Trade Marks Act 1998 - Singapore Statutes Online

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]

Grounds for invalidity of registration

23.—(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 7.

(2) Where the registered trade mark was registered in breach of section 7 in that it is a trade mark mentioned in subsection (1)(b), (c) or (d) of that section, it must not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

(3) The registration of a trade mark may be declared invalid on the ground —

(a)

that there is an earlier trade mark in relation to which —

(i)	the conditions set out in section 8(1) or (2) apply;
(ii)	where the trade mark has been registered pursuant to an application for registration of the trade mark made before 1 July 2004 — the conditions set out in section 8(3) apply; or
(iii)	where the trade mark has been registered pursuant to an application for registration of the trade mark made on or after 1 July 2004 — the conditions set out in section 8(4) apply; or

(b)

that there is an earlier right in relation to which the condition set out in section 8(7) is satisfied,

unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.

(4) The registration of a trade mark may be declared invalid on the ground of fraud in the registration or that the registration was obtained by misrepresentation.

(5) An application for a declaration of invalidity may be made by any person, and may be made either to the Registrar or to the Court, except that —

(a)	if proceedings concerning the trade mark in question are pending in the Court — the application must be made to the Court; and
(b)	if in any other case the application is made to the Registrar — the Registrar may at any stage of the proceedings refer the application to the Court.

(6) An application for a declaration of invalidity of the registration of a trade mark on the ground that it was in breach of section 7(7) must not be made after the expiry of 5 years from —

(a)	the date of completion of the registration procedure; or
(b)	the date on which use of the trade mark by the person who applied for its registration or the person’s predecessor in title has become generally known in Singapore,

whichever is the earlier, unless the applicant shows that the registration of the trade mark was applied for in bad faith.

(7) An application for a declaration of invalidity of the registration of a trade mark on the ground that there is an earlier trade mark in relation to which the conditions set out in section 8(3) or (4) apply —

(a)

must not be made after the expiry of 5 years from 1 July 2004 or the date of completion of the registration procedure, whichever is the later, unless the applicant for the declaration shows that —

(i)	the registration of the later trade mark was applied for in bad faith; or
(ii)	the later trade mark was never used; and

(b)

must not be granted if the registration of the later trade mark was applied for before the earlier trade mark became well known in Singapore, unless the applicant for the declaration shows that the registration of the later trade mark was applied for in bad faith.

(8) In deciding whether the registration of the later trade mark was applied for in bad faith, it is relevant to consider whether the applicant for the registration of the later trade mark had, at the time the applicant’s application was made, knowledge of, or reason to know of, the earlier trade mark.

(9) Where the ground of invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark must be declared invalid as regards those goods or services only.

(10) Where the registration of a trade mark is declared invalid to any extent, the registration is to that extent deemed never to have been made, but this does not affect transactions past and closed.

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