4 In-Depth Discussion – Trade Mark Act4.1 Trade Mark Law4.1.1 Trade MarkAn Act to establish a new law for trademarks, to enable Singapore to give effect to certain international conventions on intellectual property and for matters connected therewith. A registered trade mark is a right obtained by the registration of the trade mark under the Trade Mark Act.
It is commonly used to defraud or prevent others from frauding. 4.1.
2 Common Law of Passing OffProtects unregistered signs slogans, packagings, logos. Common Law of Passing off if the trademark is not registered. There’s a lot of marks that are not registered as it is expensive. A rival could pass off his goods or services as those of the plaintiff’s by devising identical or confusingly similar branding.4.2 Application for registering of trade mark4.2.
1 RegisteringAn application for registration of a trade mark shall be made in the prescribed manner to the Registrar.Trademark must be defined as a signs like “letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour”. The sign must be able represented graphically; It can either be wrote down or drawn out but there are some exceptions.
It’s possible to trademark sounds or smell if the company manages to associate it with a physical asset. It must be capable of distinguishing goods or services. Trademark should only be used as exclusive representation and identifies products or services of a particular source from those of others.4.2.2 Refusal of registrationTrade marks with the following characteristics are not allowed to be registered. Devoid of any distinctive character, consist exclusively of signs or indications that are customary in the current language, oppose public policy or to morality, intentions to deceive, prohibited in Singapore by law. Trademarks under this category has been recognised as unsuitable for being a trademark.
This is to prevent trademarking of commonly used symbols and signs, abusing the trademark protection.4.3 Goods and Service ClassifiedGoods and services shall be classified for the purposes of the registration of trademarks according to a prescribed system of classification. Any trademarks can be notated with the “service marks” that resembles “™” for unregistered trademarks or “?” for registered trademarks. They are recognizable signs which identifies products or service that is registered as a trademark. Owner of the trademark can be an individual, business organization, or any legal entity.
A trademark is usually located on something is the most exposed to the public like a package and label on the product. As well as, company placing trademarks are often displayed on company buildings to display their corporate identity. This reinforces and show others that their branding is licensed and protected to decrease the likelihood attempts to infringe or counterfeit.4.4 Infringement Proceedings4.
4.1 Infringement and CounterfeitingInfringement is when they or their packaging bears a sign identical with or similar to that mark. Counterfeits are infringing the sign borne by the registered trademark and is identical or nearly resembling it as to be calculated to deceive. All counterfeits are infringements, but not all infringements are counterfeits. Counterfeiters usually face more severe punishments as they often try to mimic and deceive uninformed consumers that the counterfeit products is legitimate to increase the cost for a huge profit.
Counterfeit products are often made with lower quality resources. It may not only take away sales but also affect the reputation of the legitimate brand.4.
4.2 Action for Infringement under Passing OffPlaintiff must prove that his business has goodwill such as brand recognition and attractive force of the business. Plaintiff must prove misrepresentation that cause the public to be confused between the two parties brand names. Plaintiff must prove that his business suffered damage. Loss of customers, loss of sales and loss of profits.
The types of relief that the Court may grant include the following: Injunction, damages and account of profits. An injunction is a remedy in the form of a court order that compels a party to do or refrain from specific acts which in this case would be ordering an halt of continuing to manufacture the infringing goods. When the court awards any damages, it may order account of any profits attributable to the infringement that have not been taken into account in computing the damages up to $1 million.4.4.3 Actions for Infringement under Trademark ActIf plaintiff sued under Section 27(1) when infringing mark is identical with the registered TM, the plaintiff can sue and win almost immediately as it is an obvious and blatant infringement. Under Section 27(2) when Infringing sign is identical for similar goods/services OR Infringing sign is similar in identical goods/services, must show “a likelihood of confusion”.
Under Section 27(3), Infringing goods is dissimilar but is identical or similar in terms of mark. Plaintiff must show connection between the two brands, confusion caused by the similarity and damage done by the infringing brand.4.4.4 Reinforcement MeasuresAny police officer may arrest without warrant any person who in any street or public place that sells or suspected to posses and manufacture counterfeit goods with registered trade mark is falsely applied.