PART VI | Exercise of discretionary power of Registrar |
| 62. Where any discretionary or other power is given to the Registrar by this Act or by any rules made thereunder he shall not exercise that power adversely to the applicant for registration or the registered proprietor of the trade mark in question without (if duly required to do so within the prescribed time) giving to the applicant or registered proprietor an opportunity of being heard. |
| 63. Except where expressly provided by this Act or any rules made thereunder, there shall be no appeal from a decision of the Registrar, but the court, in dealing with any question of the rectification of the register (including all applications under section 39), shall have power to review any decision of the Registrar relating to the entry in question or the correction sought to be made. |
| 64. Where by this Act any act has to be done by or to any person in connection with a trade mark or proposed trade mark or any proceeding relating thereto, the act may under and in accordance with any rules made under this Act or in particular cases by special leave of the Registrar be done by or to an agent of that person duly authorised in the prescribed manner. |
| Preliminary advice by Registrar as to distinctiveness |
65.—(1) The power to give to a person who proposes to apply for the registration of a trade mark in Part A or Part B of the register advice as to whether the trade mark appears to the Registrar prima facie to be inherently adapted to distinguish, or capable of distinguishing, as the case may be, shall be a function of the Registrar under this Act.| (2) Any such person who is desirous of obtaining such advice shall make application to the Registrar therefor in the prescribed manner. |
| (3) If on an application for the registration of a trade mark as to which the Registrar has given advice as aforesaid in the affirmative, made within 3 months after the advice is given, the Registrar, after further investigation or consideration, gives notice to the applicant of objection on the ground that the trade mark is not adapted to distinguish, or capable of distinguishing, as the case may be, the applicant shall be entitled, on giving notice of withdrawal of the application within the prescribed period, to have repaid to him any fee paid on the filing of the application. |
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66.—(1) Subject to the provisions of this Act, the Minister may make such rules, prescribe such forms, and generally do such things as he may consider expedient —| (a) | for regulating the practice (other than that relating to proceedings before the court or connected therewith) under this Act including the service of documents; | | (b) | for classifying goods for the purposes of registration of trade marks; | | (c) | for making or requiring duplicates of trade marks and other documents; | | (d) | for securing and regulating the publishing and selling or distributing in such manner as the Minister may think fit, of copies of trade marks and other documents; | | (e) | generally, for regulating the business of the office in relation to trade marks and all things by this Act placed under the direction or control of the Registrar; | | (f) | generally, for adjusting any matter or practice which may be prescribed or governed by rules made under this section so that the period between 15th February 1942 and 1st October 1947 may be excluded or equitably accounted for, and any such adjustments may be made with retrospective effect. |
| (2) All rules made under this section shall be published in the Gazette and shall be presented to Parliament as soon as possible after publication and if a resolution is passed pursuant to a motion notice whereof has been given for a sitting day not later than the first available sitting day of Parliament next after the expiry of 3 months from the date when the rules are so presented annulling the rules or any part thereof as from a specified date, the rules or such part thereof, as the case may be, shall thereupon become void as from that date but without prejudice to the validity of anything previously done thereunder or to the making of new rules. |
| (3) Subject to the provisions of this Act, the Rules Committee constituted under section 80 of the Supreme Court of Judicature Act [Cap. 322] may make Rules of Court regulating the practice and procedure in relation to proceedings before the court or connected therewith, and the costs of such proceedings. |
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| 67. There shall be paid in respect of applications and registration and other matters under this Act, such fees as the Minister may from time to time prescribe. |
| Certification trade marks |
68.—(1) A mark adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods not so certified shall be registrable as a certification trade mark in Part A of the register in respect of those goods in the name, as proprietor thereof, of that person:| Provided that a mark shall not be so registrable in the name of a person who carries on a trade in goods of the kind certified. |
| | In determining whether a mark is adapted to distinguish as aforesaid, the Registrar may have regard to the extent to which — |
| | (a) | the mark is inherently adapted to distinguish as aforesaid in relation to the goods in question; and |
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| | (b) | by reason of the use of the mark or of any other circumstances, the mark is in fact adapted to distinguish as aforesaid in relation to the goods in question. |
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(2) Subject to subsections (3) to (5), and sections 48 and 52, the registration of a person as proprietor of a certification trade mark in respect of any goods shall, if valid, give to that person the exclusive right to the use of the trade mark in relation to those goods, and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a person authorised by him under the regulations in that behalf using it in accordance therewith, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either —| (a) | as being use as a trade mark; or | | (b) | in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular, or other advertisement, issued to the public, as importing a reference to some person having the right either as proprietor or by his authorisation under the relevant regulations to use the trade mark or to goods certified by the proprietor. |
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| (3) The right to the use of a certification trade mark given by registration as aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in, in any place, in relation to goods to be exported to any market, or in any other circumstances to which, having regard to any such limitations, the registration does not extend. |
(4) The right to the use of a certification trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of any such mark as aforesaid by any person —| (a) | in relation to goods certified by the proprietor of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or another in accordance with his authorisation under the relevant regulations has applied the trade mark and has not subsequently removed or obliterated it, or the proprietor has at any time expressly or impliedly consented to the use of the trade mark; or | | (b) | in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact that the goods are certified by the proprietor:| Provided that paragraph (a) shall not have effect in the case of use consisting of the application of any such mark as aforesaid to any goods, notwithstanding that they are such goods as are mentioned in that paragraph, if the application is contrary to the relevant regulations. |
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| (5) Where a certification trade mark is one of two or more registered trade marks which are identical or nearly resemble each other, the use of any of those trade marks in exercise of the right to the use of that trade mark given by registration shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks. |
| (6) An application for the registration of a mark under this section shall be made to the Registrar in writing in the prescribed manner by the person proposed to be registered as the proprietor thereof. |
| (7) Section 11(2) to (6) shall have effect in relation to an application under this section as it has effect in relation to an application under section 11(1). |
| (8) In dealing under section 11(2) to (6) with an application under this section the Registrar shall have regard to the like considerations, so far as relevant, as if the application were an application under section 11 and to any other considerations relevant to applications under this section, including the desirability of securing that a certification trade mark shall comprise some indication that it is such a trade mark. |
| (9) An applicant for the registration of a mark under this section shall transmit to the Registrar draft regulations for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods and to authorise the use of the trade mark, and may contain any other provisions that the Registrar may require or permit to be inserted therein (including provisions conferring a right of appeal to the Registrar against any refusal of the proprietor to certify goods or to authorise the use of the trade mark in accordance with the regulations). Such regulations, if approved, shall be deposited with the Registrar and shall be open to inspection in like manner as the register. |
(10) The Registrar shall consider the application with regard to the following matters:| (a) | whether the applicant is competent to certify the goods in respect of which the mark is to be registered; | | (b) | whether the draft regulations are satisfactory; and | | (c) | whether in all the circumstances the registration applied for would be to the public advantage; |
| (i) | refuse to accept the application; or | | (ii) | accept the application and approve the regulations, either without modification and unconditionally or subject to any conditions or limitations, or to any amendments or modifications of the application or of the regulations, which he may think requisite having regard to any of the matters aforesaid, |
| but, except in the case of acceptance and approval without modification and unconditionally, the Registrar shall not decide the matter without giving to the applicant an opportunity of being heard: |
| Provided that the Registrar may, at the request of the applicant, consider the application with regard to any of the matters aforesaid, except that the Registrar shall be at liberty to reconsider any matter on which he has given a decision under this proviso if any amendment or modification is thereafter made in the application or in the draft regulations. |
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(11) When an application has been accepted, the Registrar shall, as soon as possible after such acceptance, cause the application as accepted to be advertised in the prescribed manner, and section 19 shall have effect in relation to the registration of the mark as if the application had been an application under section 11:| Provided that, in deciding under those provisions, the Registrar shall have regard only to the considerations referred to in subsection (8), and a decision under those provisions in favour of the applicant shall be conditional on the determination in his favour by the Registrar under subsection (12) of any opposition relating to any of the matters referred to in subsection (10). |
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| (12) When notice of opposition is given relating to any of the matters referred to in subsection (10), the Registrar shall, after hearing the parties, if so required, and considering any evidence, decide whether, and subject to what conditions or limitations, or amendments or modifications of the application or of the regulations, if any, registration is, having regard to those matters, to be permitted. |
| (13) (a) The regulations deposited in respect of a certification trade mark may, on the application of the registered proprietor, be altered by the Registrar. |
| (b) The Registrar may cause an application for his consent to be advertised in any case where it appears to him that it is expedient to do so, and, where the Registrar causes an application to be advertised, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar of opposition to the application, the Registrar shall not decide the matter without giving the parties an opportunity of being heard. |
(14) (a) The court may, on the application in the prescribed manner of any person aggrieved, or on the application of the Registrar, make such order as it thinks fit for expunging or varying any entry in the register relating to a certification trade mark, or for varying the deposited regulations, on the ground —| (i) | that the proprietor is no longer competent, in the case of any of the goods in respect of which the trade mark is registered, to certify those goods; | | (ii) | that the proprietor has failed to observe a provision of the deposited regulations to be observed on his part; | | (iii) | that it is no longer to the public advantage that the trade mark should be registered; or | | (iv) | that it is requisite for the public advantage that if the trade mark remains registered, the regulations should be varied, |
| and the court shall not have any jurisdiction to make an order under section 39 on any of those grounds. |
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| (b) The Registrar shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made under paragraph (a). |
| (15) Notwithstanding anything in section 56(2), the Registrar shall not have any jurisdiction to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or to authorise the use of the trade mark. |
(16) The following provisions of this Act do not have effect in relation to a certification trade mark:| (a) | sections 10, 11, 18 and 19 (except as expressly applied by this section), 30, 40, 41, 42(4) to (8), 45, 51 and 72(2); and | | (b) | any provisions the operation of which is limited by the terms thereof to registration in Part B of the register. |
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69.—(1) If any person makes or causes to be made a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of an offence and shall be liable on conviction to imprisonment for a term not exceeding 5 years.| Penalty for falsely representing a trade mark as registered |
(2) Any person who makes a representation —| (a) | with respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark; | | (b) | with respect to a part of a registered trade mark not being a part separately registered as a trade mark, to the effect that it is so registered; | | (c) | to the effect that a registered trade mark is registered in respect of any goods in respect of which it is not registered; or | | (d) | to the effect that the registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitations entered on the register, the registration does not give that right, |
| shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $200. |
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(3) For the purposes of this section, the use in Singapore in relation to a trade mark of the word “registered”, or of any other word referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except —| (a) | where that word is used in physical association with other words delineated in characters at least as large as those in which that word is delineated and indicating that the reference is to registration as a trade mark under the law of a country outside Singapore, being a country under the law of which the registration referred to is in fact in force; | | (b) | where that word (being a word other than the word “registered”) is of itself such as to indicate that the reference is to such registration as last aforesaid; or | | (c) | where that word is used in relation to a mark registered as a trade mark under the law of a country outside the United Kingdom and in relation to goods to be exported to that country. |
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| Counterfeiting a trade mark used by another |
| 70. Any person who counterfeits any trade mark used by any other person shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $5,000 or to imprisonment for a term not exceeding 2 years or to both. [69A [18/75] |
| What constitutes counterfeiting a trade mark |
71.—(1) A person shall be deemed to counterfeit a trade mark who either —| (a) | without the consent of the proprietor of the trade mark makes that trade mark or a mark so nearly resembling that trade mark as to be calculated to deceive; or | | (b) | falsifies any genuine trade mark whether by alteration, addition, effacement or otherwise. [18/75] |
| (2) In any prosecution for counterfeiting a trade mark the burden of proving the consent of the proprietor shall lie on the defendant. [69B |
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| Making or possession of any instrument for counterfeiting a trade mark |
| 72. Any person who makes or has in his possession any die, plate or other instrument for the purpose of counterfeiting a trade mark, or has in his possession a trade mark for the purpose of denoting that any goods are the manufacture or merchandise of a person whose manufacture or merchandise they are not, or that they belong to a person to whom they do not belong, shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $5,000 or to imprisonment for a term not exceeding 3 years or to both. [69C [18/75] |
| Importing or selling, etc., goods marked with a counterfeit trade mark |
73. Any person who imports, sells or exposes or has in his possession for sale or any purpose of trade or manufacture any goods or things with a counterfeit trade mark affixed to or impressed upon the goods or things or to or upon any case, package or other receptacle in which such goods or things are contained, shall, unless he proves that —| (a) | 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 things; or | | (b) | otherwise he had acted innocently, |
| 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 one year or to both. |
[69D [18/75] |
| Representation on trade marks of Arms or Flag prohibited, etc. |
| 74.—(1) Any person who causes or permits to appear on a trade mark used by him for the purposes of his trade or business any representation of the Arms or the Flag of Singapore, or of any arms or devices so nearly resembling them as to be likely to deceive, shall, unless such trade mark is authorised to be used by order of the President, be guilty of an offence. [18/75] | (2) Any person who imports, sells or exposes or has in his possession for sale or any 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 $5,000 or to imprisonment for a term not exceeding 2 years or to both and shall forfeit any goods to which the trade mark bearing the prohibited representation is applied. [70 |
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| International arrangements |
75.—(1) Where any person has registered or has applied for protection for any trade mark in the United Kingdom or in any foreign state to which this section applies, that person or his legal representative or assignee shall be entitled to registration of his trade mark in priority to other applicants; and the registration shall have the same date as the date of application for protection in the United Kingdom or the foreign state, as the case may be: | | (a) | the application for registration is made within 6 months from the date of commencement of Part II or of the application for protection in the United Kingdom or the foreign state; and |
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| | (b) | nothing in this section shall entitle the proprietor of a trade mark to recover damages or infringements happening prior to the actual date on which his trade mark is registered in Singapore. |
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| (2) The registration of a trade mark shall not be invalidated by reason only of the use of the trade mark by some other person in Singapore during the aforesaid period of 6 months. |
| (3) The application for the registration of a trade mark under this section shall be made in the same manner as an ordinary application under Part II. |
(4) This section shall apply only in the case of the United Kingdom and of those foreign states with respect to which the President may by notification to be published in the Gazette* declare this section to be applicable and so long only in the case of each of such foreign states as the notification continues in force with respect to that state.| * See G.N. No. S (N.S.) 226/59 |
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(5) Where it is made to appear to the President that in any part of the Commonwealth outside the United Kingdom, satisfactory provision has been made for the protection of trade marks registered in Singapore it shall be lawful for the President by notification in the Gazette* to apply this section to that part of the Commonwealth with such variations or additions, if any, as may be stated in the notification.| * See G.N. No. S (N.S.) 225/59 |
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| (6) For the purposes of this section, “foreign state” shall be deemed to include any colony, protectorate, territory subject to the authority or under the suzerainty of a foreign state and any territory administered by a foreign state in accordance with a mandate from the League of Nations or under the trusteeship system of the United Nations. [71 |
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| Use of trade mark for export trade, and use where form of trade connection changes |
76.—(1) The application in Singapore of a trade mark to goods to be exported from Singapore and any other act done in Singapore in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded in within Singapore, would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods for any purpose for which such use is material under this Act or at common law.| (2) The use of a registered trade mark in relation to goods between which and the person using it any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the trade mark has been, or is, used in relation to goods between which and that person or a predecessor in title of his a different form of connection in the course of trade subsisted or subsists. [72 |
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