Trade Marks (Amendment) Bill

Bill No. 30/1990

Read the first time on 9th November 1990.
An Act to amend the Trade Marks Act (Chapter 332 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.—(1)  This Act may be cited as the Trade Marks (Amendment) Act 1990 and shall come into operation on such date as the Minister may, by notification in the Gazette, appoint.
(2)  The Minister may appoint different dates for the coming into operation of the different provisions of this Act.
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 deleting the definition of “limitations” and substituting the following definition:
“ “limitations” means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor of the trade mark, including limitations of that right as to mode of use, or as to use in relation to —
(a)goods to be sold, or otherwise traded in, within Singapore;
(b)goods to be exported to any market outside Singapore;
(c)services for use or available for acceptance within Singapore; or
(d)services for use in any place outside Singapore;”;
(b)by inserting, immediately after the definition of “mark”, the following definition:
“ “permitted use” has the meaning assigned to it by section 30(2);”;
(c)by inserting, immediately after the definition of “prescribed”, the following definition:
“ “provision”, in relation to services, means their provision for money or money’s worth;”;
(d)by inserting, immediately after the definition of “register”, the following definition:
“ “registered proprietor”, in relation to a trade mark, means the person for the time being entered in the register as proprietor of the trade mark;”;
(e)by deleting the definitions of “Registrar” and “trade mark” and substituting the following definitions:
“ “Registrar” means the Registrar of Trade Marks and includes any Deputy Registrar of Trade Marks holding office under this Act;
“Registry” means the Registry of Trade Marks established under this Act;
“the expiration of the last registration”, in relation to a registered trade mark, means the date of expiration of the original registration of the trade mark or of the last renewal of registration, as the case may be;
“trade mark” means —
(a)except in relation to a defensive or a certification trade mark, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate, a connection in the course of trade between the goods or services and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person;
(b)in relation to a defensive trade mark, a mark registered under section 41; and
(c)in relation to a certification trade mark, a mark registered under section 68;”; and
(f)by renumbering the section as subsection (1) of that section, and by inserting immediately thereafter the following subsections:
“(2)  References in this Act to —
(a)the use of a trade mark shall be construed as references to the use of a printed or other visual representation of the mark;
(b)the use of a trade mark in relation to goods shall be construed as references to the use of the mark upon, or in physical or other relation to, goods; and
(c)the use of a trade mark in relation to services shall be construed as references to the use of the mark as or as part of any statement about the availability or performance of services or otherwise in relation to services.
(3)  For the purposes of this Act, goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business, and a description of goods and a description of services are associated with each other if it is likely that the description of goods might be sold or otherwise traded in and the description of services might be provided by the same business.
(4)  References in this Act to a near resemblances of marks are references to a resemblance so near as to be likely to deceive or cause confusion.”.
Repeal and re-enactment of section 3
3.  Section 3 of the principal Act is repealed and the following section substituted therefor:
“Registrar of Trade Marks and other officers
3.—(1)  For the purposes of this Act, there shall be an office which shall be known as the Registry of Trade Marks.
(2)  There shall be a Registrar of Trade Marks who shall have the chief control of the Registry of Trade Marks.
(3)  There shall be one or more Deputy Registrars of Trade Marks who shall, subject to the control of the Registrar, have all the powers and functions of the Registrar under this Act, other than the powers of the Registrar under subsection (5).
(4)  There shall be one or more Assistant Registrars of Trade Marks.
(5)  The Registrar may, in relation to a particular matter or class of matters, by writing under his hand, delegate all or any of his powers or functions under this Act (except this power of delegation) to an Assistant Registrar of Trade Marks so that the delegated powers and functions may be exercised by the delegate with respect to the matter or class of matters specified in the instrument of delegation.
(6)  A delegation under subsection (5) is revocable at will and no delegation prevents the exercise of a power or function by the Registrar or by any Deputy Registrar of Trade Marks.
(7)  The Registrar shall have a seal of such device as may be approved by the Minister.
(8)  Impressions of such seal shall be judicially noticed and admitted in evidence.
(9)  The Registrar and all other officers under this section shall be appointed by the Minister.”.
Amendment of section 4
4.  Section 4 of the principal Act is amended —
(a)by inserting, immediately after the word “with” in the third line, the words “the dates of their registration,”; and
(b)by renumbering the section as subsection (1) of that section, and by inserting immediately thereafter the following subsection:
“(2)  The Registrar need not keep the register in documentary form.”.
Repeal and re-enactment of section 7
5.  Section 7 of the principal Act is repealed and the following section substituted therefor:
“Inspection of and extract from register
7.—(1)  The register shall at all convenient times be open to the inspection of the public, subject to such rules as may be prescribed.
(2)  In relation to any portion of the register kept otherwise than in documentary form, the right of inspection conferred by subsection (1) is a right to inspect the material on the register.
(3)  Any person who applies for a certified copy of an entry in the register or a certified extract from the register shall be entitled to obtain such a copy or extract on payment of the prescribed fee; and any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of the prescribed fee.
(4)  In relation to any portion of the register kept otherwise than in documentary form, the right to a copy or extract conferred by subsection (3) is a right to a copy or extract in a form in which it can be taken away.
(5)  In this section, “certified copy” and “certified extract” mean a copy and extract certified by the Registrar and sealed with the seal of the Registrar.”.
Repeal and re-enactment of section 9
6.  Section 9 of the principal Act is repealed and the following section substituted therefor:
“Particular goods or services
9.—(1)  A trade mark shall be registered in respect of all or any of the goods or services comprised in a particular class of goods or services.
(2)  Any question arising as to the class within which any goods or services fall shall be determined by the Registrar, whose decision shall be final.”.
Amendment of section 10
7.  Section 10 of the principal Act is amended —
(a)by deleting subsection (2) and substituting the following subsection:
“(2)  For the purposes of this section, a trade mark is distinctive of the goods or services of a person if it is adapted to distinguish goods or services with which that person is or may be connected in the course of trade from goods or services in respect of which no such connection subsists, either generally or, where the trade mark is sought to be registered or is registered subject to conditions or limitations, in relation to use subject to those conditions or limitations.”; and
(b)by deleting the colon at the end of subsection (3)(b) and substituting a full-stop, and by deleting the proviso.
Repeal and re-enactment of section 11
8.  Section 11 of the principal Act is repealed and the following section substituted therefor:
“Trade marks registrable in Part B
11.—(1)  A trade mark is registrable in Part B of the register if it is capable, in relation to the goods or services in respect of which it is registered or sought to be registered, of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services in respect of which no such connection subsists either generally or, where the trade mark is sought to be registered or is registered subject to conditions or limitations, in relation to use subject to those conditions or limitations.
(2)  In determining whether a trade mark is capable of distinguishing as aforesaid, the Registrar or the court may have regard to the extent to which —
(a)the trade mark is inherently capable of distinguishing as aforesaid; and
(b)by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid.
(3)  A trade mark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trade mark or any part or parts thereof.”.
Repeal and re-enactment of section 12
9.  Section 12 of the principal Act is repealed and the following section substituted therefor:
“Application for registration
12.—(1)  Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner for registration in Part A or B of the register.
(2)  Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such conditions, amendments, modifications or limitations, as he may think right to impose.
(3)  In the case of a refusal or conditional acceptance of a trade mark, the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving at it, and the decision shall be subject to appeal to the court.
(4)  An appeal under this section shall be made in the prescribed manner, and on the appeal the court shall, if required, hear the applicant and the Registrar, and shall make an order determining whether, and subject to what conditions, amendments or modifications, if any, or to what limitations, if any, the application is to be accepted.
(5)  Appeals under this section shall be heard on the materials so stated by the Registrar to have been used by him in arriving at his decision, and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the Registrar, other than those stated by him, except by leave of the court. Where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of costs on giving notice in the prescribed manner.
(6)  The Registrar or the court, as the case may be, may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon such terms as the Registrar or the court may think fit.
(7)  The Registrar may refuse any amendment of an application under this section if the amendment would substantially affect the identity of the trade mark as specified in the application before amendment.
(8)  An application for the registration of a trade mark in respect of any goods or services shall not be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark —
(a)if the Registrar is satisfied that a body corporate is about to be constituted and that the applicant intends to assign the trade mark to the corporation with a view to the use thereof in relation to those goods or services by the corporation; or
(b)if the application is accompanied by an application for the registration of a person as a registered user of the trade mark, and the Registrar is satisfied that the proprietor intends it to be used by that person in relation to those goods or services and the Registrar is also satisfied that that person will be registered as a registered user thereof immediately after registration of the trade mark.
(9)  The Registrar may, as a condition of the exercise of the power conferred by subsection (8) in favour of the applicant who relies on intention to assign to a corporation as aforesaid, require him to give security for the costs of any proceedings before him relative to any opposition, and in default of such security being given may treat the application as abandoned.
(10)  Where a trade mark is registered in respect of any goods or services under the power conferred by subsection (8) in the name of an applicant who relies on intention to assign to a corporation as aforesaid, then, unless within a period of 6 months the corporation has been registered as the proprietor of the trade mark in respect of those goods or services, the registration shall cease to have effect in respect thereof at the expiration of that period, and the Registrar shall amend the register accordingly.
(11)  Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others to use the trade mark except —
(a)on behalf of both or all of them; or
(b)in relation to goods or services with which both or all of them are connected in the course of trade,
those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights of those persons to the use of the trade mark as if those rights were rights of a single person.
(12)  Subject to subsection (11), nothing in this Act authorises the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors of the trade mark.
(13)  If a person who is a party to a proceeding under this Act (not being a proceeding in a court) dies pending the proceeding, the Registrar may, on request, and on proof to his satisfaction of the transmission of the interest of the deceased person, substitute in the proceeding his successor in interest in his place, or, if the Registrar is of the opinion that the interest of the deceased person is sufficiently represented by the surviving parties, permit the proceeding to continue without the substitution of his successor in interest.
(14)  Every application under this Act shall be accompanied by such documents as may be required under the rules or by the Registrar.”.
Amendment of section 15
10.  Section 15 of the principal Act is amended by deleting subsection (2).
Repeal and re-enactment of section 16
11.  Section 16 of the principal Act is repealed and the following section substituted therefor:
“Words used as name or description of an article, substance or service
16.—(1)  Subject to this section, the registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of a word or words which the trade mark contains, or of which it consists, as the name or description of an article, substance or service.
(2)  Subsection (3) shall have effect where —
(a)there is a well-known and established use of the word or words as the name or description of the article, substance or service by a person or persons carrying on a trade in that article, substance or service, not being used in relation to goods or services connected in the course of trade with the proprietor or a registered user of the trade mark or, in the case of a certification trade mark, in relation to goods or services certified by the proprietor; or
(b)the article or substance was formerly manufactured under a patent or the service formerly provided was a patented process, a period of two years or more after the cesser of the patent has elapsed, and the word is the only practicable name or description of the article, substance or service.
(3)  Where the facts mentioned in subsection (2)(a) or (b) are proved with respect to any word or words, then —
(a)if the trade mark consists solely of that word or those words, the registration of the trade mark so far as regards registration in respect of the article or substance or of any goods of the same description, or of the services or of any services of the same description, as the case may require, shall be deemed for the purposes of section 39 to be an entry wrongly remaining on the register;
(b)if the trade mark contains that word or those words and other matter, the court or the Registrar, in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance or any goods of the same description, or of the services or of any services of the same description, may, in the case of a decision in favour of the trade mark remaining on the register, require as a condition that the registered proprietor shall disclaim any right to the exclusive use of that word or those words in relation to that article or substance or any goods of the same description, or to the services or to any services of the same description, as the case may be, so however, that no such disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.
(4)  For the purposes of any other legal proceedings relating to a trade mark —
(a)if the trade mark consists solely of that word or those words, all rights of the proprietor to the exclusive use of the trade mark; or
(b)if the trade mark contains that word or those words and other matter, all rights of the proprietor to the exclusive use of that word or those words,
in relation to the article or substance or to any goods of the same description, or to the services or to any services of the same description, as the case requires, whether under the common law or by registration, shall be deemed to have ceased on the date at which the use mentioned in subsection (2)(a) first became well-known and established, or at the expiration of the period of two years mentioned in subsection (2)(b).
(5)  No word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as trade mark used in relation to goods in respect of a chemical substance or preparation.
(6)  Subsection (5) shall not have effect in relation to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.”.
Repeal and re-enactment of section 17
12.  Section 17 of the principal Act is repealed and the following section substituted therefor:
“Recognition of agents
17.  Where by this Act any act has to be done by or to any person in connection with a trade mark or proposed trade mark or any procedure relating thereto, the act may, under and in accordance with the rules, be done by or to an agent of that person duly authorised in the prescribed manner.”.
Amendment of section 19
13.  Section 19 of the principal Act is amended —
(a)by deleting subsection (4) and substituting the following subsection:
“(4)  If the applicant sends such a counter-statement, the Registrar shall furnish a copy thereof to the person giving notice of opposition, and shall after hearing the parties, if so required and considering the evidence, decide whether —
(a)to refuse to register the trade mark;
(b)to register the trade mark subject to such conditions or limitations as he thinks fit;
(c)to register the trade mark without conditions or limitations; or
(d)to permit the trade mark proposed to be registered to be modified in any manner not substantially affecting the identity of the trade mark but in such case the trade mark as so modified shall be advertised in the prescribed manner before being registered.”;
(b)by inserting, immediately after the word “Singapore,” in the fourth line of subsection (10), the words “the Registrar or”; and
(c)by inserting, immediately after the word “before” in the fifth line of subsection (10), the words “him or”.
Repeal and re-enactment of section 21
14.  Section 21 of the principal Act is repealed and the following section substituted therefor:
“Date of registration
21.—(1)  When an application for registration of a trade mark in Part A or B of the register has been accepted and has not been opposed, and the time for opposition has expired, or having been opposed the opposition has been decided in favour of the applicant, the Registrar shall, subject to subsection (2), register the trade mark in Part A or B, as the case may be, and the trade mark when registered shall be registered as of the date of the application for registration and that date shall be deemed for the purposes of this Act to be the date of registration.
(2)  Where, after the acceptance of an application for registration of a trade mark but before the registration of the trade mark, the Registrar is satisfied —
(a)that the application has been accepted in error; or
(b)that, in the special circumstances of the case, the trade mark should not be registered, or should be registered subject to conditions or limitations, or to additional or different conditions or limitations,
the Registrar may withdraw the acceptance and proceed as if the application had not been accepted.”.
Repeal and re-enactment of sections 23, 24 and 25
15.  Sections 23, 24 and 25 of the principal Act are repealed and the following sections substituted therefor:
“Identical trade marks
23.—(1)  Except as provided by section 25, no trade mark shall be registered in respect of any goods or description of goods that is identical with or nearly resembles a trade mark belonging to a different proprietor and already on the register in respect of —
(a)the same goods;
(b)the same description of goods; or
(c)services or a description of services which are associated with those goods or goods of that description.
(2)  Except as provided by section 25, no trade mark shall be registered in respect of any services or description of services that is identical with or nearly resembles a trade mark belonging to a different proprietor and already on the register in respect of —
(a)the same services;
(b)the same description of services; or
(c)goods or a description of goods which are associated with those services or services of that description.
Rival claims to identical trade marks
24.  Where separate applications are made by different persons to be registered as proprietors respectively of trade marks that are identical or nearly resemble each other in respect of —
(a)the same goods or services;
(b)the same description of goods or services; or
(c)goods and services or descriptions of goods and services which are associated with each other,
the Registrar may refuse to register any of them until their rights have been determined by the court, or have been settled by agreement in a manner approved by him or, on an appeal, by the court.
Concurrent use
25.  In case of honest concurrent use, or of other special circumstances which in the opinion of the court or the Registrar make it proper to do so, the court or the Registrar, as the case may be, may permit the registration by more than one proprietor, in respect of —
(a)the same goods or services;
(b)the same description of goods or services; or
(c)goods and services or descriptions of goods and services which are associated with each other,
of trade marks that are identical or nearly resemble each other, subject to such conditions and limitations as the court or the Registrar, as the case may be, may think it right to impose.”.
Amendment of section 26
16.  Section 26 of the principal Act is amended by deleting subsection (1) and substituting the following subsection:
“(1)  Where a trade mark that is registered, or is the subject of an application for registration, in respect of any goods or services is identical with another trade mark that is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of —
(a)the same goods or services;
(b)the same description of goods or services; or
(c)goods and services or description of goods and services which are associated with each other,
or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may at any time require that the trade marks shall be entered on the register as associated trade marks.”.
Repeal and re-enactment of section 28
17.  Section 28 of the principal Act is repealed and the following section substituted therefor:
“Series of trade marks
28.—(1)  Where a person who claims to be the proprietor of several trade marks for the same goods, for goods of the same description within a single class, for the same services or for services of the same description within a single class, seeks to register those trade marks and the trade marks, although they resemble each other in material particulars, differ in respect of —
(a)statements or representations as to the goods or services in respect of which the trade marks are used or proposed to be used;
(b)statements or representations as to number, price, quality or names of places;
(c)other matter which is not distinctive and does not substantially affect the identity of the trade marks; or
(d)colour,
or in respect of any two or more of those matters, the trade marks may be registered as a series in one registration.
(2)  All the trade marks in a series of trade marks so registered shall be deemed to be, and shall be registered as, associated trade marks.”.
Repeal and re-enactment of section 30
18.  Section 30 of the principal Act is repealed and the following section substituted therefor:
“Registered users
30.—(1)  Subject to this section, a person other than the proprietor of a trade mark may be registered as a registered user thereof in respect of all or any of the goods or services in respect of which it is registered (otherwise than as a defensive trade mark) and either with or without conditions or restrictions.
(2)  The use of a trade mark by a registered user thereof in relation to goods or services with which he is connected in the course of trade and in respect of which for the time being the trade mark remains registered and he is registered as a registered user, being use such as to comply with any conditions or restrictions to which his registration is subject, is referred to in this Act as the “permitted use” thereof.
(3)  The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor, for the purposes of section 40 and for any other purpose for which such use is material under this Act or at common law.
(4)  Subject to any agreement subsisting between the parties, a registered user of a trade mark shall be entitled to call upon the proprietor thereof to take proceedings to prevent infringement thereof, and, if the proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant. A proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
(5)  Where it is proposed that a person should be registered as a registered user of a trade mark, the proprietor shall apply in writing to the Registrar in the prescribed manner and shall furnish the following particulars:
(a)the identity of the trade mark;
(b)the name and address of the user;
(c)the goods or services to which the user agreement applies;
(d)the particulars showing the degree of control by the proprietor over the permitted use;
(e)any restrictions on the use of the trade mark by the user; and
(f)the length of permitted use, and, if for a period, the duration and the date of termination of the user agreement thereof.
(6)  When the requirements of subsection (5) have been complied with, if the Registrar, after considering the information furnished to him under that subsection, is satisfied that in all the circumstances the use of the trade mark by the proposed registered user, subject to any conditions or restrictions which the Registrar thinks proper, would not be contrary to the public interest, the Registrar may register the proposed registered user as a registered user in respect of the goods or services as to which he is so satisfied subject as aforesaid.
(7)  The Registrar may refuse an application under this section if it appears to him that the grant thereof would tend to facilitate trafficking in a trade mark.
(8)  The proprietor of a trade mark shall maintain control over the use of the trade mark and the quality of the goods or services provided by the registered user.
(9)  Without prejudice to section 39, the registration of a person as a registered user —
(a)may be varied by the Registrar as regards the goods or services in respect of which, or any conditions or restrictions subject to which, it has effect, on the application in writing in the prescribed manner of the registered proprietor of the trade mark to which the registration relates;
(b)may be cancelled by the Registrar on the application in writing in the prescribed manner of the registered proprietor, registered user or assignee of the trade mark; or
(c)may be cancelled by the Registrar on the application in writing in the prescribed manner of any person on any of the following grounds:
(i)that the registered user has used the trade mark otherwise than by way of the permitted use, or in such a way as to cause, or to be likely to cause, deception or confusion;
(ii)that the proprietor misrepresented, or failed to disclose, some fact material to the application for the registration, or that the circumstances have materially changed since the date of the registration;
(iii)that the registration ought not to have been effected having regard to the rights vested in the applicant by virtue of a contract in the performance of which he is interested.
(10)  The Registrar may at any time cancel the registration of a person as a registered user of a trade mark in respect of any goods or services in respect of which the trade mark is no longer registered.
(11)  Any decision of the Registrar under this section shall be subject to appeal to the court.
(12)  Nothing in this section shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof.”.
Amendment of section 32
19.  Section 32 of the principal Act is amended by deleting the words “7 years” and substituting the words “10 years”.
Repeal and re-enactment of section 34
20.  Section 34 of the principal Act is repealed and the following section substituted therefor:
“Renewal of registration
34.  The Registrar shall, on application made by the registered proprietor of a trade mark within the prescribed period, renew the registration of the trade mark for a period of 10 years from the expiration of the last registration of the trade mark.”.
New section 35A
21.  The principal Act is amended by inserting, immediately after section 35, the following section:
“Restoration of trade mark removed for non-payment of renewal fee
35A.—(1)  Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar may, within 12 months from the date of expiration of the registration of the trade mark, if satisfied that it is just to do so, restore the trade mark to the register, and renew the registration of the trade mark, either generally or subject to such conditions or limitations as he sees fit to impose, for a period of 10 years from the expiration of the last registration.
(2)  Section 78 shall not apply in relation to this section.”.
Amendment of section 36
22.  Section 36 of the principal Act is amended —
(a)by deleting the words “date of the removal” in the fourth and fifth lines of subsection (1) and substituting the words “expiration of the last registration”; and
(b)by deleting paragraph (a) of subsection (2) and substituting the following paragraph:
“(a)that there has been no bona fide use of the trade mark during the two years immediately preceding the expiration of the last registration; or”.
Amendment of section 39
23.  Section 39 of the principal Act is amended by inserting, immediately after subsection (2), the following subsection:
“(3)  On application by any person aggrieved to the court, or, at the option of the applicant and subject to section 61, to the Registrar, or on application by the Registrar to the court, the court or the Registrar, as the case may be, may make such order as the court or the Registrar thinks fit for expunging or varying the registration of a trade mark on the ground of any contravention of, or failure to observe, a condition entered on the register in relation thereto.”.
Amendment of section 40
24.  Section 40 of the principal Act is amended —
(a)by deleting the words “section 11(7)” in the fifth line of subsection (1)(a) and substituting the words “section 12(8)”;
(b)by deleting the proviso to subsection (1) and substituting the following proviso:
“Provided that (except where the applicant has been permitted under section 25 to register an identical or nearly resembling trade mark in respect of the goods or services in question or where the court is of opinion that he might properly be permitted so to register such a trade mark) the court may refuse an application made under paragraph (a) or (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any registered proprietor thereof for the time being in relation to goods or services in respect of which the trade mark is registered, being —
(i)where the application relates to goods, goods of the same description as those goods or services that are associated with those goods; or
(ii)where the application relates to services, services of the same description as those services or goods that are associated with those services.”;
(c)by inserting, immediately after subsection (2), the following subsection:
“(2A)  Where in relation to any services in respect of which a trade mark is registered —
(a)the matters referred to in subsection (1)(b) are shown so far as regards non-use of the trade mark in relation to services for use or available for acceptance in Singapore, or for use in a country or territory outside Singapore; and
(b)a person has been permitted under section 25 to register an identical or nearly resembling trade mark in respect of those services under a registration extending to use in relation to services for use or available for acceptance in Singapore or for use in that country or territory, or the court is of the opinion that he might properly be permitted so to register such a trade mark,
on application by that person to the court, the court may impose on the registration of the first-mentioned trade mark such limitations as the court thinks proper for securing that the registration shall cease to extend to such use as last aforesaid.”; and
(d)by deleting the words “or for the purposes of subsection (2)” in the second and third lines of subsection (3) and substituting “(2) or (2A)”.
Amendment of section 42
25.  Section 42 of the principal Act is amended —
(a)by deleting subsection (4) and substituting the following subsection:
“(4)  Notwithstanding anything in subsections (1), (2) and (3), a trade mark shall not be, or be deemed to have been, assignable or transmissible in a case in which, as a result of an assignment or transmission, there would in the circumstances subsist, or have subsisted, whether under the common law or by registration, exclusive rights in more than one of the persons concerned to the use, in relation to —
(a)the same goods or services;
(b)the same description of goods or services; or
(c)goods and services or descriptions of goods and services which are associated with each other,
of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods or services, or the same description of goods or services, or the association of the goods and services or descriptions of goods and services, and to the similarity of the trade marks, the use of the trade marks in exercise of those rights would be or have been likely to deceive or cause confusion:
Provided that, where a trade mark is or has been assigned or transmitted in such a case as aforesaid, the assignment or transmission shall not be deemed to be or to have been invalid under this subsection if the exclusive rights subsisting as a result thereof in the persons concerned respectively are or were, having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to —
(i)goods to be sold or otherwise traded in within Singapore (otherwise than for export);
(ii)goods to be exported to the same market outside Singapore;
(iii)services for use in Singapore;
(iv)services for use in the same country or territory outside Singapore; or
(v)services available for acceptance in Singapore (wherever they are to be used).”;
(b)by deleting the word “and” in the seventh line of subsection (5) and substituting the words “or services or the association of the goods and services or descriptions of goods and services and to the similarity”; and
(c)by deleting subsections (6) and (7) and substituting the following subsection:
“(6)  Notwithstanding anything in subsections (1), (2) and (3), a trade mark shall not be assignable or transmissible in a case in which as a result of an assignment or transmission thereof there would in the circumstances subsist, whether under the common law or by registration —
(a)an exclusive right in one of the persons concerned to the use of the mark limited to use in relation to goods to be sold or otherwise traded in, or to services for use or available for acceptance in a place or places in Singapore; and
(b)an exclusive right in another of the persons concerned to the use of a mark identical with or nearly resembling the mark referred to in paragraph (a) in relation to —
(i)the same goods or services;
(ii)the same description of goods or services; or
(iii)goods and services or descriptions of goods or services which are associated with each other,
limited to use in relation to goods to be sold, or otherwise traded in, or services for use, or available for acceptance, in another place or places in Singapore:
Provided that, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or of a person who claims that such a mark has been transmitted to him or to a predecessor in title of his, in any such case, the Registrar, if he is satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would not be contrary to the public interest, may approve the assignment or transmission and an assignment or transmission so approved shall not be deemed to be, or to have been, invalid under this subsection or subsection (4) so, however, that in the case of a registered trade mark this provision shall not have effect unless application for the registration under section 43 of the title of the person becoming entitled is made within 6 months from the date on which the approval is given or, in the case of a transmission, was made before that date.”.
Repeal and re-enactment of section 45
26.  Section 45 of the principal Act is repealed and the following section substituted therefor:
“Effect of registration in Part A of register
45.—(1)  Subject to this section, and sections 48 and 52, the registration of a person in Part A of the register as proprietor of a trade mark (other than a certification trade mark) shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses in the course of trade a mark identical with or nearly resembling it in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either —
(a)as being use as a trade mark in relation to the goods or services in respect of which it is registered; or
(b)in a case in which the use is use upon the goods or in physical relation thereto or is use at or near the place where the services are available for acceptance, or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods or services with which such a person as aforesaid is connected in the course of trade.
(2)  The right to the use of a trade mark given by registration as aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in a place, in relation to goods to be exported to a market, in relation to services for use or available for acceptance in a place, or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend.
(3)  The right to the use of a trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of the trade mark as aforesaid by any person —
(a)in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or a registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it or has at any time, expressly or impliedly, consented to the use of the trade mark;
(b)in relation to services to which the proprietor of the trade mark or a registered user conforming to the permitted use has applied the trade mark, where the purpose and effect of the use of the trade mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the trade mark or where the proprietor or registered user has at any time, expressly or impliedly, consented to the use of the trade mark; or
(c)in relation to goods or services adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services.
(4)  The use of a registered trade mark, being one of two or more registered trade marks which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration as aforesaid, shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks.”.
Amendment of section 46
27.  Section 46(1) of the principal Act is amended —
(a)by deleting the words “and by section 12(2)” in the first and second lines;
(b)by deleting the words “in respect of any goods” in the third line; and
(c)by deleting the words “in relation to those goods” in the fifth line.
Amendment of section 48
28.  Section 48 of the principal Act is amended —
(a)by inserting, immediately after the word “goods” wherever it appears in the proviso, in each case the words “or services”; and
(b)by renumbering the section as subsection (1) of that section, and by inserting immediately thereafter the following subsections:
“(2)  The reference in the proviso to subsection (1) to the use of a trade mark by a person’s predecessor in title shall, as respects use in relation to services before the commencement of the Trade Marks (Amendment) Act 1990, be construed as references to use by any predecessor of his in business.
(3)  Nothing in section 46(1) shall be construed as making applicable to a trade mark registered in Part B of the register subsection (1) relating to a trade mark registered in Part A of the register.”.
Amendment of section 50
29.  Section 50 of the principal Act is amended by deleting the word “tribunal” and substituting the word “court”.
Amendment of section 53
30.  Section 53 of the principal Act is amended by deleting the words “goods as those of another person”.
Amendment of section 66
31.  Section 66 of the principal Act is amended by inserting, immediately after subsection (1), the following subsections:
“(1A)  Rules made under subsection (1) may specify the hour at which the Registry shall be deemed to be closed on any day for the purposes of the transaction by the public of business under this Act or any rules made thereunder or of any class of such business, and may specify days as excluded days for any such purposes.
(1B)  Any business done under this Act or any rules made thereunder on any day after the hour so specified in relation to business of that class, or on a day which is an excluded day in relation to business of that class, shall be deemed to have been done on the next following day not being an excluded day; and where the time for doing anything under this Act or any rules made thereunder expires on an excluded day, that time shall be extended to the next following day not being an excluded day.”.
Amendment of section 68
32.  Section 68 of the principal Act is amended —
(a)by deleting subsections (1) to (4) and substituting the following subsections:
“(1)  A mark adapted in relation to any goods or services to distinguish in the course of trade goods or services, as the case may be, certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods or services, as the case may be, not so certified shall be registrable as a certification trade mark in Part A of the register in respect of those goods or services in the name, as proprietor thereof, of that person:
Provided that a mark shall not be so registrable in the name of a person who carries on a trade in goods, or the provision of services, of the kind certified.
In determining whether a mark is adapted to distinguish as aforesaid, the Registrar may have regard to the extent to which —
(a)the mark is inherently adapted so to distinguish; and
(b)by reason of the use of the mark or of any other circumstances, the mark is in fact adapted so to distinguish.
(2)  Subject to subsections (3) to (5), and sections 48 and 52, the registration of a person as proprietor of a certification trade mark shall, if valid, give to that person the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the mark is registered and without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the registered proprietor of the trade mark or a person authorised by him under the regulations in that behalf using it in accordance therewith, uses in the course of trade a mark identical with it or nearly resembling it, in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either —
(a)as being use as a trade mark; or
(b)in a case in which the use is use upon the goods or in physical relation thereto or use upon the services at or near the place where the services are available for acceptance or in an advertising circular, or other advertisement, issued to the public, as importing a reference to some person having the right either as the registered proprietor or by his authorisation under the relevant regulations to use the trade mark or to goods or services certified by the registered proprietor.
(3)  The right to the use of a certification trade mark given by registration as aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of the mark in any manner in relation to goods to be sold or otherwise traded in, in a place, in relation to goods to be exported to any market, in relation to services for use or available for acceptance in a place, or in any other circumstances to which, having regard to those conditions or limitations, the registration does not extend.
(4)  The right to the use of a certification trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of the mark as aforesaid by any person —
(a)in relation to goods certified by the proprietor of the trade mark if, as to those goods or a bulk of which they form part, the registered proprietor or another in accordance with his authorisation under the relevant regulations has applied the trade mark and has not subsequently removed or obliterated it, or if the registered proprietor has at any time, expressly or impliedly, consented to the use of the trade mark;
(b)in relation to services to which the proprietor of the trade mark or another in accordance with his authorisation under the relevant regulations has applied the trade mark, where the purpose and effect of the use thereof is to indicate that those services have been certified by the proprietor or where the proprietor has at any time, expressly or impliedly, consented to the use of the trade mark; or
(c)in relation to goods or services adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the mark is to indicate, otherwise than in accordance with the fact, that the goods or services are certified by the proprietor:
Provided that paragraphs (a) and (b) shall not have effect in the case of use consisting of the application of any such mark as aforesaid to any goods or services, notwithstanding that they are such goods or services as are mentioned in those paragraphs, if the application is contrary to the relevant regulations.”.
(b)by deleting the words “Section 11(2) to (6)” and “section 11(1)” in subsection (7) and substituting the words “Section 12(2) to (7)” and “section 12(1)”, respectively;
(c)by deleting the words “section 11(2) to (6)” in the first line and “section 11” in the fourth line of subsection (8) and substituting the words “section 12(2) to (7)” and “section 12”, respectively;
(d)by deleting the words “section 11” in the sixth line of subsection (11) and substituting the words “section 12”; and
(e)by deleting subsection (16) and substituting the following subsections:
“(16)  The following provisions of this Act shall not have effect in relation to a certification trade mark:
(a)sections 10, 12, 18 and 19 (except as expressly applied by this section), 30, 40, 41, 42 (4) to (8), 45, 51 and 76 (3); and
(b)any provisions the operation of which is limited by the terms thereof to registration in Part B of the register.
(17)  A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Registrar who before giving his decision shall consider —
(a)whether the person to whom it is proposed to assign or transmit the mark is competent to certify the goods or services in respect of which the mark is registered;
(b)whether in all the circumstances the proposed assignment or transmission would be to the advantage of the public.
(18)  A certification trade mark shall not be assignable or transmissible to a person who carries on a trade in goods, or the provision of services, of the kind certified.
(19)  Any decision of the Registrar under this section shall be subject to appeal to the court.”.
Amendment of section 69
33.  Section 69 of the principal Act is amended —
(a)by deleting the words “imprisonment for a term not exceeding 5 years” at the end of subsection (1) and substituting the words “a fine not exceeding $50,000 or to imprisonment for a term not exceeding 5 years or to both”;
(b)by deleting “$200” at the end of subsection (2) and substituting “$10,000”; and
(c)by deleting paragraph (c) of subsection (3) and substituting the following paragraph:
“(c)where that word is used in relation to a mark registered as a trade mark under the law of a country outside Singapore and in relation to goods to be exported to that country or to services for use in that country.”.
Amendment of section 70
34.  Section 70 of the principal Act is amended by deleting the words “$5,000” and “2 years” and substituting the words “$100,000” and “5 years”, respectively.
Amendment of section 72
35.  Section 72 of the principal Act is amended by deleting the words “$5,000” and “3 years” and substituting the words “$100,000” and “5 years”, respectively.
Repeal and re-enactment of section 73 and new sections 73A to 73D
36.  Section 73 of the principal Act is repealed and the following sections substituted therefor:
“Importing or selling, etc., goods marked with a counterfeit trade mark
73.  Any person who imports, sells or exposes or has in his possession for sale or for any purpose of trade or manufacture, any goods or thing to which a counterfeit trade mark is applied or to which a registered trade mark is falsely applied, shall, unless he proves that —
(a)having taken all reasonable precautions against committing an offence under this section, he had, at the time of the commission of the alleged offence, no reason to suspect the genuineness of the mark and on demand made by or on behalf of the prosecution, he gave all the information in his power with respect to the persons from whom he obtained the goods or thing; or
(b)he had acted innocently,
be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000 for each goods or thing to which the counterfeit trade mark is applied or the registered trade mark is falsely applied (but not to exceed in the aggregate $100,000) or to imprisonment for a term not exceeding 5 years or to both.
Falsely applying a registered trade mark to services
73A.  Any person who falsely applies a registered trade mark to services shall, unless he proves that he had acted innocently, be guilty of an offence and shall be liable on conviction to a fine not exceeding $100,000 or to imprisonment for a term not exceeding 5 years or to both.
When trade mark deemed applied
73B.—(1)  A trade mark shall be deemed to be applied to goods if it is woven in, impressed on, worked into, or annexed or affixed to, the goods.
(2)  A trade mark shall be deemed to be applied to goods if —
(a)it is applied to the goods themselves; or
(b)it is applied to a covering, label, reel or thing in or with which the goods are sold or exposed or had in possession for a purpose of trade or manufacture.
(3)  A trade mark shall be deemed to be applied to goods or services if it is used in —
(a)a manner likely to lead to the belief that it refers to, describes or designates the goods or services;
(b)a sign or advertisement, including a televised advertisement; or
(c)an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document,
and 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 this section, “covering” includes a stopper, glass, bottle, vessel, box, capsule, case, frame or wrapper, and “label” includes a band or ticket.
(5)  A registered trade mark shall be deemed to be falsely applied to goods or services if, without the assent of the registered proprietor of the trade mark or of a registered user of the trade mark, the trade mark or a mark substantially identical with it is applied to the goods or services.
(6)  In a prosecution for falsely applying a registered trade mark to goods or services, the burden of proving the assent of the registered proprietor or a registered user lies on the defendant.
Forfeiture of articles, etc., on conviction
73C.  A person convicted of an offence under any provision of this Act shall be liable, in addition to the punishment provided in that provision, to forfeit to the Government all articles or goods by means of which, or in relation to which, the offence was committed.
Jurisdiction of courts
73D.  A District Court or a Magistrate’s Court shall have jurisdiction to hear and determine all offences under this Act and, notwithstanding anything to the contrary in the Criminal Procedure Code [Cap. 68], shall have power to impose the full penalty or punishment in respect of any offence under this Act.”.
Amendment of section 74
37.  Section 74(3) of the principal Act is amended by deleting the words “$5,000” and “2 years” and substituting the words “$50,000” and “5 years”, respectively.
Amendment of section 75
38.  Section 75 of the principal Act is amended —
(a)by deleting the words “in the United Kingdom or” in the second line of subsection (1);
(b)by deleting the words “the United Kingdom or” in the seventh and in the twelfth and thirteenth lines of subsection (1);
(c)by inserting, immediately after subsection (1), the following subsection:
“(1A)  Where an application for protection for a trade mark in respect of services was made in a foreign state before the commencement of the Trade Marks (Amendment) Act 1990, a trade mark in respect of services registered on an application under this section made within 6 months from the date of application for protection in the foreign state shall be registered as of that date.”;
(d)by deleting subsection (3) and substituting the following subsection:
“(3)  The application for the registration of a trade mark under this section shall, subject to such further requirements as may be prescribed —
(a)be made in the same manner as an ordinary application under Part II; and
(b)specify —
(i)the foreign state in which the application for protection was made;
(ii)the date on which such application for protection was made.”;
(e)by deleting the words “the United Kingdom and of” in the first and second lines of subsection (4); and
(f)by deleting subsection (5).
Amendment of section 76
39.  Section 76 of the principal Act is amended by deleting subsection (2) and substituting the following subsections:
“(2)  Any act done in Singapore in relation to services for use outside Singapore which, if done in relation to services provided within Singapore for use there, would constitute use of a trade mark in Singapore, shall be deemed to constitute use of the trade mark in relation to those services for any purpose for which such use is material under this Act or at common law.
(3)  The use of a registered trade mark in relation to goods or services between which and the person using it any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the trade mark has been, or is, used in relation to goods or services between which and that person or a predecessor in title of his a different form of connection in the course of trade subsisted or subsists.”.
New sections 77, 78 and 79
40.  The principal Act is amended by inserting, immediately after section 76, the following sections:
“Power of amendment
77.  The Registrar may, on such terms as to costs or otherwise as he thinks just —
(a)whether for the purpose of correcting a clerical error or an obvious mistake or otherwise, permit the amendment of a notice of opposition or other document lodged at the Registry; or
(b)for the purpose of correcting a clerical error or an obvious mistake, amend the register or a certificate of registration of a trade mark.
Extension of time
78.  Where, by this Act or any rules made thereunder, a time is specified within which an act or thing is to be done, the Registrar may, unless otherwise expressly provided, extend the time either before or after its expiration.
Power to extend times by reason of errors in Registry, etc.
79.—(1)  Where by reason of an error or action on the part of an officer or person employed in the Registry an act or step in relation to an application for the registration of a trade mark or in proceedings under this Act (not being proceedings in a court), required to be done or taken within a certain time has not been so done or taken, the Registrar may extend the time for doing the act or taking the step and permit the act to be done or the step to be taken.
(2)  The time required for doing an act or taking a step may be extended under this section although the time has expired.”.
Miscellaneous amendments
41.  The principal Act is amended —
(a)by inserting, immediately after the word “goods” wherever it appears in the following provisions, in each case the words “or services”:
Sections 10(1)(d), 26(2), 37(1)(d), 40(1) and (3), 42(2), (3) and (5) (line 2), 43(1), 46(2), 52 (marginal note) and (b), 66(1)(b), 68(9), (10)(a), (14)(a) and (15) and 69(2)(c); and
(b)by inserting, immediately after the words “trade mark” in the second line of section 51(1), the words “in respect of goods”.
Repeal of Schedule
42.  The Schedule to the principal Act is repealed.
Saving provisions
43.—(1)  The repeal of the proviso to section 10(3) and of sections 12, 15(2) and 30 of the principal Act by this Act shall not affect any application for registration of a trade mark or for registration as a registered user, as the case may be, made under the principal Act before the commencement of this Act and those provisions shall apply to that application as if they had not been so repealed.
(2)  Sections 19 and 20 shall apply only to any trade mark registered or renewed on or after the commencement of this Act.
Singapore Statutes Online
© 2024 Attorney-General's Chambers of Singapore,
Last updated 21 Nov 2024
Singapore Statutes Online is provided by the Legislation Division of the Attorney-General's Chambers of Singapore.