PART II
REGISTRATION OF TRADE MARKS
Registered United Kingdom trade marks
8.  All trade marks entered in the register under the provisions of Part II of the Trade Marks Ordinance 1938 [38/38] shall be deemed, for all purposes, to be trade marks registered under this Part.
Particular goods
9.—(1)  A trade mark may only be registered in respect of particular goods or classes of goods.
(2)  Any question arising as to the class within which any goods fall shall be determined by the Registrar, whose decision shall be final.
Trade marks registrable in Part A
10.—(1)  A trade mark (other than a certification trade mark) registrable in Part A of the register shall contain or consist of at least one of the following essential particulars:
(a)the name of a company, individual or firm represented in a special or particular manner;
(b)the signature of the applicant for the registration or some predecessor in his business;
(c)an invented word or invented words;
(d)a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or surname;
(e)any other distinctive mark; provided that a name, signature, or word or words, other than such as fall within the descriptions in paragraphs (a), (b), (c) and (d), shall not be registrable under this paragraph except upon evidence of its distinctiveness.
(2)  For the purposes of this section, “distinctive” means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(3)  In determining whether a trade mark is adapted to distinguish as aforesaid the Registrar or the court may have regard to the extent to which —
(a)the trade mark is inherently adapted to distinguish as aforesaid; and
(b)by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid:
Provided that any mark which has been registered as a distinctive mark in Part A of the register kept in the United Kingdom under the Trade Marks Act 1938 [U.K. 1938 c. 22] shall be deemed to be a distinctive mark for the purpose of this Act.
Application for registration
11.—(1)  Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it in Part A shall apply in writing to the Registrar in the prescribed manner.
(2)  Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to conditions, amendments or modifications, or to such limitations, if any, as he may think right to impose.
(3)  In the case of a refusal or conditional acceptance, the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the material used by him in arriving at it, and the decision shall be subject to appeal to the court.
(4)  An appeal under this section shall be made in the prescribed manner, and on the appeal the court shall, if required, hear the applicant and the Registrar, and shall make an order determining whether, and subject to what conditions, amendments or modifications, if any, or to what limitations, if any, the application is to be accepted.
(5)  Appeals under this section shall be heard on the materials so stated by the Registrar to have been used by him in arriving at his decision, and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the Registrar, other than those stated by him, except by leave of the court. Where any further grounds of objection are taken the applicant shall be entitled to withdraw his application without payment of costs on giving notice in the prescribed manner.
(6)  The Registrar or the court, as the case may be, may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon such terms as the Registrar or the court may think fit.
(7)  An application for the registration of a trade mark in respect of any goods shall not be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark —
(a)(а) if the Registrar is satisfied that a body corporate is about to be constituted and that the applicant intends to assign the trade mark to the corporation with a view to the use thereof in relation to those goods by the corporation; or
(b)if the application is accompanied by an application for the registration of a person as a registered user of the trade mark, and the Registrar is satisfied that the proprietor intends it to be used by that person in relation to those goods and the Registrar is also satisfied that that person will be registered as a registered user thereof immediately after registration of the trade mark.
(8)  The Registrar may, as a condition of the exercise of the power conferred by subsection (7) in favour of the applicant who relies on intention to assign to a corporation as aforesaid, require him to give security for the costs of any proceedings before him relative to any opposition, and in default of such security being duly given may treat the application as abandoned.
(9)  Where a trade mark is registered in respect of any goods under the power conferred by subsection (7) in the name of an applicant who relies on intention to assign to a corporation as aforesaid, then, unless within a period of 6 months the corporation has been registered as the proprietor of the trade mark in respect of those goods, the registration shall cease to have effect in respect thereof at the expiration of that period, and the Registrar shall amend the register accordingly.
Registration of trade marks in Part B
12.—(1)  Where any mark has for not less than two years been bona fide used in Singapore upon or in connection with any goods (whether for sale in Singapore or exportation abroad), for the purpose of indicating that they are goods of the proprietor of the mark by virtue of manufacture, selection, certification, dealing with or offering for sale, or where any mark has been registered in Part B of the register kept in the United Kingdom under the Trade Marks Act 1938 [U.K. 1938 c. 22] the person claiming to be the proprietor of the mark may apply in writing to the Registrar in the prescribed manner to have the mark entered as his registered trade mark in Part B of the register in respect of such goods.
(2)  The Registrar shall consider every such application for registration of a trade mark in Part B of the register, and if it appears to him, after such search, if any, as he may consider necessary, that the application is inconsistent with section 15 or 23, or if he is not satisfied that the mark has been so used as aforesaid, or that it is capable of distinguishing the goods of the applicant, he may refuse the application, or may accept it subject to conditions, amendments or modifications as to the goods or classes of goods in respect of which the mark is to be registered, or to such limitations, if any, as to mode or place of user or otherwise as he may think right to impose, and in any other case he shall accept the application.
(3)  Every such application shall be accompanied by a statutory declaration verifying the user, including the date of first user, and such date shall be entered on the register:
     Provided that where the date of first user is not known with certainty it shall be sufficient to state the earliest date on which the mark was known to have been used and such date shall be entered in the register as the date of first user.
(4)  Any such refusal or conditional acceptance shall be subject to appeal in the prescribed manner to the court, and, if the ground for refusal is insufficiency of evidence as to user the refusal shall be without prejudice to any application for registration of the trade mark in Part A of the register.
(5)  A mark may be registered in Part B notwithstanding any registration in Part A by the same proprietor of the same mark or any part or parts thereof.
(6)  Section 68 does not apply in respect of trade marks to which this section applies.
Power to treat application for registration in Part A as application for registration in Part B
13.  If any person applies for the registration of a trade mark in Part A of the register, the Registrar may, if the applicant is willing, instead of refusing the application, treat it as an application for registration in Part B of the register and deal with the application accordingly.
Coloured trade marks
14.  A trade mark may be limited in whole or in part to one or more specified colours, and in such a case the fact that it is so limited shall be taken into consideration by any court having to decide on the distinctive character of the trade mark.
     If and so far as a trade mark is registered without limitation of colour it shall be deemed to be registered for all colours.
Restriction on registration
15.—(1)  It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.
(2)  No trade mark shall be registered in respect of particular goods or classes of goods set forth in the Schedule unless the trade mark has been and is registered in the United Kingdom in respect of such goods or classes of goods and unless the application for registration is made by the registered proprietor in the United Kingdom or any person deriving his right from the registered proprietor by assignment, transmission or other operation of law.
Words used as name or description of an article or substance
16.—(1)  The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of a word or words which the trade mark contains, or of which it consists, as the name or description of an article or substance:
     Provided that, if it is proved either —
(a)that there is a well-known and established use of the word or words as the name or description of the article or substance by a person or persons carrying on a trade therein, not being use in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark or (in the case of a certification trade mark) goods certified by the proprietor; or
(b)that the article or substance was formerly manufactured under a patent, that a period of two years or more after the cesser of the patent has elapsed, and that the word or words is or are the only practicable name or description of the article or substance,
Subsection (2) shall have effect.
(2)  Where the facts mentioned in subsection (1)(a) or (b) are proved with respect to any word or words, then —
(a)if the trade mark consists solely of that word or those words, the registration of the trade mark, so far as regards registration in respect of the article or substance in question or of any goods of the same description, shall be deemed for the purposes of section 39 to be an entry wrongly remaining on the register;
(b)if the trade mark contains that word or those words and other matter, the court or the Registrar, in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance in question and of any goods of the same description, may, in case of a decision in favour of its remaining on the register, require as a condition thereof that the proprietor shall disclaim any right to the exclusive use in relation to that article or substance and any goods of the same description of that word or those words, so however, that no disclaimer upon the register shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made; and
(c)for the purposes of any other legal proceedings relating to the trade mark —
(i)if the trade mark consists solely of that word or those words, all rights of the proprietor to the exclusive use of the trade mark; or
(ii)if the trade mark contains that word or those words and other matter, all rights of the proprietor to the exclusive use of that word or those words,
in relation to the article or substance in question or to any goods of the same description, whether under the common law or by registration, shall be deemed to have ceased on the date at which the use mentioned in subsection (1)(a) first became well-known and established, or at the expiration of the period of two years mentioned in subsection (1)(b).
(3)  No word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark in respect of a chemical substance or preparation.
(4)  Subsection (3) shall not have effect in relation to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.
Address for service
17.  When an applicant for the registration of a trade mark or an agent does not reside or carry on business in Singapore he shall give the Registrar an address for service in Singapore, and if he fails to do so the Registrar may refuse to proceed with the application until such address has been given.
Advertisement of application
18.  When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall as soon as possible after its acceptance cause the application as accepted to be advertised in the prescribed manner. The advertisement shall set forth all conditions and limitations subject to which the application has been accepted:
     Provided that the Registrar may cause an application for registration of a trade mark to be advertised before acceptance if it is made under section 10(1)(e) or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances to do so, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted but shall not be bound to do so.
Opposition to registration
19.—(1)  Any person may, within the prescribed time from the date of the advertisement of an application for the registration of a trade mark, give notice to the Registrar of opposition to the registration.
(2)  The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.
(3)  The Registrar shall send a copy of the notice to the applicant, and within the prescribed time after receipt of the notice the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so, he shall be deemed to have abandoned his application.
(4)  If the applicant sends such a counter-statement the Registrar shall furnish a copy thereof to the persons giving notice of opposition, and shall after hearing the parties, if so required, and considering the evidence, decide whether, and subject to what conditions, or what limitations, registration is to be permitted.
(5)  The decision of the Registrar shall be subject to appeal to the court.
(6)  An appeal under this section shall be made in the prescribed manner, and on the appeal the court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions, if any, or what limitations, if any, registration is to be permitted.
(7)  On the hearing of any such appeal any party may either in the manner prescribed or by special leave of the court bring forward further material for the consideration of the court.
(8)  On an appeal under this section no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar other than those stated by the opponent as hereinbefore provided, except by leave of the court. Where any further grounds of objection are taken the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed.
(9)  In any appeal under this section, the court may, after hearing the Registrar, permit the trade mark proposed to be registered to be modified in any manner not substantially affecting the identity of the trade mark, but in such a case the trade mark as so modified shall be advertised in the prescribed manner before being registered.
(10)  If a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such a notice, or an appellant, neither resides nor carries on business in Singapore, the court may require him to give security for costs of the proceedings before it relative to the opposition or to the appeal, as the case may be, and in default of such security being duly given may treat the opposition or application, or the appeal, as the case may be, as abandoned.
(11)  An appeal shall lie from a decision of the court to the Court of Appeal.
Disclaimers
20.  If a trade mark contains parts not separately registered by the proprietor as trade marks, or if it contains matter common to the trade, or otherwise of a non- distinctive character, the Registrar or the court, in deciding whether the trade mark shall be entered or shall remain upon the register, may require as a condition of its being upon the register that the proprietor shall disclaim any right to the exclusive use of any part or parts of the trade mark, or of all or any portion of such matter, to the exclusive use of which the Registrar or the court holds him not to be entitled, or that he shall make such other disclaimer as the Registrar or the court may consider needful for the purpose of defining his rights under such registration:
     Provided that no disclaimer on the register shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.
Date of registration
21.  When an application for registration of a trade mark in Part A or in Part B of the register has been accepted and has not been opposed, and the time for opposition has expired, or having been opposed the opposition has been decided in favour of the applicant, the Registrar shall, unless the application has been accepted in error, register the trade mark in Part A or Part B, as the case may be, and the 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.
Non-completion of registration
22.  Where the registration of a trade mark is not completed within 12 months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice in writing of the non-completion to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.
Identical trade marks
Identical trade marks
23.  Except as provided by section 25, no trade mark shall be registered in respect of any goods or description of goods that is identical with one belonging to a different proprietor and already on the register in respect of the same goods or description of goods or so nearly resembling such a trade mark as to be likely to deceive or cause confusion.
Rival claims to identical trade marks
24.  Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by the court, or have been settled by agreement in a manner approved by him or by the court.
Concurrent user
25.  In case of honest concurrent user or of other special circumstances, which in the opinion of the court or of the Registrar make it proper to do so, the court or the Registrar may permit the registration of trade marks which are identical or nearly resemble each other for the same goods or description of goods, by more than one proprietor subject to such conditions and limitations, if any, as the court or the Registrar, as the case may be, may think it right to impose.
Association of trade marks
26.—(1)  Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods is identical with another trade mark which is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods, or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may at any time require that the trade marks shall be entered on the register as associated trade marks.
(2)  On application made in the prescribed manner by the registered proprietor of two or more associated trade marks, the Registrar may dissolve the association as respects any of them if he is satisfied that there would be no likelihood of deception or confusion being caused if that trade mark were used by another person in relation to any of the goods in respect of which it is registered, and may amend the register accordingly.
(3)  Any decision of the Registrar under this section shall be subject to appeal to the court.
Combined trade marks
27.  If the proprietor of a trade mark claims to be entitled to the exclusive use of any portion of the trade mark separately, he may apply to register the same as separate trade marks. Each such separate trade mark shall satisfy all the conditions and shall have all the incidents of an independent trade mark, except that when registered it and the trade mark of which it forms a part shall be deemed to be associated trade marks, and shall be entered on the register as such, but the user of the whole trade mark shall for the purposes of this Act be deemed to be also a user of such registered trade marks belonging to the same proprietor as it contains.
Series of trade marks
28.  When a person claiming to be the proprietor of several trade marks for the same goods or description of goods which, while resembling each other in the material particulars thereof, yet differ in respect of —
(a)statements of the goods for which they are respectively used or proposed to be used;
(b)statements of number, price, quality or names of places;
(c)other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or
(d)colour,
seeks to register those trade marks, they may be registered as a series in one registration. All trade marks so registered shall be deemed to be and shall be registered as associated trade marks.
Assignment and user of associated trade marks
29.  Associated trade marks shall be assignable or transmissible only as a whole and not separately, but they shall for all other purposes be deemed to have been registered as separate trade marks:
     Provided that —
(a)where under the provisions of this Act user of a registered trade mark is required to be proved for any purpose, the court or the Registrar may, if and so far as it or he thinks right, accept user of an associated registered trade mark, or of the trade mark with additions and alterations not substantially affecting its identity, as an equivalent for such user; and
(b)the foregoing provisions apply in relation to proof of use of any registered trade mark and not in relation only to proof of use of a trade mark which is one of two or more associated trade marks.
Registered users
30.—(1)  Subject to this section, a person other than the proprietor of a trade mark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered (otherwise than as a defensive trade mark) and either with or without conditions or restrictions.
     The use of a trade mark by a registered user thereof in relation to goods with which he is connected in the course of trade and in respect of which for the time being the trade mark remains registered and he is registered as a registered user, being use such as to comply with any conditions or restrictions to which his registration is subject, is referred to in this Act as the “permitted use” thereof.
(2)  The permitted use of a trade mark shall be deemed to be use by the proprietor thereof, and shall be deemed not to be use by a person other than the proprietor, for the purposes of section 40 and for any other purpose for which such use is material under this Act or at common law.
(3)  Subject to any agreement subsisting between the parties, a registered user of a trade mark shall be entitled to call upon the proprietor thereof to take proceedings to prevent infringement thereof, and, if the proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant. A proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
(4)  Where it is proposed that a person should be registered as a registered user of a trade mark, the proprietor and the proposed registered user shall apply in writing to the Registrar in the prescribed manner and shall furnish him with a statutory declaration made by the proprietor, or by some person authorised to act on his behalf and approved by the Registrar —
(a)giving particulars of the relationship, existing or proposed, between the proprietor and the proposed registered user, including particulars showing the degree of control by the proprietor over the permitted use which their relationship will confer and whether it is a term of their relationship that the proposed registered user shall be the sole registered user or that there shall be any other restriction as to persons for whose registration as registered users application may be made;
(b)stating the goods in respect of which registration is proposed;
(c)stating any conditions or restrictions proposed with respect to the characteristics of the goods, to the mode or place of permitted use, or to any other matter; and
(d)stating whether the permitted use is to be for a period or without limit of period, and, if for a period, the duration thereof,
and with such further documents, information or evidence as may be required under the rules made under this Act or by the Registrar.
(5)  When the requirements of subsection (4) have been complied with, if the Registrar, after considering the information furnished to him under that subsection, is satisfied that in all the circumstances the use of the trade mark in relation to the proposed goods or any of them by the proposed registered user, subject to any conditions or restrictions which the Registrar thinks proper, would not be contrary to the public interest, the Registrar may register the proposed registered user as a registered user in respect of the goods as to which he is so satisfied subject as aforesaid.
(6)  The Registrar shall refuse an application under this section if it appears to him that the grant thereof would tend to facilitate trafficking in a trade mark.
(7)  The Registrar shall, if so required by an applicant, take steps for ensuring that information furnished for the purposes of an application under this section (other than matter entered in the register) is not disclosed to rivals in trade.
(8)  Without prejudice to section 39, the registration of a person as a registered user —
(a)may be varied by the Registrar as regards the goods in respect of which, or any conditions or restrictions subject to which, it has effect, on the application in writing in the prescribed manner of the registered proprietor of the trade mark to which the registration relates;
(b)may be cancelled by the Registrar on the application in writing in the prescribed manner of the registered proprietor or of the registered user or of any other registered user of the trade mark; or
(c)may be cancelled by the Registrar on the application in writing in the prescribed manner of any person on any of the following grounds:
(i)that the registered user has used the trade mark otherwise than by way of the permitted use, or in such a way as to cause, or to be likely to cause, deception or confusion;
(ii)that the proprietor or the registered user misrepresented, or failed to disclose, some fact material to the application for the registration, or that the circumstances have materially changed since the date of the registration;
(iii)that the registration ought not to have been effected having regard to rights vested in the applicant by virtue of a contract in the performance of which he is interested.
(9)  Provision shall be made by rules made under this Act for the notification of the registration of a person as a registered user to any other registered user of the trade mark, and for the notification of any application under subsection (8) to the registered proprietor and each registered user (not being the applicant) of the trade mark, and for giving to the applicant on such an application and to all persons to whom such application is notified and who intervene in the proceedings in accordance with those rules an opportunity of being heard.
(10)  The Registrar may at any time cancel the registration of a person as a registered user of a trade mark in respect of any goods in respect of which the trade mark is no longer registered.
(11)  Any decision of the Registrar under this section shall be subject to appeal to the court.
(12)  Where a person is registered as a registered user of a trade mark on an application made within 6 months from the commencement of this Part, subsection (2) shall have effect in relation to any previous use (whether before or after the commencement of this Act) of the trade mark by that person, being use in relation to the goods in respect of which he is registered and, where he is registered subject to conditions or restrictions, being use such as to comply substantially therewith, as if such previous use had been permitted use.
(13)  Nothing in this section shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof.