Citation(1998) 10 SAcLJ 152
Date01 December 1998
Published date01 December 1998

The 1994 Trademarks Act came into force in the United Kingdom (UK) on 31 October 1994. The general view of commentators on the Act appears to be that it has introduced some fundamental changes to the trademark laws of the UK1. As the previous UK trademarks law (under the 1938 Trademarks Act) forms much of the basis of the current trademarks law of Singapore, and as Singapore embarks on a reform of its trademarks law2, many of the issues and changes which have come about in the UK as a result of the 1994 Act will naturally be of interest to Singapore lawyers. This article aims to examine one particular aspect of UK trademarks law that has seen a significant statutory change, viz., the question of infringement, and hopes to place the issues raised by the new law on this aspect into the Singapore context by considering the effects of these changes. It is hoped that the analysis will be helpful in considering the question whether or not Singapore law ought to follow the same course as UK law.

It ought to be noted at the outset that the new UK law is the result of the Government’s implementation of the 1988 European Directive to approximate the trademark laws of the member states of the EU3. As such, the new law not only contains provisions that deal with “ultra-national” trademark registrations (such as the Community Trademark4 and trademarks registered under the Madrid Protocol relating to the International Registration of Marks5), but it also contains language which

reflects, and in some instances replicates, the language of the Directive itself. The traditional common lawyer going from the previous 1938 Act to reading the UK Act may thus encounter somewhat unfamiliar language and usages. This difficulty has already surfaced in some of the case law on the new Act6.

Background to trademarks infringement: the old law

Under the old UK law as represented by the 1938 Trademarks Act, the basic infringement section was section 4(1)(a) and (b). This provision is in pari materia with section 45(1)(a) and (b) of the Singapore Trademarks Act7. Under these provisions, a registered proprietor was given “the exclusive right to the use of the trademark in relation to the goods or services in respect of which the trademark is registered”. This general recital of the scope of the trademark monopoly was then immediately followed by these words:

“… 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 … 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 trademark … or … (b) as importing a reference to [the proprietor or his goods or services].”

The structure and layout of section 45(1) created at least two issues: (i) the relationship between the first part (dealing with the general monopoly) and the second part of the subsection (the “deeming” provisions); and (ii) the scope of section 45(1)(b), in particular, the meaning of the phrase “importing a reference”.

Issue (i)

The complex wording of section 45(1), in particular, having the general statement on exclusive rights followed by a recital of certain acts deemed to be infringing acts in section 45(1)(a) and (b) raises the possibility that these latter two subsections merely illustrate specific acts which would constitute an incursion into the plaintiff-proprietor’s exclusive rights. However, certain of a defendant’s acts would still infringe the rights of the plaintiff’s, if these acts fell within the general part of section 45(1)

instead of the specific “deeming” provisions. This question was raised in Bismag v Amblins8, an early case on comparative advertising. In this case, although it was found that the defendant’s acts “imported a reference” to the plaintiff’s goods and hence fell within the specific deeming provision of section 45(1)(b), the Court of Appeal took the opportunity to remark that the effect of the subsection, as a whole, was rather unclear9. As such, if the deeming provisions were merely specific instances of infringement such that it may still be possible to infringe a trademark by way of the general words, these deeming provisions would be rendered otiose if a plaintiff need only rely on the fact that the defendant’s acts constituted infringement under the general provisions.

In Chanel v L’Arome UK Limited10, it was again held that the defendant had “imported a reference” within the ambit of section 4(1)(b) by using the plaintiff’s trademark in a chart given out to the defendant’s distributors that was considered an advertising circular11. The trial judge also remarked that if his finding on section 4(1)(b) was wrong, the defendants would not have infringed the general words of section 4(1) either. However, given the ruling on section 4(1)(b), this statement was not significant, and the appeal from this decision proceeded on the basis of section 4(1)(b) only.

At least one commentator has considered that the general words which open section 4(1) can give rise to a “basic right” which is not necessarily limited by the requirements of the deeming provisions12. For example, infringement under either (a) or (b) requires the defendant’s use to be in the course of trade; under the “basic right”, there is no such express requirement. It may then be that a defendant can infringe the “basic right” even where he has not used the trademark in the course of trade: he simply has to “use [it] in relation to the goods or services in respect of which [it] is registered”13. However, it should be noted that the phrase in the general words of section 45(1), viz., the proprietor’s “exclusive right to the use of the trademark”, is generally taken to mean use for the purpose of indicating a connection in the course of trade between the

goods or services, and the proprietor14. If so, it would be difficult to claim that a defendant’s non-trade use would impinge upon the general “basic right”, even in the absence of a specific requirement of user in the course of trade.

This issue may be viewed as academic rather than one of practical significance15, especially since it is difficult to think of situations where a court would be satisfied to find infringement based only on the general words as they appear in the opening part of section 45(1). In contrast, the deeming provisions in (a) and (b) which follow offer a good deal more guidance; as such, these deeming provisions clearly demarcate the scope of the proprietor’s trademark monopoly. It follows that finding infringement based only on the general words of section 45(1) could mean the scope of the trademark monopoly is hence fairly wide.

Issue (ii)

On the other, separate issue of importing a reference under section 45(l)(b), the line of English cases which have wrestled with the scope and meaning of this phrase will no doubt be familiar to Singapore trademark practitioners16. It may thus suffice, for the purposes of this article, to give a summary of the position in Singapore under section 45(l)(b), which, as the wording is similar, is likely to be the UK position under the 1938 law (section 4(1)(b)). Essentially, even non-trademark use can fall within the ambit of section 45(1)(b), i.e., this subsection deals with cases where the defendant’s use is not as a badge of origin17. Such non-trademark use will still be caught if the defendant’s use of an identical mark (or one that is confusingly similar to the plaintiff’s) is in the course of trade, is without the plaintiff’s permission, is used in relation to any goods or services in respect of which the plaintiff has registered his mark18, and is used in any of the ways specified in section 45(1)(b) to “import a reference” either to the plaintiff or his goods or services. An obvious example of importing a reference would include using the plaintiff’s trademark to refer to the plaintiff’s goods in comparative advertising. Such a practice would constitute an actionable infringement under this subsection.

It is clear that section 45(1)(b) goes beyond the “classic” type of trademark infringement which is covered by section 45(1)(a), where the plaintiff sued if the defendant uses the same or similar trademark to indicate, or rather, confuse the public as to, the origin of the goods in question. This “new” and extended form of trademark infringement was recognised as such in the line of cases beginning with Bismag v Amblins. There need be no likelihood of confusion on the part of the public; and indeed, this is unlikely to exist in comparative advertising, where the defendant is going to be at some pains to distinguish his goods or services from those of the plaintiffs. In this type of situation, he/she is also likely to use the plaintiff’s actual trademark rather than adopt one that is merely similar, as he/she would want the public to know it is the plaintiff’s goods or services to which he/she is referring. Interpreting the scope of section 45(1)(b) in such a way thus clearly widens the trademark monopoly; there would be few instances where a defendant’s use of an identical trademark would not fall within this subsection, unless such use is considered not to be use “in a trademark sense”, e.g., a reference to the plaintiff’s business19, or a mere descriptive use20. These limitations on the trademark monopoly can be justified as the exclusive right granted by registration is to use the registered trademark to indicate a trade connection between the goods or services marked, and the proprietor of the mark. This can be said to be the primary purpose of the registered trademark system: to indicate the origin of goods. However, trademarks are increasingly said to also possess other important functions, including acting as a guarantee of quality and as a vehicle...

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