CONDITIONS FOR REGISTRATION AND SCOPE OF PROTECTION OF NON-CONVENTIONAL TRADE MARKS IN SINGAPORE

Citation(2004) 16 SAcLJ 423
Published date01 December 2004
Date01 December 2004

The Singapore Trade Marks Act 1998, together with the changes for the definition of a trade mark introduced by the Trade Marks Amendment Act 2004, has expanded significantly the type of signs or indicia eligible for registration. Consequently, trade mark registrations in Singapore, and also elsewhere in the world, are no longer limited to traditional two-dimensional words or graphic signs but are also extended to other non-conventional signs such as shapes, smell, sounds, colours and potentially even moving images. The objective of this article is to examine the conditions for registration and the scope of protection of such non-conventional trademarks in Singapore, particularly in the light of recent significant legal developments in this area of the law in other major jurisdictions.

I. Introduction

1 Five years ago on 15 January 1999, the Trade Marks Act 19701 (“the old Act”) which had been the governing law in Singapore for almost 30 years, was repealed by Parliament. In its place is a new piece of legislation, the Trade Marks Act 1998 (“the 1998 Act”).2 The 1998 Act

encapsulates the latest judicial trends and developments here in Singapore and elsewhere, like the European Union, the UK and Australia. However, with the signing of the United States-Singapore Free Trade Agreement last year, Singapore’s laws on trade marks have undergone another historic overhaul on 15 June 2004 this year in the form of the Trade Marks (Amendment) Act 2004 (“the Amendment Act”).3

2 The 1998 Act together with the changes to the definition of a trade mark introduced by the Amendment Act have expanded significantly the type of signs or indicia eligible for registration as a trade mark in Singapore. Consequently, trade mark registrations in Singapore, and also elsewhere in the world, are no longer limited to traditional two-dimensional words or graphic signs but are also extended to other non-conventional signs such as shapes, smell, sounds, colours and potentially even moving images. The objective of this paper is to examine the conditions for registration and the scope of protection of such non-conventional trademarks in Singapore. The first part of this paper sets out the laws on registrability of trade marks and the changes that have been made by the Amendment Act. The second part of this paper shall examine the conditions for registration for non-conventional marks and their scope of protection under the laws in Singapore. In particular, the focus of the discussion will be on colour marks, olfactory marks, sound marks and marks involving moving images because several important developments have recently occurred in the US and Europe with regard to the registration and protection of these marks.4 Finally, the paper concludes with a brief assessment of the business implications for traders in Singapore.

II. Registrability of a trade mark under the 1998 Act
A. The meaning of a “trade mark”

3 Currently, the interpretation section of the 1998 Act defines a trade mark to mean “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 a person from goods or services so dealt with or provided by any other person”.5 This however has changed. The Amendment Act has removed the requirement for trade marks to be “visually perceptible”. With the removal of this requirement, non-conventional indicia or signs like smells,6 gestures or moving images and musical tunes7 will potentially be registrable as trade marks in Singapore. This amendment will in turn bring about the harmonisation of Singapore’s trade mark laws with others in the Commonwealth such as the UK8 and Australia.9

4 Therefore, under the Amendment Act, the essential elements of a trade mark shall consist of the following:

(a) Any sign — a “sign” is further defined as “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof”.10 This definition of what constitutes a “sign” remains unchanged under the Amendment Act.

(b) Capability of being graphically represented.

(c) Capability of distinguishing goods or services.

(d) The goods or services concerned are offered in the course of trade.

B. Criteria for securing registration

5 The 1998 Act does not define what a registrable trade mark in Singapore is. Instead, the 1998 Act lists situations in which a trade mark application shall be refused. Section 7 of the 1998 Act states the “absolute grounds for refusal of registration” of a trade mark in Singapore and s 8 states the “relative grounds for refusal of registration”. Section 9 of the 1998 Act deals with the situation of honest concurrent use. Furthermore, the 1998 Act does not contain a list of specific examples of permissible types of trade mark.

(1) Absolute grounds for refusal of registration

6 Section 7 of the 1998 Act states the absolute grounds for refusal of registration.11 Essentially, these absolute grounds of objections relate to the distinctiveness of the mark and any unlawful uses of the mark prohibited by the laws of Singapore. Section 7(1) lists, in a general fashion, the absolute grounds of refusal for registration:

(a) If the sign which is seeking registration does not satisfy the definition of a trade mark as laid down in the 1998 Act.12

(b) If the trade marks seeking registration are devoid of any distinctive character.13

(c) If the trade marks seeking registration consist exclusively of signs or indications which may serve to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.14

(d) If the trade marks seeking registration consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

7 There is an important proviso in s 7(2) which states that a trade mark shall not be refused registration by reason of s 7(1)(b) to (d) if it has in fact acquired a distinctive character as a result of the use made of it, before the date of application for registration.15 Such a mark may be registrable if the applicant can show that it has acquired a distinctive character factually through usage. The crucial point, and probably the most difficult task, is for the applicant to show proof of this factual distinctiveness.

8 Besides the general grounds stated in s 7(1), there are specific instances of absolute objections to the registration of a trade mark. One such instance involves trade marks which consist exclusively of the shape which results from the nature of the goods themselves or which is necessary to obtain a technical result or give substantial value to the goods.16 The 1998 Act therefore excludes three-dimensional signs that would be better suited to registration as either industrial designs or patents from being registrable as trade marks.

9 The other instances of absolute grounds for refusal of registration include trade marks that:

(a) are contrary to public policy or morality,

(b) are deceptive in nature,

(c) the use of which are prohibited by the laws of Singapore, or

(d) where the application for registration is done in bad faith.17

10 Furthermore, a trade mark which contains or consists of a geographical indication in respect of a wine or spirit shall be refused registration if the trade mark is used or intended to be used in relation

to a wine or spirit not originating from the place indicated in the geographical indication.18

11 Lastly, trade marks which consist of national emblems of convention countries or emblems of certain international organisations shall be also be refused registration.19

(2) Relative grounds of refusal for registration

12 The relative grounds of refusal for registration of a trade mark are found in s 8 of the 1998 Act. The wording of s 8 is almost identical to its UK equivalent. Under this section, the issue of whether a trade mark seeking to be registered can be refused registration by the Registrar is dependant on its relationship, if any, with an earlier trade mark. In the first case, if a trade mark is identical with an earlier trade mark and the goods or services for which the trade mark is sought to be registered are also identical with the goods or services for which the earlier trade mark is protected, then registration of such a trade mark shall be refused.20 Secondly, if the trade mark is identical with an earlier trade mark and is to be registered for the goods or services that are similar to those for which the earlier trade mark is registered, or if the trade mark is similar with an earlier trade mark and is to be registered for goods or services that are similar to those for which the earlier trade mark is registered, then such a trade mark shall be refused registration if there exists a likelihood of confusion on the part of the public.21 Thirdly, where the trade mark is identical with or similar to an earlier trade mark and it is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected, then registration of such a trade mark shall be refused if:

(a) the earlier trade mark is well known in Singapore;

(b) the use of the trade mark in the course of trade in Singapore will indicate a connection between the goods or services of the proprietor of the earlier trade mark;

(c) a likelihood of confusion on the part of the public will result from such use of the trade mark; and

(d) the interests of the proprietor of the earlier trade mark are likely to be damaged by such use.22

Lastly, where the use of a trade mark seeking to be registered is liable to be prevented by virtue of laws such as passing off, law of copyright and designs, then registration shall...

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