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Trade Marks (Amendment) Bill

Bill No. 18/2004

Read the first time on 19th May 2004.

An Act to amend the Trade Marks Act (Chapter 332 of the 1999 Revised Edition), and to make consequential amendments to the Criminal Procedure Code (Chapter 68 of the 1985 Revised Edition).

Be it enacted by the President with the advice and consent of the Parliament of Singapore, as follows:

Short title and commencement

1. This Act may be cited as the Trade Marks (Amendment) Act 2004 and shall come into operation on such date as the Minister may, by notification in the Gazette, appoint.

Amendment of section 2

2. Section 2 of the Trade Marks Act (referred to in this Act as the principal Act) is amended —

(a)

by inserting, immediately after the definition of “business” in subsection (1), the following definition:

“ “business identifier” means any sign capable of being represented graphically which is used to identify any business;”;

(b)

by inserting, immediately after the definition of “Court” in subsection (1), the following definition:

“ “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;”;

(c)

by deleting the words “entitled to protection under the Paris Convention or the TRIPS Agreement as” in paragraph (b) of the definition of “earlier trade mark” in subsection (1);

(d)

by deleting the definition of “proprietor” in subsection (1) and substituting the following definition:

“ “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;”;

(e)

by deleting the words “visually perceptible” in the definition of “trade mark” in subsection (1);

(f)

by inserting, immediately after the definition of “TRIPS Agreement” in subsection (1), the following definition:

“ “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,

whether or not that person carries on business, or has any goodwill, in Singapore;”; and

(g)

by deleting subsection (7) and substituting the following subsections:

“(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.

(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.

(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.”.

Amendment of section 3

3. Section 3 of the principal Act is amended —

(a)

by deleting subsection (1) and substituting the following subsection:

“(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.”;

(b)

by deleting the word “predominantly” in subsection (4)(a);

(c)

by inserting, immediately after subsection (4), the following subsections:

“(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.

(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.”; and

(d)

by deleting the section heading and substituting the following section heading:

“Meaning of infringing goods, material or articles and counterfeit goods or trade mark”.

Amendment of section 5

4. Section 5 of the principal Act is amended —

(a)

by deleting subsection (2) and substituting the following subsection:

“(2) The application shall —

(a)

contain a request for the registration of a trade mark;

(b)

state the name and address of the applicant;

(c)

contain a clear representation of the trade mark;

(d)

list the goods or services in relation to which the applicant seeks to register the trade mark; and

(e)

state —

(i)	that the trade mark is being used in the course of trade, by the applicant or with his consent, in relation to those goods or services; or
(ii)	that the applicant has a bona fide intention that the trade mark should be so used.”; and

(b)

by inserting, immediately after subsection (3), the following subsection:

“(4) The date of the application for registration of the trade mark shall be the earliest date on which —

(a)

all the requirements under subsection (2) have been satisfied; and

(b)

all the fees payable under subsection (3) —

(i)	have been paid; or
(ii)	are treated by the Registrar as paid.”.

Amendment of section 8

5. Section 8 of the principal Act is amended —

(a)

by deleting subsection (3) and substituting the following subsections:

“(3) Where an application for registration of a trade mark is made before 1st 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 shall not be registered if —

(i)	the earlier trade mark is well known in Singapore;
(ii)	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;
(iii)	there exists a likelihood of confusion on the part of the public because of such use; and
(iv)	the interests of the proprietor of the earlier trade mark are likely to be damaged by such use.

(3A) Subject to subsection (3B), where an application for registration of a trade mark is made on or after 1st 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 shall 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.

(3B) A trade mark shall not be refused registration by virtue of subsection (3A) 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.

(3C) In deciding whether any such application was made in bad faith, it shall be 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.”; and

(b)

by inserting, immediately after subsection (6), the following subsection:

“(6A) The Registrar may, in his discretion, register any trade mark referred to in subsection (3), (3A) or (4) 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.”.

Amendment of section 10

6. Section 10 of the principal Act is amended —

(a)

by deleting subsections (1), (2) and (3) and substituting the following subsections:

“(1) Subject to subsection (6), where —

(a)	a person has filed an application for the registration of a trade mark in a Convention country in respect of certain goods or services;
(b)	that application is the first application for the registration of the trade mark to be filed in any Convention country in respect of those goods or services (referred to in this section as the first Convention application); and
(c)	within 6 months after the date on which the first Convention application is filed, that person or his successor in title applies under this Act for the registration of the trade mark in respect of all or any of those goods or services,

that person or his successor in title may, when filing the application under this Act, claim a right of priority for the registration of the trade mark in respect of all or any of the goods or services for which registration was sought in the first Convention application.

(2) Where any person claims the right of priority referred to in subsection (1), the person shall have priority from (and including) the date on which the first Convention application was filed.

(3) Where the right of priority referred to in subsection (1) is claimed in respect of a trade mark, the registrability of the trade mark shall not be affected by any use of the trade mark in Singapore in the period between —

(a)	the date the first Convention application was filed; and
(b)	the date the application under this Act was filed.”; and

(b)

by deleting subsection (6) and substituting the following subsections:

“(6) Where a subsequent application concerning the same subject as an earlier application is filed, whether in the same or a different Convention country, and these are the first 2 applications concerning that subject to be filed in any Convention country, the subsequent application shall be considered the first Convention application if, at the date the subsequent application is filed —

(a)	the earlier application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and
(b)	the earlier application has not yet served as a basis for claiming a right of priority.

(6A) For the avoidance of doubt, where subsection (6) applies —

(a)	the date on which the subsequent application was filed, rather than that of the earlier application, shall be considered the starting date of the period of priority under subsection (2); and
(b)	the earlier application may not thereafter serve as a basis for claiming a right of priority.”.

Amendment of section 15

7. Section 15 of the principal Act is amended —

(a)	by deleting the words “Subject to subsections (3) and (4), a” in subsection (2) and substituting the word “A”; and
(b)	by deleting subsections (3) and (4).

Amendment of section 19

8. Section 19 of the principal Act is amended —

(a)

by deleting the words “prescribed renewal fee” in subsection (1) and substituting the words “fee referred to in subsection (3A) or the fees referred to in subsection (3B), as the case may be”; and

(b)

by deleting subsection (3) and substituting the following subsections:

“(3) A request for renewal shall be made not later than 6 months after the date of expiry of the registration.

(3A) Where the request for renewal is made on or before the date of expiry of the registration, the fee payable shall be the prescribed renewal fee.

(3B) Where the request for renewal is made within the period of 6 months after the date of expiry of the registration, the fees payable shall be the prescribed renewal fee and the prescribed late renewal fee.”.

Amendment of section 23

9. Section 23 of the principal Act is amended —

(a)

by deleting paragraph (a) of subsection (3) and substituting the following paragraph:

“(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 1st 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 1st July 2004, the conditions set out in section 8(3A) apply; or”; and

(b)

by deleting subsection (6) and substituting the following subsections:

“(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) shall 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 his 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.

(6A) 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 (3A) apply —

(a)

shall not be made after the expiry of 5 years from 1st 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)

shall 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.

(6B) In deciding whether the registration of the later trade mark was applied for in bad faith, it shall be relevant to consider whether the applicant for the registration of the later trade mark had, at the time his application was made, knowledge of, or reason to know of, the earlier trade mark.”.

Amendment of section 24

10. Section 24 of the principal Act is amended by inserting, immediately after subsection (2), the following subsection:

“(3) For the purposes of subsection (1), in deciding whether the registration of the later trade mark was applied for in bad faith, it shall be relevant to consider whether the applicant for the registration of the later trade mark had, at the time his application was made, knowledge of, or reason to know of, the earlier trade mark or other right.”.

Amendment of section 27

11. Section 27 of the principal Act is amended —

(a)	by deleting the words “, sections 28 and 29” in subsection (4) and substituting the words “and sections 28, 29 and 31”;
(b)	by deleting the words “commercial document” in subsection (4)(d) and substituting the words “commercial document, including any such document in any medium”; and
(c)	by deleting subsection (6).

Amendment of section 28

12. Section 28 of the principal Act is amended by inserting, immediately after subsection (3), the following subsection:

“(4) Notwithstanding 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.”.

Amendment of section 29

13. Section 29 of the principal Act is amended by deleting subsection (2) and substituting the following subsection:

“(2) Subsection (1) shall 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.”.

Amendment of section 31

14. Section 31 of the principal Act is amended by deleting subsection (2) and substituting the following subsections:

“(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).

(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 plaintiff shall be entitled, at his 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 plaintiff proves that his actual loss from such infringement exceeds $1 million.

(6) In awarding statutory damages under subsection (5)(c), the Court shall have regard to —

(a)	the flagrancy of the infringement of the registered trade mark;
(b)	any loss that the plaintiff has suffered or is likely to suffer by reason of the infringement;
(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.”.

Amendment of section 32

15. Section 32 of the principal Act is amended —

(a)

by deleting the word “Where” in subsection (1) and substituting the words “Subject to subsection (3), where”; and

(b)

by inserting, immediately after subsection (2), the following subsection:

“(3) Where a person who is found to have infringed a registered trade mark has in his possession, custody or control any counterfeit goods, the Court shall order that the counterfeit goods be delivered up to such person as the Court may direct for destruction if —

(a)	the plaintiff applies to the Court for such an order; and
(b)	the Court is of the view that there are no exceptional circumstances which justify the refusal of such an order.”.

Amendment of section 34

16. Section 34 of the principal Act is amended —

(a)

by inserting, immediately after subsection (2), the following subsection:

“(2A) Notwithstanding subsection (2), where the infringing goods are counterfeit goods, the Court shall order that the goods be destroyed if —

(a)	the plaintiff applies to the Court for such an order; and
(b)	the Court is of the view that there are no exceptional circumstances which justify the refusal of such an order.”; and

(b)

by deleting the word “Where” in subsection (6) and substituting the words “Subject to subsection (2A), where”.

Amendment of section 39

17. Section 39 of the principal Act is amended by deleting subsections (3) and (4) and substituting the following subsections:

“(3) Until an application has been made for the registration of the prescribed particulars of a registrable transaction referred to in subsection (2)(a), (c), (d) or (e), the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of the transaction.

(4) A person who becomes the proprietor of a registered trade mark by virtue of any registrable transaction referred to in subsection (2)(a), (c), (d) or (e) is not entitled to damages, an account of profits or statutory damages under section 31(5)(c) in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the date of the application for the registration of the prescribed particulars of the transaction.

(4A) For the avoidance of doubt, subsections (3) and (4) shall not apply to any registrable transaction relating to —

(a)	a licence under a registered trade mark; or
(b)	any right in or under the licence.”.

Amendment of section 42

18. Section 42 of the principal Act is amended by deleting subsection (5) and substituting the following subsections:

“(5) Subject to subsection (5B), a licence to use a registered trade mark is binding on every successor in title to the grantor’s interest —

(a)	except any person who, in good faith and without any notice (actual or constructive) of the licence, has given valuable consideration for the interest in the registered trade mark; or
(b)	unless the licence provides otherwise,

and any reference in this Act to doing anything with, or without, the consent of the proprietor of a registered trade mark shall be construed accordingly.

(5A) Every person shall be deemed to have notice of a licence if the prescribed particulars of the grant of the licence are entered in the register under section 39(1).

(5B) Where an application under section 39(1) is made before 1st July 2004 to register the prescribed particulars of the grant of a licence, then, unless the licence provides otherwise, the licence shall be binding on every successor in title to the grantor’s interest.”.

Amendment of section 43

19. Section 43 of the principal Act is amended by deleting subsection (2) and substituting the following subsection:

“(2) Section 42 shall apply, with the necessary modifications, to an exclusive licence.”.

Amendment of section 45

20. Section 45 of the principal Act is amended —

(a)

by deleting subsections (5) and (6) and substituting the following subsection:

“(5) Where the proprietor or an exclusive licensee of a registered trade mark brings proceedings for any infringement of the trade mark in respect of which the proprietor and the exclusive licensee have concurrent rights of action, the proprietor or the exclusive licensee, as the case may be, need not —

(a)	join the other as a plaintiff; or
(b)	add the other as a defendant,

unless the Court otherwise orders.”; and

(b)

by deleting subsection (8) and substituting the following subsection:

“(8) Where an action for infringement of a registered trade mark is brought which relates wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action —

(a)

the Court shall, when assessing damages, ordering an account of profits or awarding statutory damages under section 31(5)(c), take into account —

(i)	the terms of the licence; and
(ii)	any pecuniary remedy already awarded or available to either of them in respect of the infringement; and

(b)

subject to any agreement between them, the Court may —

(i)	assess the damages or award the statutory damages due to each of them according to the losses suffered or likely to be suffered by him as a result of the infringement; or
(ii)	apportion between them the profits due to each of them according to what is attributable to the infringement of his rights.”.

Amendment of section 47

21. Section 47 of the principal Act is amended by deleting subsections (2) to (5) and substituting the following subsections:

“(2) For the purposes of this section and sections 49, 53 and 53A, a person falsely applies a registered trade mark to goods or services if —

(a)	without the consent of the proprietor of the registered trade mark, the person applies the trade mark or a sign likely to be mistaken for that trade mark to the goods or services; and
(b)	in the case of an application to goods, the goods are not the genuine goods of the proprietor or licensee of the registered trade mark.

(3) For the purposes of subsection (2), a trade mark shall be deemed to be applied to goods or services if it is used in —

(a)	any sign or advertisement; or
(b)	any invoice, wine list, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium,

and the goods are delivered, or services provided, as the case may be, to a person in pursuance of a request or order made by reference to the trade mark as so used.

(4) For the purposes of subsection (2) —

(a)

a sign shall be deemed to be applied to goods if —

(i)	it is applied to the goods themselves; or
(ii)	it is applied to any covering, label, reel or thing in or with which the goods are sold, offered or exposed for sale or had in possession for a purpose of trade or manufacture; and

(b)

a sign shall be deemed to be applied to goods or services if it is used in a manner that is likely to lead persons to believe that it refers to, describes or designates the goods or services.

(5) In subsection (4) —

“covering” includes any stopper, glass, bottle, vessel, box, capsule, case, frame or wrapper;

“label” includes any band or ticket.”.

Amendment of section 49

22. Section 49 of the principal Act is amended by inserting, immediately after the word “sells” in paragraph (b), the words “or offers”.

Amendment of section 52

23. Section 52(2) of the principal Act is amended by inserting, immediately after the word “sells” in paragraph (b), the words “or offers”.

Repeal and re-enactment of section 53 and new section 53A

24. Section 53 of the principal Act is repealed and the following sections substituted therefor:

“Forfeiture and destruction of goods, etc., on conviction

53.—(1) Subject to subsection (2), where any person has been convicted of an offence under any provision of this Part, the court may, where it considers appropriate, order the person to forfeit to the Government all or any —

(a)	goods in relation to which; or
(b)	articles by means of which,

the offence was committed.

(2) Where any person has been convicted of an offence under section 47 or 49 in relation to a registered trade mark, the court shall, unless it is of the view that there are exceptional circumstances for deciding otherwise, order to be forfeited to the Government and destroyed any goods which satisfy all of the following conditions:

(a)

the goods are goods in relation to which —

(i)	the offence was committed; and
(ii)	the trade mark has been falsely applied;

(b)

the goods or their packaging bear the trade mark or sign giving rise to the false application of the trade mark.

(3) Any —

(a)	forfeiture of goods or articles under subsection (1); or
(b)	forfeiture and destruction of goods under subsection (2),

shall be in addition to any penalty or punishment that the court may impose for the offence committed.

Enforcement measures

53A.—(1) Any police officer may arrest without warrant any person who, in any street or public place —

(a)	sells or offers or exposes for sale; or
(b)	has, or is reasonably suspected of having, in his possession for the purpose of trade or manufacture,

any goods to which a registered trade mark is falsely applied.

(2) Any authorised officer may, without a warrant issued under subsection (3) —

(a)

stop, search and board, whether forcibly or otherwise, any conveyance in which he reasonably suspects there are goods to which a registered trade mark has been falsely applied; and

(b)

seize, remove or detain any such goods and anything which appears to him —

(i)	to be or to contain; or
(ii)	to be likely to be or to contain,

evidence of any offence under section 46, 47, 48, 49 or 52.

(3) If information is given upon oath to a court that there is reasonable cause for suspecting that there is in any premises or conveyance —

(a)	any goods which are the subject of an offence under section 46, 47, 48, 49 or 52;
(b)	any material or article which has been used in the commission of an offence under section 46, 47, 48, 49 or 52; or
(c)	any document which is evidence that an offence under section 46, 47, 48, 49 or 52 has been committed,

the court may issue, either unconditionally or subject to such conditions as the court thinks fit, a warrant authorising a police officer to enter and search the premises or conveyance for any goods, material, article or document referred to in the warrant, whether specifically or in any general category, and to seize any such goods, material, article or document found at the premises or conveyance.

(4) If any goods, material, article or document has been seized under subsection (3) and —

(a)

in proceedings brought under section 46, 47, 48, 49 or 52, no order is made —

(i)	as to the disposal of the goods, material, article or document; or
(ii)	in the case of any goods or article referred to in section 53, under section 53(1) or (2); or

(b)

no such proceedings are instituted within 6 months of the seizure,

the goods, material, article or document shall be returned to the person in whose possession it was when it was seized or, if it is not reasonably practicable to return it to that person, shall be disposed of in accordance with the law regulating the disposal of lost or unclaimed property in the hands of police authorities.

(5) No action or other legal proceeding shall lie against the Government or any officer or employee thereof for anything which is in good faith done or omitted to be done in the exercise of any power, duty or function under this section.

(6) In this section —

“authorised officer” means —

(a)	a police officer;
(b)	an officer of customs as defined in the Customs Act (Cap. 70);
(c)	an immigration officer as defined in the Immigration Act (Cap. 133); or
(d)	any officer or class or description of officers appointed by the Minister by notification in the Gazette to exercise the powers and perform the duties conferred and imposed on an authorised officer by this section;

“conveyance” includes any vehicle, vessel, train or aircraft in which persons or goods can be carried;

“document” means anything in which information of any description is recorded;

“premises” includes any land, building or structure.”.

Deletion and substitution of sub-heading to Part VII

25. Part VII of the principal Act is amended by deleting the sub-heading immediately before section 55 and substituting the following sub-heading:

“The Paris Convention, the TRIPS Agreement
and well known trade marks: supplementary provisions”.

Repeal and re-enactment of section 55 and new section 55A

26. Section 55 of the principal Act is repealed and the following sections substituted therefor:

“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.

(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.

(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.

(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.

(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.

(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.

(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.

(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.

(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.

(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.

(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).

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.

(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.

(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.”.

Repeal and re-enactment of section 76

27. Section 76 of the principal Act is repealed and the following section substituted therefor:

“Forms and directions of Registrar

76. The Minister may make rules for the publication by the Registrar of —

(a)	the forms to be used for any purpose relating to the registration of a trade mark or any other proceedings before the Registrar under this Act; and
(b)	the practice directions issued by the Registrar.”.

Repeal and re-enactment of section 78

28. Section 78 of the principal Act is repealed and the following section substituted therefor:

“Hours of business and excluded days

78.—(1) The Registrar may issue practice directions to specify —

(a)	the hours of business of the Registry; and
(b)	the days which are to be treated as excluded days.

(2) The Minister may prescribe the effect of doing any business under this Act —

(a)	on any day after the hours of business of the Registry; or
(b)	on any day which is an excluded day.

(3) For the purposes of subsections (1) and (2) —

(a)

different hours of business may be specified for different classes of business;

(b)

different excluded days may be specified for different classes of business; and

(c)

different effects of doing business —

(i)	outside the hours of business of the Registry; or
(ii)	on an excluded day,

may be prescribed for different classes of business.”.

Deletion and substitution of heading to Part X

29. Part X of the principal Act is amended by deleting the Part heading and substituting the following Part heading:

“ASSISTANCE BY BORDER AUTHORITIES”.

Amendment of section 82

30. Section 82 of the principal Act is amended by deleting subsection (1) and substituting the following subsection:

“(1) A person who is the proprietor or a licensee of a registered trade mark may give the Director-General a written notice —

(a)

stating that he is —

(i)	the proprietor of the registered trade mark; or
(ii)	a licensee thereof having the power to give such a notice;

(b)

stating that goods which, in relation to the registered trade mark, are infringing goods are expected to be imported;

(c)

providing sufficient information —

(i)	to identify the goods;
(ii)	to enable the Director-General to ascertain the time when and place where the goods are expected to be imported; and
(iii)	to satisfy the Director-General that the goods are infringing goods; and

(d)

stating that he objects to such importation.”.

New section 93A

31. The principal Act is amended by inserting, immediately after section 93, the following section:

“Detention and examination of counterfeit goods

93A.—(1) Notwithstanding section 82(4), any authorised officer may —

(a)

detain any goods —

(i)	that are imported into, or that are to be exported from, Singapore; and
(ii)	that are not goods in transit, unless the goods are consigned to any person with a commercial or physical presence in Singapore; or

(b)

examine any goods, including goods in transit,

which he reasonably suspects are counterfeit goods in relation to a registered trade mark.

(2) As soon as practicable after goods are detained under subsection (1)(a), the Director-General shall give —

(a)	to the importer, exporter or consignee, as the case may be, of the detained goods; and
(b)	to the proprietor of the registered trade mark,

a written notice identifying the goods, stating that they have been detained and setting out the matters referred to in subsection (3).

(3) The detained goods shall be released to the importer, exporter or consignee, as the case may be, of the goods, unless, within the prescribed period, the proprietor of the registered trade mark —

(a)

in the case of goods that are imported into Singapore and that are not goods in transit —

(i)	gives the Director-General a written notice referred to in section 82(1);
(ii)	submits the documents and information, and pays the fee, referred to in section 82(2) to the Director-General; and
(iii)	deposits with the Director-General the sum of money referred to in section 83(a) or gives the security referred to in section 83(b); or

(b)

in the case of goods that are to be exported from Singapore or goods in transit that are consigned to a person with a commercial or physical presence in Singapore —

(i)

institutes an action for the infringement of his trade mark;

(ii)

serves on the Director-General an order of the Court authorising the further detention of the goods; and

(iii)

deposits with the Director-General a sum of money that, in the opinion of the Director-General, is sufficient to —

(A)	reimburse the Government for any liability or expense it has incurred and is likely to further incur as a result of the detention of the goods; and
(B)	pay such compensation to any person who suffers loss or damage as a result of the detention of the goods as may be ordered by the Court; or

gives security, to the satisfaction of the Director-General, for the reimbursement of the Government for any such liability or expense and the payment of such compensation.

(4) Every order of the Court authorising the further detention of goods under subsection (3)(b)(ii) shall be subject to the condition that the proprietor of the registered trade mark complies with subsection (3)(b)(iii) within the period prescribed under subsection (3).

(5) Where the Court has made an order authorising the further detention of goods under subsection (3)(b) —

(a)

the detained goods shall be taken to such secure place as the Director-General directs; and

(b)

sections 86, 87 and 89 to 93 shall apply, with the necessary modifications, to the further detention of the goods, and for the purposes of such application —

(i)

any reference to the objector shall be read as a reference to the proprietor of the registered trade mark;

(ii)

any reference to the importer shall be read as a reference to the exporter or consignee, as the case may be, of the detained goods;

(iii)

any reference to the seized goods shall be read as a reference to the detained goods;

(iv)

any reference to the seizure of goods shall be read as a reference to the detention or further detention of the goods;

(v)

any reference to the import or importation of goods shall be read —

(A)	in the case of goods that are to be exported from Singapore, as a reference to the export of the goods; or
(B)	in the case of goods in transit that are consigned to a person with a commercial or physical presence in Singapore, as a reference to the import, importation or export, of the goods by the consignee;

(vi)

any reference to infringement action shall be read as a reference to an action for the infringement of the registered trade mark under subsection (3)(b)(i); and

(vii)

any reference to the retention period shall be read as a reference to the prescribed period under subsection (3).”.

Amendment of section 94

32. Section 94(1) of the principal Act is amended by inserting, immediately after the words “seized under section 82”, the words “or detained under section 93A”.

Amendment of section 95

33. Section 95(1) of the principal Act is amended by inserting, immediately after the words “seized under section 82”, the words “or detained under section 93A”.

Amendment of section 97

34. Section 97(1) of the principal Act is amended by inserting, immediately after the words “seized under section 82” wherever they appear, the words “or detained under section 93A”.

Repeal and re-enactment of section 101

35. Section 101 of the principal Act is repealed and the following section substituted therefor:

“Registration to be prima facie evidence

101. In all legal proceedings relating to a registered trade mark or any right thereunder (including proceedings for rectification of the register) —

(a)

the register shall be prima facie evidence of anything contained therein;

(b)

the registration of the prescribed particulars of any registrable transaction under section 39 shall be prima facie evidence of the transaction; and

(c)

the registration of a person as proprietor of a registered trade mark shall be prima facie evidence of —

(i)	the validity of the original registration; and
(ii)	any subsequent assignment or other transmission of the registration.”.

Amendment of Third Schedule

36. Paragraph 11(2) of the Third Schedule to the principal Act is amended by deleting the words “prescribed form” and substituting the words “relevant form published by the Registrar under section 76 of this Act”.

Consequential amendments to Criminal Procedure Code

37. Section 62 of the Criminal Procedure Code (Cap. 68) is amended —

(a)

by deleting the words “section 46, 47, 48, 49 or 52 of the Trade Marks Act 1998 or” in paragraphs (a), (iii) and (v);

(b)

by deleting the words “or forged or counterfeited trade marks” in paragraphs (b) and (c);

(c)

by deleting the words “stamps, coins or trade marks” in paragraph (iii) and substituting the words “stamps or coins”;

(d)

by deleting the words “trade marks,” in paragraphs (iv) and (v);

(e)

by deleting the words “stamps, coins, trade marks to” in paragraph (v) and substituting the words “stamps or coins to”; and

(f)

by deleting the marginal note and inserting the following section heading:

“Search of house suspected to contain stolen property, forged documents, etc.”.

Savings and transitional provisions

38.—(1) Section 4 shall only apply to an application for registration of a trade mark that is made on or after the date of commencement of this Act, and section 5 of the principal Act in force immediately before that date shall continue to apply to an application for registration of a trade mark that is made before that date.

(2) Section 7 shall only apply to a trade mark with a date of application for registration that is on or after the date of commencement of this Act, and section 15 of the principal Act in force immediately before that date shall continue to apply to any trade mark with a date of application for registration that is before that date.

(3) Section 8 shall only apply to the renewal of registration of a trade mark if such renewal falls due on or after the date of commencement of this Act, and section 19 of the principal Act in force immediately before that date shall continue to apply to any renewal which falls due before that date.

(4) Sections 11, 12 and 13 shall only apply in relation to a registered trade mark as from the date of commencement of this Act, and, subject to paragraph 4 of the Third Schedule to the principal Act, sections 27, 28 and 29 of the principal Act in force immediately before that date shall continue to apply in relation to any infringement of the registered trade mark that was committed before that date.

(5) Section 14 shall only apply in relation to any infringement of a registered trade mark that is committed after the date of commencement of this Act, and, subject to paragraph 4 of the Third Schedule to the principal Act, section 31 of the principal Act in force immediately before that date shall continue to apply in relation to any infringement of the registered trade mark that was committed before that date.

(6) Sections 15 and 16 shall apply to all counterfeit goods, whether made before, on or after the date of commencement of this Act.

(7) Section 20 shall only apply to proceedings commenced in the Court on or after the date of commencement of this Act, and section 45 of the principal Act in force immediately before that date shall continue to apply in relation to any proceedings commenced in the Court before that date.

(8) Section 26 shall only apply in relation to a well known trade mark as from the date of commencement of this Act, and section 55 of the principal Act in force immediately before that date shall continue to apply in relation to any use before that date —

(a)	in Singapore in the course of trade; and
(b)	without the consent of the proprietor of the well known trade mark,

of a trade mark which, or the essential part of which, is identical with or similar to the well known trade mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.

(9) The Minister may, by order published in the Gazette, make such further transitional, savings and other consequential provisions as he may consider necessary or expedient.