Malaysia: New Singapore Trade Marks Act Enters Into Force

The new Singapore Trade Marks Act 1998 ("the new Act") came into operation on 15th January 1999. Many sections of the new Act are very similar to those of the UK Trade Marks Act 1994.

The following is a summary of some of the important changes introduced by the new Act and Rules:

A trade mark is defined as any visually perceptible sign capable of being represented graphically, and which is capable of distinguishing goods or services dealt with or provided in the course of trade by one person from goods or services so dealt with or provided by any other person. A "sign" includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof. Thus the definition of a "trade mark" has been broadened to now include shape, colour and aspect of packaging. As the mark must be "visually perceptible", it would appear that smells, sounds or tastes are not registrable.

The Part A and Part B Registers have been replaced by a single Register. The level of distinctiveness required for entry in the new register will apparently be tested by the words "capable of distinguishing" included in the above definition of a trade mark. This was the level of distinctiveness required for entry into the old Part B Register.

The applicant must declare on the application Form that the trade mark is being used in the course of trade, by the applicant or with his consent, in relation to the goods or service stated, or that there is a bona fide intention to use the mark.

Although there are provisions for filing a multiple-class trade mark application, each class will be allocated its own application number and thus examined individually.

There are more restrictive provisions for amending a trade mark application. An application may only be amended by correcting the name or address of the applicant, correcting errors of wording or copying, or correcting obvious mistakes. The corrections must not substantially affect the identity of the trade mark or extend the goods or services covered by the application.

A registered trade mark may only be amended where the mark includes the proprietor’s name or address and the amendment is limited to changes of the name or address which does not substantially affect the identity of the mark.

The onus of proving use of a trade mark now rests with the proprietor of the mark.

Disclaimers and limitations are now made at the applicant’s option.

The concept of registered users under the old Act has been abolished and is replaced by licensee provisions.

There would appear to be good reason to register an assignment or a license as soon as possible. An unregistered assignment or license is ineffective against a person acquiring a conflicting interest in the registered mark in ignorance of the assignment or license.

There are provisions relating to a well known mark entitled to protection under the Paris Convention or TRIPS Agreement. The mark must be well known in Singapore as being the mark of a proprietor who is a national of a Convention country, or is domiciled in, or has a real and effective industrial or commercial establishment in a Convention country. The person or entity need not carry on business, or have any goodwill in Singapore. The proprietor of a well-known mark is entitled to an injunction to restrain the use in the course of trade of an identical or similar mark in Singapore in relation to identical or similar goods or services and which is likely to cause confusion.

Existing registered marks, whether registered in part A or part B of the register, are deemed to be registered trade marks under the new Act.

The old law continues to apply in relation to infringements committed before the commencement of the new Act.

It is not an infringement of an existing registered trade mark to continue after commencement of the new Act, any use which did not amount to infringement of the existing registered trade mark under the old law.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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