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Which courts are empowered to hear trademark disputes?
The High Court and the Supreme Court are empowered to hear such disputes.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
A civil action can be taken against trademark infringement, typically via writ actions.
An infringement may come about through the use of:
- an identical mark on identical goods or services;
- an identical mark on similar goods or services; or
- a similar mark on identical or similar goods or services.
The use of a sign similar to a trademark that is well known in Singapore on dissimilar goods or services may also constitute infringement.
Alternatively, the registered owner may enforce its trademark rights in criminal proceedings with regard to, among other things:
- counterfeit goods;
- the false application of registered trademarks; or
- the import or sale of goods using a falsely applied trademark.
Who can file a trademark infringement action?
Trademark infringement actions can be filed by the trademark owner and licensees, in specific circumstances.
Co-owners can bring infringement proceedings without the other co-owners’ consent, but cannot proceed with the action without the leave of the court, unless the other parties are joined as plaintiffs or added as defendants.
What is the statute of limitations for filing infringement actions?
An infringement action must be commenced within six years from the date on which the cause of action accrued.
What is the usual timeframe for infringement actions?
Proceedings typically last between 12 to 18 months, although it is possible to seek the court’s directions for an expedited trial.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
The courts may grant an injunction in a trademark infringement action and, therefore, the usual rules of court apply.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
The types of relief that the court may grant in an infringement action include:
- an injunction (subject to such terms that the court deems fit, if any);
- an account of profits; and
- statutory damages (in applicable cases).
Special punitive damages are not provided for in the Trademarks Act and are therefore prohibited.
What customs enforcement measures are available to halt the import or export of infringing goods?
Customs has the power to search and detain infringing goods and may take ex officio actions to detain goods which are:
- imported into or intended to be exported out of Singapore; or
- in transit and co-signed to any person with a commercial or physical presence in Singapore.
What defences are available to infringers?
Defences are available where:
- the owner consented to the infringing use;
- the use occurred in respect of genuine goods or parallel imports;
- the use constituted the defendant’s use of its own registered mark;
- the so-called ‘own name defence’ applies;
- the complainant’s mark is descriptive or concerns the purpose or characteristics of the goods, where such use occurs in accordance with honest practices in industrial or commercial matters; and
- the infringer used its mark before (and has used it continuously since) the mark in question was registered or first used by the registered owner, whichever is earliest.
What is the appeal procedure for infringement decisions?
Appeals of infringement proceedings (which are heard at first instance before the High Court) under the Trademarks Act (2005 revised edition, Cap 332) must be filed before the Court of Appeal. Passing-off claims may be brought in either the subordinate courts or the High Court, depending on the quantum of the claim. Appeals from the subordinate courts must be filed before the High Court and may, in relevant cases, proceed to the Court of Appeal.
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