PART 3 RIGHTS AND REMEDIES OF PROPRIETOR OF
REGISTERED TRADE MARK |
| Rights of proprietor of registered trade mark |
| Rights conferred by 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 the proprietor’s 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 are to be construed accordingly. |
(4) The rights 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. |
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| (5) If the trade mark is registered subject to any disclaimer or limitation, the rights of the proprietor are restricted by the disclaimer or limitation. |
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| Acts amounting to infringement of registered trade mark |
27.—(1) A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, the person 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, the person 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. |
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(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, the person 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; | | (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. |
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(4) For the purposes of this section and sections 28, 29 and 31, a person uses a sign if, in particular, the person —| (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, including any such document in any medium; or | | (e) | uses the sign in advertising. |
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(5) Despite subsection (4), a person who —| (a) | applies a sign to any material used or intended to be used for labelling or packaging goods; or | | (b) | uses a sign 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, the person does not know nor have 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. |
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| Acts not amounting to infringement |
28.—(1) Despite section 27, a person does not infringe a registered trade mark when —| (a) | the person uses —| (i) | the person’s name or the name of the person’s place of business; or | | (ii) | the name of the person’s predecessor in business or the name of the person’s predecessor’s place of business; |
| | (b) | the person 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) | the person 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) Despite 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 the person, or the person and the person’s 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. |
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| (3) Despite 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. |
(4) Despite section 27, a person who uses a registered trade mark does not infringe the trade mark if such use —| (a) | constitutes fair use in comparative commercial advertising or promotion; | | (b) | is for a non-commercial purpose; or | | (c) | is for the purpose of news reporting or news commentary. |
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| Exhaustion of rights conferred by registered trade mark |
29.—(1) Despite 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 the proprietor’s express or implied consent (conditional or otherwise).(2) Subsection (1) does not apply where —| (a) | the condition of the goods has been changed or impaired after they have been put on the market; and | | (b) | the use of the registered trade mark in relation to those goods has caused dilution in an unfair manner of the distinctive character of the registered trade mark. |
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| Registration subject to disclaimer or limitation |
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 are subject to a specified territorial or other limitation. |
| (2) Where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 26 are restricted accordingly. |
| (3) The Minister may make rules as to the publication and entry in the register of a disclaimer or limitation. |
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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, in an action for an infringement, the types of relief that the Court may grant include the following:| (a) | an injunction (subject to such terms (if any) as the Court thinks fit); | | (b) | damages; | | (c) | an account of profits; | | (d) | in any case to which subsection (5) applies, statutory damages under subsection (5)(c). |
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| (3) When the Court awards any damages under subsection (2)(b), the Court may also make an order under subsection (2)(c) for an account of any profits attributable to the infringement that have not been taken into account in computing the damages. |
| (4) Except as provided for in subsection (3), the types of relief referred to in paragraphs (b), (c) and (d) of subsection (2) are mutually exclusive. |
(5) In any action for infringement of a registered trade mark where the infringement involves the use of a counterfeit trade mark in relation to goods or services, the claimant is entitled, at the claimant’s election, to —| (a) | damages and an account of any profits attributable to the infringement that have not been taken into account in computing the damages; | | (b) | an account of profits; or | | (c) | statutory damages —| (i) | not exceeding $100,000 for each type of goods or service in relation to which the counterfeit trade mark has been used; and | | (ii) | not exceeding in the aggregate $1 million, unless the claimant proves that the claimant’s actual loss from such infringement exceeds $1 million. [Act 31 of 2022 wef 01/11/2022] [Act 25 of 2021 wef 01/04/2022] |
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(6) In awarding statutory damages under subsection (5)(c), the Court is to have regard to —| (a) | the flagrancy of the infringement of the registered trade mark; | | (b) | any loss that the claimant has suffered or is likely to suffer by reason of the infringement; [Act 25 of 2021 wef 01/04/2022] | | (c) | any benefit shown to have accrued to the defendant by reason of the infringement; | | (d) | the need to deter other similar instances of infringement; and | | (e) | all other relevant matters. |
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| Order for erasure, etc., of offending sign |
32.—(1) Subject to subsection (3), where a person is found to have infringed a registered trade mark, the Court may make an order requiring the person —| (a) | to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in the person’s 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 up to such person as the Court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be. |
(3) Where a person who is found to have infringed a registered trade mark has in the person’s possession, custody or control any counterfeit goods, the Court is to order that the counterfeit goods be delivered up to such person as the Court may direct for destruction if —| (a) | the claimant applies to the Court for such an order; and [Act 25 of 2021 wef 01/04/2022] | | (b) | the Court is of the view that there are no exceptional circumstances which justify the refusal of such an order. |
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| Order for delivery up of infringing goods, material or articles |
| 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 claimant. [Act 25 of 2021 wef 01/04/2022] | (2) An order is not to 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 pursuant to an order under this section must, 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. |
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| Order as to disposal of infringing goods, material or articles |
34.—(1) Where infringing goods, material or articles have been delivered up pursuant to 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 is to have regard to —| (a) | whether other remedies available in an action for infringement of the registered trade mark would be adequate to compensate the claimant and protect the interest of the claimant; and [Act 25 of 2021 wef 01/04/2022] | | (b) | the need to ensure that no infringing goods, material or articles are disposed of in a manner that would adversely affect the claimant. [Act 25 of 2021 wef 01/04/2022] |
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(3) Despite subsection (2), where the infringing goods are counterfeit goods, the Court is to order that the goods be destroyed if —| (a) | the claimant applies to the Court for such an order; and [Act 25 of 2021 wef 01/04/2022] | | (b) | the Court is of the view that there are no exceptional circumstances which justify the refusal of such an order. |
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| (4) The Court is to issue directions as to the service of notice on persons having an interest in the goods, material or articles. |
(5) 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. |
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| (6) An order made under this section does 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. |
| (7) Subject to subsection (3), 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 is to make any other order as it thinks just. |
| (8) 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. |
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| Remedy for groundless threats of infringement proceedings |
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 the person has sustained by the threats. |
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| (3) The claimant is entitled to the relief mentioned in subsection (2) 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. [Act 25 of 2021 wef 01/04/2022] |
| (4) 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 claimant is nevertheless entitled to relief if the claimant shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect. [Act 25 of 2021 wef 01/04/2022] |
| (5) 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. |
| (6) Nothing in this section renders an advocate and solicitor liable to an action under this section in respect of an act done by him or her in his or her professional capacity on behalf of a client. |
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