin.
(7) A mark shall not be refused registration by virtue of sub-paragraph (4) if the geographical indication in question—
(a) has ceased to be protected; or
(b) has fallen into disuse,
in its country of origin.
11.—(1) In the case of a pending application for registration which has not been advertised under section 18 of the repealed Act before the commencement of this Act, the applicant may give notice to the Registrar claiming to have the registrability of the mark determined in accordance with the provisions of this Act.
(2) The notice must be in the prescribed form, be accompanied by the appropriate fee and be given no later than 6 months after the commencement of this Act.
(3) Notice duly given is irrevocable and has the effect that the application shall be treated as if made immediately after the commencement of this Act.
12. Section 10 of this Act shall apply to an application for registration under this Act made after the commencement of this Act notwithstanding that the Convention application was made before commencement.
13.—(1) Where, before the commencement of this Act, a person has duly filed an application for protection of a trade mark in a foreign state to which section 75 of the repealed Act applies which is not a Convention country (referred to in this paragraph as a “relevant overseas application”), he, or his successor in title, has a right to priority, for the purposes of registering the same trade mark under this Act for some or all of the same goods or services, for a period of 6 months from the date of filing of the relevant overseas application.
(2) If the application for registration under this Act is made within that 6 month period—
(a) the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the relevant overseas application; and
(b) the registrability of the trade mark shall not be affected by any use of the mark in Singapore in the period between that date and the date of the application under this Act.
(3) Any filing which in a foreign state referred to in sub-paragraph (1) is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be deemed to give rise to the right of priority.
(4) For the purposes of sub-paragraph (3), a “regular national filing” means a filing which is adequate to establish the date on which the application was filed in that country, whatever may be the subsequent fate of the application.
(5) A subsequent application concerning the same subject as the relevant overseas application, filed in the same country, shall be considered the relevant overseas application (of which the filing date is the starting date of the period of priority), if at the time of the subsequent application—
(a) the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and
(b) it has not yet served as a basis for claiming a right of priority,
and the previous application may not thereafter serve as a basis for claiming a right of priority.
(6) The Minister may make rules to provide for the manner of claiming a right to priority on the basis of a relevant overseas application.
(7) A right to priority arising as a result of a relevant overseas application may be assigned or otherwise transmitted, either with the application or independently, and the reference in sub-paragraph (1) to the applicant’s “successor in title” shall be construed accordingly.
(8) Nothing in this paragraph shall affect proceedings on an application for registration under the repealed Act made before the commencement of this Act.
14. Section 19 of this Act applies where the renewal of an existing registered mark falls due on or after the commencement of this Act; and the old law continues to apply in any other case.
15. An application under section 38 of the repealed Act which is pending on the commencement of this Act shall be dealt with under the old law and any necessary alteration made to the new register.
16.—(1) An application under section 40 of the repealed Act which is pending on the commencement of this Act shall be dealt with under the old law and any necessary alteration made to the new register.
(2) An application under section 22(1)(a) or (b) of this Act may be made in relation to an existing registered mark at any time after the commencement of this Act.
(3) However, no application referred to in sub-paragraph (2) for the revocation of the registration of an existing registered mark registered by virtue of section 41 of the repealed Act may be made until more than 5 years after the commencement of this Act.
17.—(1) An application under section 37 or 39 of the repealed Act which is pending on the commencement of this Act shall be dealt with under the old law and any necessary alteration made to the new register.
(2) For the purposes of proceedings under section 23 of this Act as it applies in relation to an existing registered mark, the provisions of this Act shall be deemed to have been in force at all material times, except that no objection to the validity of the registration of an existing registered mark may be taken on the ground specified in section 8(3) of this Act.
18.—(1) Regulations governing the use of an existing registered certification mark transmitted to the Registrar in pursuance of section 68 of the repealed Act shall be treated after the commencement of this Act as if filed under paragraph 6 of the Second Schedule to this Act.
(2) Any request for amendment of the regulations which was pending on the commencement of this Act shall be dealt with under the old law.
19. A certificate given before the commencement of this Act under section 54 of the repealed Act shall have effect as if given under section 102 of this Act.
FOURTH SCHEDULE
Section 111
FIRST COLUMN |
SECOND COLUMN |
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(1) THE COMMERCIAL AND INDUSTRIAL SECURITY CORPORATION ACT (CHAPTER 47, 1998 ED.) |
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SECTION 23(4) |
DELETE THE WORDS “TRADE MARKS ACT (CAP.332)” AND SUB STITUTE THE WORDS “TRADE MARKS ACT 1998”. |
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(2)THE CONSUMER PROTECTION (TRADE DESCRIPTIONS AND SAFE TY REQUIREMENTS) ACT (CHAP TER 53, 1985 ED.) |
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SECTION 8 |
(I)DELETE THE WORDS “TRADE MARKS ACT” WHEREVER THEY APPEARAND SUBSTITUTE IN EACH CASE THE WORDS “TRADE MARKS ACT 1998”. |
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(II)DELETE THE MARGINAL REFERENCE “CAP.332.”. |
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(3)THE CRIMINAL PROCEDURE CODE (CHAPTER 68, 1985 ED.) |
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SECTION 62(A), (III) AND (V) |
(I)DELETE THE WORDS “SECTIONS 70, 71, 72, 73 AND 74 OF THE TRADE MARKS ACT” AND SUBSTITUTE THE WORDS “SEC TION 46, 47, 48, 49 OR 52 OF THE TRADE MARKS ACT 1998”. |
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(II)DELETE THE MARGINAL REFERENCE “CAP. 332.”. |
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(4)THE JURONG TOWN CORPORATION ACT (CHAPTER 150, 1998 ED.) |
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SECTION 35(4) |
DELETE THE WORDS “TRADE MARKS ACT (CAP.332)” AND SUB STITUTE THE WORDS “TRADE MARKS ACT 1998”. |
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(5)THE REGISTRATION OF CRIMINALS ACT (CHAPTER 268, 1985 ED.) |
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SECOND SCHEDULE |
DELETE THE FOLLOWING ITEM IN PART II: |
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“CAP.332. |
TRADE MARKS ACT |
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SECTIONS 70, 72 AND 74” |
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AND SUBSTITUTE THE FOLLOWING ITEM: |
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“ |
TRADE MARKS ACT 1998 |
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SECTIONS 46, 48 AND 52”. |
(6)THE SINGAPORE PRODUCTIVITY AND STANDARDS BOARD ACT (CHAPTER 303A, 1996 ED.) |
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SECTION 2 |
DELETE THE WORDS “TRADE MARKS ACT” IN THE DEFINITION OF “TRADE MARK” AND SUBSTITUTE THE WORDS “TRADE MARKS ACT 1998”. |
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