PART VII
INTERNATIONAL MATTERS
The Madrid Protocol, etc.
Power to make provision giving effect to Madrid Protocol, etc.
54.—(1)  The Minister may make rules to give effect in Singapore to the provisions of the Madrid Protocol or of any treaty, convention, arrangement or engagement relating to trade marks to which Singapore is a party.
(2)  Rules may, in particular, be made to provide for —
(a)the making of applications for international registrations by way of the Registry as office of origin;
(b)the procedures to be followed where the basic Singapore application or registration fails or ceases to be in force;
(c)the procedures to be followed where the Registry receives from the International Bureau or any body specified in the rules a request for extension of protection to Singapore;
(d)the effects of a successful request for extension of protection to Singapore;
(e)the transformation of an application for an international registration, or an international registration, into a national application for registration;
(f)the communication of information to the International Bureau; and
(g)the payment of fees and amounts prescribed in respect of applications for international registrations, extensions of protection and renewals.
(3)  Provision may also be made in the rules to apply in relation to an international trade mark (Singapore) the provisions of section 35 and Parts VI and X.
(4)  [Deleted by Act 16 of 2012 wef 07/03/2014]
The Paris Convention, the TRIPS Agreement
and well known trade marks: supplementary provisions
Protection of well known trade marks
55.—(1)  A well known trade mark shall be entitled to protection under this section —
(a)whether or not the trade mark has been registered in Singapore, or an application for the registration of the trade mark has been made to the Registrar; and
(b)whether or not the proprietor of the trade mark carries on business, or has any goodwill, in Singapore.
[20/2004]
(2)  Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore, in the course of trade and without the proprietor’s consent, of any trade mark which, or an essential part of which, is identical with or similar to the proprietor’s trade mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.
[20/2004]
(3)  Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore, in the course of trade and without the proprietor’s consent, of any trade mark which, or an essential part of which, is identical with or similar to the proprietor’s trade mark, in relation to any goods or services, where the use of the trade mark —
(a)would indicate a connection between those goods or services and the proprietor, and is likely to damage the interests of the proprietor; or
(b)if the proprietor’s trade mark is well known to the public at large in Singapore —
(i)would cause dilution in an unfair manner of the distinctive character of the proprietor’s trade mark; or
(ii)would take unfair advantage of the distinctive character of the proprietor’s trade mark.
[20/2004]
(4)  Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore without the proprietor’s consent of any business identifier which, or an essential part of which, is identical with or similar to the proprietor’s trade mark, where the use of the business identifier —
(a)would indicate a connection between the business in respect of which it is used and the proprietor, and is likely to damage the interests of the proprietor; or
(b)if the proprietor’s trade mark is well known to the public at large in Singapore —
(i)would cause dilution in an unfair manner of the distinctive character of the proprietor’s trade mark; or
(ii)would take unfair advantage of the distinctive character of the proprietor’s trade mark.
[20/2004]
(5)  If the Court grants an injunction under subsection (4) restraining the use by any business of any business identifier, the Court may make such other order as the Court deems fit in respect of any entry in any record maintained by any person, body or authority which associates that business with that business identifier.
[20/2004]
(6)  The proprietor shall not be entitled to the right referred to in subsection (2), (3) or (4) if the use of the trade mark or business identifier, as the case may be, began before the proprietor’s trade mark became well known in Singapore, unless the trade mark or business identifier has been used in bad faith.
[20/2004]
(7)  The proprietor shall cease to be entitled to the right referred to in subsection (2), (3) or (4) if the proprietor has acquiesced for a continuous period of 5 years in the use of the trade mark or business identifier, as the case may be, in Singapore, being aware of that use, unless the trade mark or business identifier has been used in bad faith.
[20/2004]
(8)  In deciding whether the trade mark or business identifier, as the case may be, has been used in bad faith, it shall be relevant to consider whether the person who used the trade mark or business identifier had, at the time he began to use the trade mark or business identifier, knowledge of, or reason to know of, the proprietor’s trade mark.
[20/2004]
(9)  Nothing in subsection (2) shall affect the continuation of any use referred to therein in good faith of a trade mark that was begun before 15th January 1999.
[20/2004]
(10)  Nothing in subsection (3) or (4) shall affect the continuation of any use referred to therein in good faith of a trade mark or business identifier, as the case may be, that was begun before 1st July 2004.
[20/2004]
(11)  For the purposes of this section and sections 55A, 56, 57 and 59, “use”, in relation to a trade mark, means use within the meaning of section 27(4).
[20/2004]
Permitted use of well known trade marks
55A.—(1)  Notwithstanding section 55, the proprietor of a well known trade mark shall not be entitled to restrain by injunction the use in Singapore, in accordance with honest practices in industrial or commercial matters, by any person of —
(a)the name of —
(i)the person himself;
(ii)the person’s place of business;
(iii)the person’s predecessor in business; or
(iv)the place of business of the person’s predecessor in business;
(b)any 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 trade mark to indicate the intended purpose of goods (in particular as accessories or spare parts) or services.
[20/2004]
(2)  Notwithstanding section 55, the proprietor of a well known trade mark shall not be entitled to restrain by injunction the use in Singapore of any registered trade mark in relation to goods or services for which the latter is registered.
[20/2004]
(3)  Notwithstanding section 55, the proprietor of a well known trade mark shall not be entitled to restrain by injunction the use in Singapore of 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.
[20/2004]
National emblems, etc., of Convention countries: Article 6ter of Paris Convention, etc.
56.—(1)  A trade mark which consists of or contains the flag of a Convention country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the Registrar that use of the flag in the manner proposed is permitted without such authorisation.
(2)  A trade mark which consists of or contains the armorial bearings or any other state emblem of a Convention country which is protected under the Paris Convention or the TRIPS Agreement shall not be registered without the authorisation of the competent authorities of that country.
(3)  A trade mark which consists of or contains an official sign or hallmark adopted by a Convention country and indicating control and warranty shall not, where the sign or hallmark is protected under the Paris Convention or the TRIPS Agreement, be registered in relation to goods or services of the same, or a similar kind, as those in relation to which it indicates control and warranty, without the authorisation of the competent authorities of the country concerned.
(4)  The provisions of this section as to national flags and other state emblems, and official signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.
(5)  Nothing in this section prevents the registration of a trade mark on the application of a national of a country who is authorised to make use of a state emblem, or official sign or hallmark, of that country, notwithstanding that it is similar to that of another country.
(6)  Where by virtue of this section the authorisation of the competent authorities of a Convention country is or would be required for the registration of a trade mark, those authorities are entitled to restrain by injunction any use in the course of trade of the trade mark in Singapore without their authorisation.
[UK Trade Marks Act 1994, s. 57]
Emblems, etc., of certain international organisations: Article 6ter of Paris Convention, etc.
57.—(1)  This section shall apply to —
(a)the armorial bearings, flags or other emblems; and
(b)the abbreviations and names,
of international intergovernmental organisations of which one or more Convention countries are members.
(2)  A trade mark which consists of or contains any such emblem, abbreviation or name which is protected under the Paris Convention or the TRIPS Agreement shall not be registered without the authorisation of the international organisation concerned, unless it appears to the Registrar that the use of the emblem, abbreviation or name in the manner proposed —
(a)is not such as to suggest to the public that a connection exists between the organisation and the trade mark; or
(b)is not likely to mislead the public as to the existence of a connection between the user and the organisation.
(3)  The provisions of this section as to emblems of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem.
(4)  Where by virtue of this section the authorisation of an international organisation is or would be required for the registration of a trade mark, that organisation is entitled to restrain by injunction any use in the course of trade of the trade mark in Singapore without its authorisation.
(5)  Nothing in this section shall affect the rights of a person whose bona fide use of the trade mark in question began before 23rd February 1995 (when the relevant provisions of the Paris Convention entered into force in relation to Singapore).
[UK Trade Marks Act 1994, s. 58]
Notification under Article 6ter of Paris Convention, etc.
58.—(1)  For the purposes of section 56, state emblems of a Convention country (other than the national flag), and official signs or hallmarks, shall be regarded as protected under the Paris Convention or the TRIPS Agreement only if, or to the extent that —
(a)the country in question has notified Singapore in accordance with Article 6ter(3) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, that it desires to protect that emblem, sign or hallmark;
(b)the notification remains in force; and
(c)Singapore has not objected to it in accordance with Article 6ter(4) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, or any such objection has been withdrawn.
(2)  For the purposes of section 57, the emblems, abbreviations and names of an international organisation shall be regarded as protected under the Paris Convention or the TRIPS Agreement only if, or to the extent that —
(a)the organisation in question has notified Singapore in accordance with Article 6ter(3) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, that it desires to protect that emblem, abbreviation or name;
(b)the notification remains in force; and
(c)Singapore has not objected to it in accordance with Article 6ter(4) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, or any such objection has been withdrawn.
(3)  Notification under Article 6ter(3) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, shall have effect only in relation to applications for registration made more than 2 months after the receipt of the notification.
(4)  The Registrar shall keep and make available for public inspection by any person, at all reasonable hours and free of charge, a list of —
(a)the state emblems and official signs or hallmarks; and
(b)the emblems, abbreviations and names of international organisations,
which are for the time being protected under the Paris Convention or the TRIPS Agreement by virtue of a notification under Article 6ter(3) of that Convention or under that Article as applied by the TRIPS Agreement.
[UK TradeMarksAct1994, s. 59]
Acts of agent or representative: Article 6septies of the Paris Convention, etc.
59.—(1)  Subsections (2) to (6) shall apply where an application for registration of a trade mark is made by a person who is an agent or representative of a person who is the proprietor of the trade mark in a Convention country.
(2)  If the proprietor opposes the application, registration shall be refused.
(3)  If the application (not being so opposed) is granted, the proprietor may —
(a)apply for a declaration of the invalidity of the registration; or
(b)apply for the rectification of the register so as to substitute his name as the proprietor of the registered trade mark.
(4)  The proprietor may (notwithstanding the rights conferred by this Act in relation to a registered trade mark) by injunction restrain any use in the course of trade of the trade mark in Singapore which is not authorised by him.
(5)  Subsections (2), (3) and (4) shall not apply if, or to the extent that, the agent or representative justifies his action.
(6)  An application under subsection (3)(a) or (b) must be made within 3 years of the proprietor becoming aware of the registration.
(7)  No injunction shall be granted under subsection (4) in respect of a use in which the proprietor has acquiesced for a continuous period of 3 years or more.
[UK Trade Marks Act 1994, s. 60]