PART I | 1. This Act may be cited as the Trade Marks Act. |
2.—(1) In this Act, unless the context otherwise requires —| “business” includes a trade or profession; |
| “business identifier” means any sign capable of being represented graphically which is used to identify any business; |
| “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) | in section 10 and paragraph 13 of the Third Schedule, a country or territory, other than Singapore, which is —| (i) | a party to the Paris Convention; or | | (ii) | a member of the World Trade Organisation; and |
| | (b) | in any other provision of this Act, a country or territory which is —| (i) | a party to the Paris Convention; or | | (ii) | a member of the World Trade Organisation; [42/2005 wef 01/01/2006] |
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| “Court” means the High Court; |
“dilution”, in relation to a trade mark, means the lessening of the capacity of the trade mark to identify and distinguish goods or services, regardless of whether there is —| (a) | any competition between the proprietor of the trade mark and any other party; or | | (b) | any likelihood of confusion on the part of the public; |
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“earlier trade mark” means —| (a) | a registered trade mark or an 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 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; |
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| “geographical indication” has the same meaning as in section 2 of the Geographical Indications Act (Cap. 117B); |
| “International Bureau” has the meaning given by Article 2(1) of the Madrid Protocol; [Act 16 of 2012 wef 07/03/2014] |
| “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 (by rules made under section 54) as an international trade mark (Singapore); [Act 16 of 2012 wef 07/03/2014] |
| “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; [Act 16 of 2012 wef 07/03/2014] |
| “Office” means the Intellectual Property Office of Singapore incorporated under the Intellectual Property Office of Singapore Act (Cap. 140); |
| “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” means —| (a) | in relation to a registered trade mark, the person in whose name the trade mark is registered; or | | (b) | in relation to an unregistered trade mark that is a well known trade mark, the person to whom the trade mark belongs; |
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| “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, 1992 Ed.) repealed by the Trade Marks Act 1998 (Act 46 of 1998, revised as Cap. 332, 1999 Ed.); |
| “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 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; |
“well known trade mark” means —| (a) | any registered trade mark that is well known in Singapore; or | | (b) | any unregistered trade mark that is well known in Singapore and that belongs to a person who —| (i) | is a national of a Convention country; or | | (ii) | is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country, |
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| whether or not that person carries on business, or has any goodwill, in Singapore; |
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| “WTO Agreement” means the World Trade Organisation Agreement signed in Marrakesh in 1994 as revised or amended from time to time. [3/2001; 20/2004; S 2/2000] |
| (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) Subject to subsection (8), in deciding, for the purposes of this Act, whether a trade mark is well known in Singapore, it shall be relevant to take into account any matter from which it may be inferred that the trade mark is well known, including such of the following matters as may be relevant:| (a) | the degree to which the trade mark is known to or recognised by any relevant sector of the public in Singapore; | | (b) | the duration, extent and geographical area of —| (i) | any use of the trade mark; or | | (ii) | any promotion of the trade mark, including any advertising of, any publicity given to, or any presentation at any fair or exhibition of, the goods or services to which the trade mark is applied; |
| | (c) | any registration or application for the registration of the trade mark in any country or territory in which the trade mark is used or recognised, and the duration of such registration or application; | | (d) | any successful enforcement of any right in the trade mark in any country or territory, and the extent to which the trade mark was recognised as well known by the competent authorities of that country or territory; | | (e) | any value associated with the trade mark. [20/2004] |
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| (8) Where it is determined that a trade mark is well known to any relevant sector of the public in Singapore, the trade mark shall be deemed to be well known in Singapore. [20/2004] |
(9) In subsections (7) and (8), “relevant sector of the public in Singapore” includes any of the following:| (a) | all actual consumers and potential consumers in Singapore of the goods or services to which the trade mark is applied; | | (b) | all persons in Singapore involved in the distribution of the goods or services to which the trade mark is applied; | | (c) | all businesses and companies in Singapore dealing in the goods or services to which the trade mark is applied. [UK Trade Marks Act 1994, ss. 1, 6, 53, 55(1), 103] [20/2004] |
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| Meaning of infringing goods, material or articles and counterfeit goods or trade mark |
3.—(1) For the purposes of this Act —| (a) | “infringing goods”, “infringing material” and “infringing articles” shall be construed in accordance with subsections (2), (3) and (4), respectively; and | | (b) | “counterfeit goods” and “counterfeit trade mark” shall be construed in accordance with subsections (5) and (6), respectively. [20/2004] |
(2) Goods are “infringing goods”, in relation to a registered trade mark, if they or their packaging bears 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. |
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(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. |
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(4) “Infringing articles”, in relation to a registered trade mark, means articles —| (a) | which are 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. [20/2004] |
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(5) Goods are “counterfeit goods”, in relation to a registered trade mark, if —| (a) | they are infringing goods in relation to that mark; and | | (b) | the sign borne by them or their packaging is a counterfeit trade mark. [20/2004] |
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(6) A sign is a “counterfeit trade mark”, in relation to a registered trade mark, if the sign —| (a) | is identical with or so nearly resembling the registered trade mark as to be calculated to deceive; and | | (b) | is applied to goods or services —| (i) | without the express or implied consent (conditional or otherwise) of the proprietor of the registered trade mark; and | | (ii) | to falsely represent the goods or services to be the genuine goods or actual services of the proprietor or a licensee of the registered trade mark. [UK Trade Marks Act 1994, s. 17] [20/2004] |
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