Trade Marks Act 1998 - Singapore Statutes Online

Absolute grounds for refusal of registration

7.—(1) The following must not be registered:

(a)	signs which do not satisfy the definition of a trade mark in section 2(1);
(b)	trade marks which are devoid of any distinctive character;
(c)	trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; and
(d)	trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

(2) A trade mark must not be refused registration by virtue of subsection (1)(b), (c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

(3) A sign must not be registered as a trade mark if it consists exclusively of —

(a)	the shape which results from the nature of the goods themselves;
(b)	the shape of goods which is necessary to obtain a technical result; or
(c)	the shape which gives substantial value to the goods.

(4) A trade mark must not be registered if it is —

(a)	contrary to public policy or to morality; or
(b)	of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).

(5) A trade mark must not be registered if or to the extent that its use is prohibited in Singapore by any written law or rule of law.

(6) A trade mark must not be registered if or to the extent that the application is made in bad faith.

(7) Despite subsection (2), a trade mark must not be registered if it contains or consists of a geographical indication in respect of a wine or spirit and the trade mark is used or intended to be used in relation to a wine or spirit not originating from the place indicated in the geographical indication.

(8) Subsection (7) applies whether or not the trade mark has, or is accompanied by, an indication of the true geographical origin of the wine or spirit (as the case may be) or an expression such as “kind”, “type”, “style”, “imitation” or the like, and irrespective of the language the geographical indication is expressed in that trade mark.

(9) A trade mark must not be refused registration by virtue of subsection (7) if the application for its registration had been made in good faith, or if it had been used continuously in good faith in the course of trade by the applicant for its registration or the applicant’s predecessor in title, either —

(a)	before 15 January 1999; or
(b)	before the geographical indication in question is protected in its country of origin.

(10) A trade mark must not be refused registration by virtue of subsection (7) if the geographical indication in question —

(a)	has ceased to be protected; or
(b)	has fallen into disuse,

in its country of origin.

(11) Despite subsection (2), a trade mark must not be registered if —

(a)

it contains or consists of a geographical indication which is registered, or in respect of which an application for registration has been made, under the Geographical Indications Act 2014 before the date of the application for registration of the trade mark; and

(b)

the goods for which the trade mark is sought to be registered —

(i)	are identical or similar to the goods for which the geographical indication is registered or for which registration of the geographical indication is sought; and
(ii)	do not originate in the place indicated by the geographical indication. [19/2014]

(12) Subsection (11) applies whether or not the trade mark has, or is accompanied by, an indication of the true geographical origin of the goods, or an expression such as “kind”, “type”, “style”, “imitation” or the like, and irrespective of the language the geographical indication is expressed in that trade mark.

[19/2014]

(13) A trade mark must not be refused registration by virtue of subsection (11) if the application for its registration had been made in good faith, or if it had been used continuously in good faith in the course of trade by the applicant for its registration or the applicant’s predecessor in title, either —

(a)	before the date of the application for registration of the geographical indication in question in Singapore; or
(b)	before the geographical indication in question became protected in its country of origin. [19/2014]

(14) A trade mark must not be registered in the cases specified in sections 56 and 57.

(15) The Minister may make rules to provide that a sign specified in the rules must not be registered as a trade mark, or must not be so registered unless such conditions as may be prescribed are met.

(16) A trade mark must not be registered if or to the extent that the registration contravenes any rule made under subsection (15).

Relative grounds for refusal of registration

8.—(1) A trade mark must not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is sought to be registered are identical with the goods or services for which the earlier trade mark is protected.

(2) A trade mark must not be registered if, because —

(a)	it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or
(b)	it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public.

(3) Where an application for registration of a trade mark is made before 1 July 2004, if the trade mark —

(a)	is identical with or similar to an earlier trade mark; and
(b)	is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,

the later trade mark must not be registered if —

(c)	the earlier trade mark is well known in Singapore;
(d)	use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered would indicate a connection between those goods or services and the proprietor of the earlier trade mark;
(e)	there exists a likelihood of confusion on the part of the public because of such use; and
(f)	the interests of the proprietor of the earlier trade mark are likely to be damaged by such use.

(4) Subject to subsection (5), where an application for registration of a trade mark is made on or after 1 July 2004, if the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark, the later trade mark must not be registered if —

(a)

the earlier trade mark is well known in Singapore; and

(b)

use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered —

(i)

would indicate a connection between those goods or services and the proprietor of the earlier trade mark, and is likely to damage the interests of the proprietor of the earlier trade mark; or

(ii)

if the earlier trade mark is well known to the public at large in Singapore —

(A)	would cause dilution in an unfair manner of the distinctive character of the earlier trade mark; or
(B)	would take unfair advantage of the distinctive character of the earlier trade mark.

(5) A trade mark must not be refused registration by virtue of subsection (4) if the application for the registration of the trade mark was filed before the earlier trade mark became well known in Singapore, unless it is shown that the application was made in bad faith.

(6) In deciding whether any such application was made in bad faith, it is relevant to consider whether the applicant had, at the time the application was made, knowledge of, or reason to know of, the earlier trade mark.

(7) A trade mark must not be registered if, or to the extent that, its use in Singapore is liable to be prevented —

(a)	by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade; or
(b)	by virtue of an earlier right other than those referred to in subsections (1), (2) and (3) or paragraph (a), in particular by virtue of the law of copyright or any law with regard to the protection of designs.

(8) A person entitled under subsection (7) to prevent the use of a trade mark is referred to in this Act as the proprietor of an earlier right in relation to the trade mark.

(9) The Registrar may, in his or her discretion, register a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.

(10) The Registrar may, in his or her discretion, register any trade mark mentioned in subsection (3), (4) or (7) where the proprietor of the earlier trade mark or other earlier right fails to give notice to the Registrar of opposition to the registration in accordance with section 13.

(11) An earlier trade mark that is a registered trade mark whose registration has expired must continue to be taken into account in determining the registrability of the trade mark in question until the date mentioned in subsection (12), unless the Registrar is satisfied that there was no bona fide use of the firstmentioned trade mark during the 2 years immediately preceding that date.

[Act 7 of 2022 wef 26/05/2022]

(12) The date mentioned in subsection (11) is the last date specified in this Act or rules made under this Act on which the registration of the earlier trade mark may be restored or renewed.

[Act 7 of 2022 wef 26/05/2022]

(13) An earlier trade mark that is an international trade mark (Singapore), whose registration in the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol is not renewed, must continue to be taken into account in determining the registrability of the trade mark in question until the date mentioned in subsection (14), unless the Registrar is satisfied that there was no bona fide use of the firstmentioned trade mark during the 2 years immediately preceding that date.

[Act 7 of 2022 wef 26/05/2022]

(14) The date mentioned in subsection (13) is the date the Registrar receives the prescribed notice of non-renewal from the International Bureau.

[Act 7 of 2022 wef 26/05/2022]

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