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Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Singapore operates a ‘first-to-file’ system, under which the first party to file an application for an IP right in Singapore owns the right once the application has been granted. However, other traders can oppose the registration of a trademark in Singapore on the grounds of prior use of an identical or similar trademark.
What legal protections are available to unregistered trademarks?
The owner of an unregistered mark can rely on the common law action of passing off to protect the mark against imitation or unauthorised use by third parties.
How are rights in unregistered marks established?
Rights in unregistered marks are established if the owner of the mark can prove its reputation and goodwill.
Are any special rights and protections afforded to owners of well-known and famous marks?
Yes, subject to circumstances set out in the Trademarks Act (2005 revised edition, Cap 332), the owner of a well-known or famous mark can obtain an injunction against the unauthorised use of the mark in Singapore, even if the owner:
- has not registered the mark with the Intellectual Property Office of Singapore (IPOS);
- does not conduct business in Singapore; and
- has no goodwill in Singapore.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Priority claims can be filed in respect of corresponding applications filed under the Paris Convention for the Protection of Industrial Property or in World Trade Organisation member countries within six months of the first application in any such country (other than Singapore).
What legal rights and protections are accorded to registered trademarks?
A trademark registration grants the owner a statutory monopoly over the trademark in Singapore. The protection initially lasts 10 years, but can be extended on payment of renewal fees. A trademark owner has the right to:
- control the use of the registered mark by restricting other parties from using it in the course of trade in Singapore without consent; and
- prevent a later trademark, which is similar or identical to the registered mark, from being registered.
Who may register trademarks?
An individual, firm or company claiming to be the owner of a trademark can file for a trademark registration as long as it is using, or intends to use, the mark in the course of its business.
What marks are registrable (including any non-traditional marks)?
For a trademark to be registered, it must be capable of being represented graphically.
In 2004 the requirement for a trademark to be visually perceptible was removed from the legislation, enabling sound marks to be registered. To date, no smell and taste marks have been registered with the IPOS, even though this is theoretically possible. Shape marks are also registrable, but the shape cannot:
- result from the nature of the goods themselves;
- be necessary to obtain a technical result; or
- add substantive value to the goods.
Can a mark acquire distinctiveness through use?
Yes, a mark can be registered on the basis of substantial prior use resulting in the mark acquiring a distinctive character.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
A mark will be refused registration on absolute grounds if it:
- describes the goods and services of the business;
- is common to the trade;
- is contrary to public policy or morality; or
- attempts to deceive the public.
A mark will be refused on relative grounds if it:
- is identical to an earlier mark;
- could cause confusion; or
- is identical or similar to a well-known mark.
Are collective and certification marks registrable? If so, under what conditions?
Collective and certification marks may be registered and are protected by law in Singapore.
A collective and certification mark must be examined for distinctiveness, as is the case for ordinary trademarks.
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