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I understand. We will provide a detailed summary of Brunei's trademark system for practical...
Trademark registration requirements
Registrable trademarks and distinctiveness: According to the Singapore Trademark Act, a "trademark" is defined as a sign that distinguishes a product or service from someone else's, and can be visually displayed by a "sign" such as text, graphics, color, shape, or packaging. Therefore, in order to be registered as a trademark, the trademark must begraphically displayableand distinguishable from the goods and services of others. Specifically, even if a trademark consists only of symbols or figures, it must have unique distinctiveness (saliency) that allows one's products or services to be distinguished from others in transactions. This requirement is set out in Articles 2 and 7 of the Trademark Law.
Absolute grounds for refusal: A trademark cannot be registered if it has characteristics that are undesirable in the public interest or from the standpoint of the trademark system (absolute grounds for refusal). For example, the following trademarks cannot be registered:
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A trademark consisting only of a descriptive mark that directly indicates the quality, efficacy, use, place of origin, etc. of a product or service (e.g., words expressing quality or advertising such as "BEST" or "CHEAP").
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A trademark consisting only of commonly used marks (common names/commonly used trademarks)** in the relevant product/service field (e.g. "escalator" *an example of an original trademark that has been made into a general name).
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Trademarks that lack distinctiveness (for example, only plain shapes).
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A trademark consisting only of a shape that is essential to the nature of the product or a three-dimensional shape that has a function (functional shape trademark).
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Trademarks that are contrary to public order and morals, trademarks that may deceive consumers (for example, trademarks that may cause a misunderstanding about quality).
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Marks whose use is prohibited by law, such as national flags, national emblems, and emblems of intergovernmental organizations.
These absolute grounds for refusal are stipulated in Article 7, Paragraph 1 of the Trademark Law, and the corresponding trademark will not be registered. However, even if a trademark is descriptive or lacks distinctiveness, it may still be allowed to be registered if it has acquired distinctiveness through use (secondary meaning) (provisions equivalent to the proviso to Article 7 of the Trademark Law).
Relative reasons for refusal: There are cases where registration is not allowed due to the rights of others. Trademarks that are identical or similar to trademark rights or well-known/famous trademarks already owned by others, and that have a risk of confusion because the designated goods or services are the same or similar, cannot be registered. Specifically, the following cases apply:
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If the trademark is identical to someone else's earlier applied/registered trademark and the designated goods/services are also the same (Article 8, Paragraph 1 of the Trademark Law). In this case, confusion is naturally presumed.
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If the trademark is identical or similar to someone else's earlier filed or registered trademark, and the designated goods/services are also the same or similar, and there is a risk of confusion as to the source (Trademark Law Article 8, Paragraph 2).
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If the trademark is identical or similar to another person's Well-Known Mark, even if the designated goods or services are different, the use of the trademark may cause confusion of origin or harm the interests of the owner of the well-known trademark (Trademark Law Article 8, Paragraph 4). Regarding well-known trademarks, Singapore provides extensive protection under the Paris Convention and the TRIPS Agreement, and trademarks that are widely recognized by the public can be refused use on dissimilar products.
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If the use of the mark is prohibited due to illegal acts such as **unfair competition (passing off)** based on the rights of another person's unregistered well-known trademark or business sign (trade name, part of a trade name, etc.) (Trademark Law Article 8, Paragraph 7). In other words, registration will also be refused if the use of the trademark conflicts with someone else's prior rights that are prohibited by law (public awareness of unregistered trademarks, copyrights, moral rights, etc.).
The above relative reasons for refusal are stipulated in Article 8 of the Trademark Law, and the conflict with the existing rights of others will be determined during the examination. In particular, in Singapore, the similarity with another person's registered trademark is checked at the examination stage, and if there is a conflict, the trademark will be rejected. However, in some cases, registration may be granted in exceptional cases if a written consent form is obtained from the right holder of the conflicting prior trademark and submitted.
Trademark application procedure
Filing method: Trademark applications in Singapore are recommended to be filed online, and are e-filed through the Intellectual Property Office (IPOS)'s electronic portal, IPOS Digital Hub. When filing an application, it is necessary to submit applicant's name and address, indication of the trademark (text for a word trademark, image file for a figure trademark, etc.), designated goods/services and classification, and the prescribed application fee in Form TM4. Singapore has adopted a product/service classification system based on the 12th edition of the Nice Classification, and it is also possible to specify multiple classifications in one application (multi-class application). If you use the designated terminology database provided by IPOS to describe designated products and services, the examination will be faster, and the fees for each category will be cheaper if you apply online.
Applicant requirements: In Singapore, even foreign companies/persons can apply for trademarks directly at IPOS. However, you will need to have an Address for Service in Singapore and a Singpass or Corppass to access the electronic filing system. If an overseas applicant does not have these or is unable to provide a local address, it is common to appoint a Singaporean representative (trademark agency or law firm) to handle the procedure.
Notes when applying: When applying, please note the following points.
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Preliminary search for similar trademarks: Before filing, it is recommended to search existing trademark registrations to see if there are any similar trademarks. Similar trademark search is possible on the IPOS electronic service. If the same or similar trademark has already been registered for the same or similar product, there is a high possibility that the application will be rejected after filing, so we will conduct a preliminary investigation to understand the risks.
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Claiming priority: If your first trademark application was filed in a Paris Convention member country or a WTO member country, you can claim priority by filing a Singapore application within six months of the filing date. If you claim priority, the Singapore filing date will be considered the same as the earlier foreign filing date, and your application will have priority over similar trademarks filed by others within the time limit. When claiming priority, declare the earlier filing country, filing date, application number, etc. at the time of filing, and submit supporting documents as necessary.
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Language/Translation: Application procedures will be conducted in English. If your trademark contains Chinese characters or characters from other languages, you may be required to submit a transliteration/translation into English. In particular, for character trademarks in Chinese and other languages, it is necessary to state the pronunciation in Roman letters and the English translation of the meaning in the application.
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Application fee: If you apply online, there is a standard application fee of S$340 per category. However, if only the IPOS standard wording database is used to describe the specified product/service, a **discount rate (S$280/category)** will be applied. This has the effect of reducing amendments during examination after filing. The application fee is paid online at the time of application.
Formality Examination (Form Check): When an application is filed, IPOS will first conduct an examination of formality requirements. We will check whether the application documents are complete, whether the trademark is displayed in an appropriate format, and whether the designated products/classes are clearly indicated, and if the requirements are met, the filing date will be confirmed. This filing date is the starting date of the protection period after trademark registration. On the other hand, if there are any formal deficiencies, an order for correction will be issued, and if the application is not corrected or addressed within the specified period, the application may be rejected.
Trademark examination
Summary of substantive examination: In Singapore, trademarks are substantively examined, and the examiner determines whether the trademark meets the registration requirements (absolute and relative grounds for refusal) mentioned above. IPOS tends to issue the first examination result (notification of first examination) approximately within 4 to 6 months from the date of application, and if all goes well, the decision to register is often reached within 9 to 12 months from the date of application. However, the actual period will vary depending on the number of applications and examination status, and may take longer if the applicant requests an extension of the deadline.
Results of review and response: If it is determined that all registration requirements are met as a result of the review, the application will beaccepted and proceed to the next public notice procedure. On the other hand, if there are any reasons for refusal, IPOS will issue an Examination Report, detailing the reason for refusal and the product classification. Applicants will have four months from the date the report is sent to respond (extendable if necessary by submitting Form CM5) and have the following options:
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Submitting a written opinion: Submit a written opinion rebutting the reasons for refusal and necessary evidence (for example, evidence claiming that distinctiveness is acquired through use).
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Amendment of application: The reason for refusal may be resolved by making an amendment to partially delete or limit the trademark display or designated products (submit [Form TM27]). For example, such measures include deleting products for which similar prior trademarks exist, or making some elements with descriptive meaning unclaimed.
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Request for hearing: If the matter cannot be resolved through written communication, it is also possible to request an oral hearing with the examiner (submit [Form HC4]). The hearing is an opportunity for the applicant or his/her representative to make oral arguments directly to the examiner and request reconsideration of the examiner's decision.
In the past, if the applicant did not respond to the examination report within the deadline, the application would be dismissed (treated as withdrawn). However, for cases filed after May 26, 2022, the system has been changed to a system in which even if there is no response, only the products and services that were the subject of reasons for refusal will be automatically deleted from the application, and the procedure will continue for products with no other reasons for refusal. This is a measure to flexibly deal with partial refusals, and allows applicants to choose to give up registration for some products.
Points to keep in mind during examination: Singapore examination involves both search for prior trademarks and examination of absolute grounds. Although there are systems in other countries (e.g. European Union Intellectual Property Office, etc.) in which relative grounds of refusal are not taken into account at the examination stage, Singapore follows the flow of English law and considers relative grounds of refusal at the examination. Therefore, it is important to conduct a similar research before filing and, in some cases, strategies for adjusting interests (obtaining written consent, etc.). In addition, if there is any doubt about the identification ability, registration may be possible by submitting usage history. Even descriptive marks may be allowed to be registered if it can be shown that the mark has become well known in the market after being used for five years or more (Trademark Law Article 7, Paragraph 3, Article 23, Paragraph 2). If necessary, the examiner may request proof of past usage period, sales, advertising performance, etc. during the examination stage.
After responding with the examiner, if the reasons for refusal are finally resolved and the application is accepted, the application will move on to the next
Trademark publication/opposition system
Publication and Opposition Period: Trademark applications that pass examination will be published in the Trade Marks Journal** prior to registration and will enter a two-month opposition period. During this publication period, anyone can file an opposition to the trademark registration. In Singapore, the opposition period is generally 2 months, but the person wishing to file an opposition (third party) can apply for an extension of up to 2 months (up to 4 months in total)** by submitting Form HC3 before the expiry of the period. If this extension request is approved, the deadline for filing a Notice of Opposition will be extended.
Procedure for opposition: To file an opposition, you must first submit a **Notice of Opposition** in the prescribed form (TM11). The Opposer must submit a written opposition stating the reasons for opposition and the prescribed fee (number of classes x S$420) to IPOS within two months (up to four months if an extension is granted) from the date of publication, and also send a copy to the applicant. The main reasons for filing an opposition are as follows (Articles 7, 8, and 23 of the Trademark Law are the legal basis):
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The applied trademark falls under the absolute grounds for refusal under trademark law (lack of distinctiveness, violation of public order and morals, etc.)
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The applied trademark conflicts with the opponent's prior trademark rights or well-known trademarks, and there is a risk of confusion
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In addition, the application was filed in bad faith, or there was fraud in the application process, etc.
Once an opposition is filed, the applicant is required tofile a counterstatement withintwo months. If the applicant does not file a reply (Form HC6) within the time limit, the application will be deemed abandoned. In this way, in opposition proceedings, the petitioner and applicant each submit written arguments, and then the evidence submission period begins. In the evidentiary procedure, the opponent first submits evidence (affidavit) to support the claim, then the applicant submits rebuttal evidence, and finally the opponent submits additional rebuttal evidence as necessary. Applications for extensions of deadlines (usually about two months) are allowed once at each stage, but extensions must be carefully reviewed in order to speed up the overall trial process.
IPOS provides information to dissenting parties about opportunities for settlement and mediation during the evidentiary process. IPOS's "Arbitration and Mediation Center" encourages **Mediation**, and there is also a government-funded mediation cost subsidy scheme (Revised Enhanced Mediation Promotion Scheme). If both parties agree to mediation, the objection procedure will be suspended for a certain period and mediation will take place. If the matter is not resolved through mediation, the objection procedure will be restarted.
Hearing and determination of objections: Once all arguments and evidence have been submitted, an oral hearing may be held by the IPOS Registries of Hearings and Mediation. In many cases, oral arguments are held by the attorneys for the parties, and then the trial judge makes a decision based on the arguments and evidence of both parties. You will be notified of the final decision in writing. If the opposition is approved (applicant wins), the applied trademark will be refused registration; if the opposition is rejected (applicant wins), the trademark will proceed to registration. Parties who are dissatisfied with the objection decision can also file an appeal (suit to cancel the trial decision) to the high court.
Registration decision and trademark registration
From registration decision to certificate issuance: If no opposition is made during the opposition period (or the opposition is rejected) and the registration is finally approved, IPOS willregisterthe trademark aftercharging the registration fee. At the time of registration, a Certificate of Registration is electronically issued and sent to the applicant (registration holder). Trademark rights are recorded in the Trademark Registry, and registration details (trademark content, registration number, registration date, designated goods and services, etc.) are made public.
Registration date and duration: In Singapore, the registration date of a trademark is, in principle, granted retroactively to the application date (Article 15(2) of the Trademarks Act). Therefore, the duration of the right is also calculated from the filing date. The term of a registered trademark right is 10 years from the filing dateand can be renewed every 10 years thereafter. This 10-year period is in line with international standards, similar to Japan, Europe, etc.
Intent to Use Requirement: Trademark applications without an Intent to Use will also be accepted in Singapore. In other words, you can file an application even before you actually start using it, if you have an intention to use it in the future. However, if you do not use the trademark at all after registration, there is a risk of non-use cancellation as described below, so it is recommended that you Start using the trademark as soon as possible or, if necessary, maintain the use status of the trademark by licensing it to a third party.
Effects of Trademark Rights: A Registered Trade Mark gives the trademark owner the exclusive right to use the specified goods or services. Registered trademarks can be used with the symbol "®" (before registration, they can be displayed as "™"), which provides a powerful right to prevent unauthorized use by others. Registered trademark rights holders can exercise and utilize their rights in the following ways:
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A company can exclusively attach its trademark to its products and services and use it as a brand in the market.
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If someone else uses the same or similar trademark without permission, you can claim for an injunction or claim for damages.
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You can license your trademark rights to a third party and earn royalties.
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Trademark rights themselves can be assigned or sold, and can also be used as business assets (intellectual property) as collateral for loans.
Obligation to use and cancellation due to non-use
Use obligations and grace periods: Many countries, including Singapore, impose ``use obligations'' on registered trademarks. A trademark has meaning only when it is not only registered, but actually used in commerce. Therefore, the Singapore Trademark Act provides a system that allows interested parties to request that the registration of a registered trademark be canceled (trial for cancellation) if the trademark has not been used for a certain period of time. This period is stipulated as 5 years from the date of registration, and if a registered trademark is not used authentically and continuously in Singapore within 5 years from the date of completion of registration, it will be subject to cancellation without justifiable reason (Article 22(1)(a) of the Trademarks Act). The same applies even if you have used the product once but stopped using it for five consecutive years (Paragraph 1 (b) of the same article).
Specifically, if the trademark owner or licensee does not use the trademark in Singapore for a period of five consecutive years after registration, a third party can request cancellation of the trademark registration. This 5-year non-use period starts from the date of the decision to register (the same day as the filing date if there are no objections). IPOS itself warns that ``If a registered trademark is not actually used in Singapore for five consecutive years, there is a risk of cancellation due to non-use.''
Procedure for requesting revocation trial: Revocation for non-use can be requested by anyone and can be filed with the IPOS (Trademark Office) or the High Court. Usually, the choice is to file a petition with the IPOS Trademark Office (Administrative Cancellation Trial), but if the trademark is already being disputed in court, it will need to be filed in court. When a request for cancellation is filed, the trademark owner must defend the trademark by submitting the history of use of the trademark and valid reasons for non-use within the specified period. Based on the evidence submitted, IPOS will determine whether the item has truly been unused for five years or whether there is a legitimate reason (for example, the item could not be used due to import regulations, etc.). If it is determined that the trademark is not used without a valid reason, the registration of the trademark will be cancelled.
Certification criteria for use: "Use" may include use that differs in details from the registered trademark, as long as it does not impair the identity of the trademark (Article 22, Paragraph 2 of the Trademark Law). Use within Singapore also includes the act of attaching the trademark to the packaging of products for export purposes. Therefore, even if the product is not sold in the local market but is manufactured in Singapore and exported in its entirety, it is treated as "use in Singapore."
Effects and avoidance of cancellation: If cancellation for non-use is granted, the trademark right will be retroactively extinguished on the date of the cancellation request or an appropriate date determined by the court or agency (Trademark Law Article 22(8)). However, cancellation may be avoided if you begin or resume use before the cancellation request is made. Specifically, even after five years have passed, a trademark cannot be canceled if the use of the trademark has begun (resume) before the request for cancellation. However, if you resume use in a hurry after the cancellation request was foreseen, this will not be considered, and any use that started within 3 months before the cancellation request will be ignored unless you were unaware of the request. In short, it is too late to use it formally to maintain rights after the five-year period of non-use, and it is important to ensure continued use before a third party makes a move.
Other grounds for cancellation: In addition to non-use, a trademark may also be canceled due to circumstances that occur after the trademark is registered. Article 22, Paragraph 1 (c) and (d) of the Trademark Act stipulate that interested parties can also request cancellation if a trademark has become a common name (a trademark becomes a product name or a generic name), or if the use of a trademark has caused a misunderstanding about the quality or origin of goods or services. For example, due to the trademark owner's inaction, the trademark has become a common name for the product among consumers (such as an elevator being called "Mr. Otis"), or the use of the trademark inappropriately has led to the public being misled about the product's quality. These are also considered to be loss of trademark functionality in a broad sense and are subject to cancellation.
Invalidation of registration (litigation/invalidation trial system)
Overview of the invalidation trial system: Even after the trademark is granted registration, if the trademark should not have been registered in the first place, it is possible to invalidate the registration. While an opposition is a pre-registration trial system, a petition for invalidation (invalidation trial) is a procedure that retroactively cancels registration after registration. Interested parties (existing trademark rights holders, businesses, etc.) can apply to IPOS or a court to invalidate a registered trademark based on Article 23 of the Trademark Law. The main reasons for invalidation are as follows.
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Violation of absolute registration requirements: When a registered trademark is registered in violation of the provisions of Article 7 of the Trademark Act (absolute grounds for refusal). For example, a trademark may be registered by mistake even though it lacks distinctiveness, or a trademark that violates public order and morals may be overlooked and registered. However, if the trademark has acquired distinctiveness through use after registration, it may not be invalidated (Article 23, Paragraph 2 of the Trademark Law).
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Violation of relative registration requirements: When a registered trademark is registered even though it conflicts with another person's prior trademark. Specifically, the case fell under Article 8, Paragraphs 1 and 2 (same/similarity with previously registered trademarks) and Article 8, Paragraph 4 (confusion/dilution with well-known trademarks) of the Trademark Act. In addition, cases that fall under Article 8, Section 7 of the Trademark Act (conflict with unregistered rights of others, passing off) are also grounds for invalidation. It should be noted that if the prior right holder hasconsented to the registration, this will not be grounds for invalidation.
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Illegal application procedures: If the application or registration of a trademark was made for fraud or illegal purposes (Trademark Law Article 23, Paragraph 4). For example, there are cases where an agent files an application without permission for the purpose of stealing another person's well-known trademark (an application in bad faith), or cases where the trademark is registered by falsifying important facts.
A petition for invalidation can be filed by anyone, but is usually filed by someone with some kind of interest (for example, the owner of an earlier trademark). The filing destination is IPOS or the High Court, and unless there is a particular dispute in progress, it will be treated as an invalidation trial at IPOS. In invalidation trial proceedings, the parties submit written arguments and evidence in the same way as in opposition, and the final decision is made by an IPOS judge whether to maintain the registration or cancel it. If invalidity is recognized, the trademark registration will be deemed to have been invalid from the beginning (invalid retroactively from the first day) and the trademark rights will expire. However, there are provisions that take into account the safety of transactions by third parties, such as invalidation decisions that do not affect judgments in infringement lawsuits that have already been finalized or rights to claim damages.
Limitations on the period for filing a petition for invalidation: Depending on the reason for invalidation, there are limits to the period in which a petition can be filed. For example, Article 23, Paragraph 6 of the Trademark Law restrictsan innocent prior user from filing a claim for invalidation after more than five years have passed. Specifically, if a prior right holder (for example, a well-known trademark right holder) has left a registered trademark unopposed for five years or more after registration until the public is aware of its use, there is a provision for ``implied consent'' (corresponding to Article 24 of the Trademark Act) that makes it impossible to later claim invalidity. However, this does not apply if there was malicious intent at the time of filing (such as filing with the intention of outwitting the right holder), and invalidation can be claimed even after five years have passed. In any case, if a right holder becomes aware of someone else's registered trademark, he or she is required to take prompt action (objection or invalidation claim), and if left unattended for a long period of time, the exercise of rights may be restricted.
Trademark renewal and duration management
Renewal procedures: The protection period for a registered trademark is 10 years from the date of initial registration, and it can be renewed as many times as required by completing the prescribed procedures before expiration. Renewal will be accepted within 6 months before the expiry of the trademark right. For example, if the application date (= registration date) is July 1, 2025, the expiration date will be June 30, 2035, and renewal procedures will be possible from January 1, 2035, six months before that date. For renewal, it is necessary to submit [Form TM19] and pay the renewal fee, and it is recommended to apply for renewal online.
Renewal fees and expiration of deadline: Renewal fees are usually around S$380 per category (for online applications). If a renewal application is not filed by the expiration date, the trademark will be placed in the "Expired" status, but a late renewal is allowed for a grace period of six months. Additional charges will apply if you renew during the late renewal period (within 6 months after expiration date). If the trademark is still not renewed, it will be removed from the register. However, even after cancellation, you can proceed with the Restoration procedure for an additional 6 months, and you can restore your registration by submitting Form TM19 and paying the prescribed reinstatement fee within this period. Ultimately, trademarks that are not renewed or restored even after one year from the expiration date will have their rights completely extinguished, and third parties will be able to apply for and register the same trademark again.
Registration Maintenance Practices: IPOS offers an e-Alert service that sends renewal notices six months before expiry, and trademark owners can receive notifications on their digital hub. Rights holders must promptly notify IPOS of any change in address or contact person to ensure that they receive update notifications. As extension of deadlines is not allowed for renewal procedures (Trademark Regulation 77(6)(e),(f)), deadline management is important. In addition, there is no need to submit any documents when renewing; the process is simple, just specify the registration number in the online form and pay the fee. Once the renewal is completed, the expiration date of the trademark on the register will be extended by a new 10 years.
License and transfer (transfer of rights/permission to use)
Assignment of trademark rights: Trademark rights in Singapore are treated as property rights and can be assigned and inherited like other movable property (Article 38 of the Trademarks Act). Trademark rights can be transferred together with business operations (accompanying business transfer), or the trademark can be transferred separately from business operations. It is also possible to transfer only part of the rights (partial transfer, in which only part of the designated product is transferred). An assignment contract must be inwritten and signed by the assignor (original right holder) to be valid (Article 38, Paragraph 3 of the Trademark Law). This means that a verbal agreement alone does not satisfy the third party requirement.
If a transfer occurs, it is recommended that change the name of the right holder on the register with IPOS (registration of change of registered holder). Article 39 of the Trademark Law establishes a system for recording the fact of transfer of rights related to trademarks, such as assignment, in a register. The transferee can change the name on the register by filing Form CM2 (or CM8, depending on the situation). It is recommended that you register the name change within 6 months because if a third party further transfers or creates a security interest in the trademark right without registration, there is a risk that you will not be able to defend the transferee later. In fact, Section 39(3) of the Trademarks Act provides that an unrecorded assignment cannot be asserted against a bona fide third party if that third party acquires a competing interest (e.g. another assignment or attachment) before the assignment is recorded in the register. There is also a provision that states that the transferee cannot claim damages for infringements that occur while the name change has not been completed. Therefore, it is important to promptly complete registration procedures with IPOS when a trademark is assigned.
Trademark license: Trademark owners can license their registered trademarks to third parties (Article 42 of the Trademark Law). Licenses are broadly divided intoExclusive LicenseandNon-Exclusive License. An exclusive right to use is an exclusive license that does not allow anyone else, including the trademark owner, to use the trademark, and only the authorized person (exclusive licensee) can use the trademark. A non-exclusive license is a general license that allows a trademark owner to grant use to multiple parties at the same time. License agreements are basically concluded in writing and clearly define the scope of permission (product, region, period, etc.). Partial permission (limited to specific products/regions, etc.) is also possible.
Under Singapore Trademark Law, the license agreement itself is valid even if it is not registered with IPOS. Therefore, even if the license is not registered, it remains valid between the contracting parties. However, it is advisable to record the license in the register for reasons ofagainst third parties and evidence. By registering a license with IPOS (by submitting Form CM6), this fact will be made public, which can be expected to deter third parties from using the trademark without permission, and in the event of a dispute, the record will serve as public notice of the transaction and presumptive evidence. However, Article 39 of the Trademark Law clearly states that license agreements are not subject to the requirements for protection against third parties even if they are unregistered (unlike assignments, even if they are unregistered, they can be used against third parties). However, registration is still desirable from the perspective of protecting licensees.
Rights and Obligations of Licensee: A person granted an exclusive license (exclusive licensee) has almost the same right to protect the trademark as a trademark owner under the law. For example, in the event of trademark infringement, the exclusive licensee can personally bring atrademark infringement lawsuit (Article 43(6) of the Trademark Act, etc.). However, in order for a dedicated licensee to bring a lawsuit on its own, it must confirm that its authority is not limited by the contract and that the trademark owner has no intention of filing a lawsuit. On the other hand, although non-exclusive licensees cannot, in principle, bring infringement suits on their own, they have the right to urge the trademark owner to take action. In all cases, Licensee is responsible for complying with contractual quality control obligations and maintaining goodwill in the trademark. If quality control is neglected, the distinctiveness of the trademark will be impaired, and there is also the risk that the trademark will become a common name.
Trademark rights enforcement and protection (infringement response)
Concept of Trademark Infringement: If a trademark that is identical or similar to a trademark registered in Singapore is used for designated goods, similar goods, or services without the permission of the trademark owner, this constitutes trademark infringement (Article 27 of the Trademark Act). Typical acts of infringement include:
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Double Identical Infringement: The act of using a mark that is the same as a registered trademark for goods or services that are the same as the designated goods or services. This is considered an infringement without regard to the possibility of confusion.
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Use of similar trademarks: The act of using a mark that is same or similar to a registered trademark on goods or services that are same or similar to designated goods or services, creating a risk of confusion of the source. For example, a third party may use a similar mark such as "ABC" or "ABB" on food products for the rights holder's trademark "ABC" (food), causing general consumers to mistakenly believe that the product is a product of an affiliated or affiliated company.
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Dilutive infringement of a well-known trademark: If a registered trademark is well-known in Singapore, the use of the same or similar mark on dissimilar goods or services, thereby unfairly exploiting or diluting the trademark's distinctiveness or reputation, can also be considered an infringement (Article 27(3) of the Trademark Act). For example, a well-known trademark of a luxury brand may be attached to a completely unrelated product, damaging the brand image.
Specific examples of acts of infringement: Article 27, Paragraph 4 of the Trademark Act enumerates specific acts of trademark "use" that constitute infringement. This includes the act of applying a trademark to a product or its packaging, the act of offering to sell, advertising, or storing a trademarked product, the act of providing a service with a trademark attached, and the act of using a trademark in business documents or advertisements. Furthermore, the unauthorized use of another person's trademark in meta tags or keyword advertisements on the Internet may be considered trademark use and infringement, depending on the circumstances.
Civil action for trademark infringement: Trademark owners can bringcivil actions against acts that infringe on their registered trademark rights. In Singapore, civil lawsuits are generally filed in the High Court (there is also a court system specializing in intellectual property). If the right holder wins the lawsuit, the following reliefs can be obtained from the court:
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Injunction (injunction): A permanent injunction is issued against the defendant (infringer) prohibiting any further use of the trademark. If necessary, it is also possible to request a **temporary suspension (temporary use prohibition order)** at the same time as filing a lawsuit.
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Damages: Compensation can be awarded for business losses suffered by the right holder as a result of the infringement. This includes lost profits due to decreased sales and intangible damages due to brand damage. Although it may be difficult to calculate, the court will determine the amount of damages based on reasonable estimates.
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Account of Profits:Instead of compensating for damages, the infringer can also choose to have the right holder pay an amount equivalent to the profits earned from the infringing act. This is a remedy that focuses on the infringer's unjust enrichment rather than the damage caused to the right holder.
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Statutory Damages: As a unique system of Singapore Trademark Law, in cases of malicious infringement (such as intentional counterfeiting of a trademark), the rights holder can claim a certain amount of compensation without proving the actual amount of damages. The court can award statutory damages of up to S$100,000 for each type of product or service and up to S$1 million in total. This amount depends on the severity of the infringement (e.g. intentional and repeated sale of counterfeit goods). Statutory damages have the advantage that right holders can omit the usual proof of damages.
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Destruction of counterfeit products: The court can issue an order to hand over or destroy infringing products (products with illegally marked trademarks), templates, printed materials, etc. used in their manufacture. This is a measure to remove counterfeit products that remain on the market and prevent future infringements.
In Singapore, courts take a strict stance in determining the amount of damages when the infringement is due to malicious business tactics, such as intentionally taking advantage of the trust in another person's trademark or distributing counterfeit products. On the other hand, if the infringer acted in good faith (e.g., used the trademark thinking it was his or her own trademark), the remedies may be limited. However, in the registered trademark system, even if there is infringement in good faith, there is basically no immunity against infringement (this is closer to non-fault liability rather than negligent liability), so the risk of using someone else's registered trademark is extremely high.
Effects of non-exercise of rights (implied consent): As mentioned above, if a rights holder knowingly allows the use of another person's trademark that is confusingly similar to his own trademark rights for five years or more, he may be restricted from filing a request for an injunction later (Article 24 of the Trademark Act, implied consent provision). This is a type of good faith rule in enforcing rights, and is based on the idea that it is unacceptable to suddenly prohibit a third party's use of a trademark after a long period of tacit approval. Therefore, it is vital that you take immediate action once you become aware of a breach.
Protection from criminal penalties: Unauthorized use of trademarks, especially the sale of counterfeit trademarks on products, is not only a civil infringement, but can also be punished as acriminal offense. The Singapore Trademarks Act stipulates trademark offenses in sections 46 to 49. For example, a person who intentionally counterfeits a registered trademark may be subject to a fine of up to S$100,000 per type of goods or services (with a total cap of $1 million) or imprisonment for up to five years, or both. Article 47 deals with the act of attaching another person's registered trademark to goods or services without permission, and is similarly punishable by a fine of up to $100,000 or imprisonment for up to five years. Furthermore, Article 49 also makes it a crime to import and sell goods with counterfeit trademarks.
Based on these criminal provisions, malicious infringers (especially those selling counterfeit products) may be detected and prosecuted by the Singapore Customs and Police. In the event of a criminal case, the infringer will be prosecuted and, if found guilty, will be subject to the penalties listed above. In practice, the trademark right holder provides information to the police and customs, and the investigative authorities investigate, seize, and prosecute. Criminal prosecution has a great deterrent effect and is an effective means of removing malicious counterfeiters from the market.
Customs border enforcement system
System Overview: Singapore has a system in which trademark rights holders request the customs authorities to **Border Enforcement** of infringing goods at the border (export/import). Trademark owners (or registered licensees) may seek the seizure of allegedly infringing goods when they are imported into or exported to Singapore** by giving prescribed written notice to the Director-General of Customs. This system is stipulated in Part 10 of the Trademarks Act and corresponds to the obligation under the TRIPS Agreement to prevent the distribution of products that infringe on intellectual property rights at national borders.
Application for voluntary injunction: If a trademark right owner wishes to obtain an injunction, he or she will submit a ``Notice for Seizure on Request for Infringing Goods'' to the Customs Commissioner. The notification must include information such as the registration certificate and renewal status of the trademark in question, details (name and characteristics) of the allegedly infringing goods, the date, time, and route of the goods being imported or exported, and must indicate the reason for suspecting that the goods are infringing. In addition, the trademark owner (complainant) must provide security (monetary guarantee or bank guarantee) to cover the government's costs and damages to the suspect (such as the importer of the cargo) in case the trademark owner (complainant) erroneously detains a legitimate shipment. The amount of guarantee varies depending on the case, but there are some that cover only one shipment and some that cover an entire year, and annual guarantees that cover up to 5 unresolved cases at the same time are also accepted. The petitioner also submits a Letter of Undertaking** to the customs office stating that he/she will bear the storage and disposal costs due to the seizure.
Once a notice is received, it will be effective for 60 days from the date of submission (+59 days from the date of submission). During this period, customs will monitor import and export shipments that match the trademarks/products listed in the notification, and will seizeif detected. Once the seizure is carried out, the customs authorities will promptly notify the trademark owner (complainant) and the importer or exporter of the goodsthat the goods have been seized.
Procedures after seizure: A trademark owner who receives a notice of seizure from customs must file atrademark infringement lawsuit (civil lawsuit) within10 business days (excluding weekends and holidays) from the date of the notice. If you do not file a lawsuit and notify the customs collector within this period, the seized cargo will be released. At the petitioner's request, this deadline for filing a lawsuit may be extended once for an additional 10 business days. Once a lawsuit is filed, the seized goods will be held by Customs until the court makes a decision. If the court determines that the item is a trademark infringing item (counterfeit item), a confiscation and destruction order will be issued, and the item will be officially forfeited. On the other hand, if the trademark owner does not file a lawsuit within the time limit or loses the lawsuit, the cargo will be returned to the owner. If the right holder does not file a lawsuit, compensation may be paid to the other party from the collateral provided.
Ex-officio: Under the 2018 law amendment, Singapore Customs also has the power to voluntarily seize import/export goods that are suspected of infringing a trademark. If customs makes an ex-officio seizure, the trademark owner (or exclusive licensee) will be immediately notified. The trademark owner who receives the notification must submit a request for continuation of the injunction to customs within 48 hours from that date and begin the aforementioned petition procedures (such as filing Notice Form TM2 and providing collateral). Thereafter, the deadlines and procedures for filing a lawsuit will be treated in the same way as for voluntary filings.
Practical points: In order to make effective use of the customs injunction system, it is important for trademark owners to understand how counterfeit products of their brand are being distributed, and to be as specific as possible in the information they provide to customs. It will be more reliable if the notice of claim can specify the cargo container number, loading vessel, arrival date, etc. It is also useful to collaborate with customs authorities in advance, and providing information on counterfeit products on a regular basis may lead to ex-officio seizures. It is also effective to provide the customs with information on how to distinguish between genuine and counterfeit products (for example, photos of genuine products and a list of their characteristics) to educate them. Trademark owners must cooperate with customs authorities to protect their brands at borders.
International application under the Madrid System
Madrid Protocol Membership: Singapore is a member of the Madrid Protocol and has access to the international trademark filing system. This allows Singapore-based applicants to seek trademark protection in multiple member states with a single international application. It is also possible for foreign applicants to designate Singaporein their international registration, in which case protection in Singapore will be granted via Madrid.
If you are filing an international application from Singapore: If you are a Singaporean resident or corporation filing in Madrid, you must first file a Basic Trademark Application or Registration in Singapore (Based Domestic Application/Registration). Additionally, applicants must meet one of the followingeligibility requirements:
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Be a national of Singapore (regardless of whether you are an individual or a corporation).
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Have a **residence (address)** in Singapore.
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Have a true and effective place of business (actual place of business) in Singapore.
If you meet any of the above requirements, you can file an international application (Form MM2(E)) via the Intellectual Property Office of Singapore (IPOS). IPOS carries out aformal examination of the international application and, if the requirements are met, forwards it to the International Bureau of the World Intellectual Property Organization (WIPO) withintwo months. If this is sent in time, the international registration date will be the same as the filing date in Singapore (priority claims will also be taken into account if this is within the Paris priority period). After formality examination at the International Bureau, an international registration certificate will be issued and notified to the designated national offices (contracting countries).
For international applications via Singapore, the application must be completed in English and a fee to IPOS (transmission fee of S$250) and a basic fee/designated country fee to WIPO (in Swiss francs) must be paid. Subsequent procedures will be examined by the trademark office of each designated country based on its own national law. If the basic application is refused, withdrawn, or invalidated in Singapore, there is a risk that the international registration will also be canceled depending on the scope (central attack system, 5-year rule), so maintenance and management of the basic application is also important.
Designating Singapore in an international registration: If a foreign applicant seeks protection in Singapore through the Madrid System, include Singapore as a designated country when applying for an international registration. When the International Bureau of WIPO sends a notification of designation to the Intellectual Property Office of Singapore (IPOS), IPOS considers it to be a domestic application and examines it. The examination procedures and standards are the same as for normal Singapore domestic applications, including formality examination and substantive examination (checking absolute and relative requirements). IPOS hasto decide within 18 months whether to issue a refusal notice. If there are no grounds for refusal, Singapore protection under the international registration will automatically be granted. If there are reasons for refusal, IPOS will send a provisional refusal** through the International Bureau, and the international registration holder (applicant) will appoint a representative in Singapore to handle the opposition and appeal proceedings. This is essentially the same procedure as when a Singapore domestic application is refused.
If an international registration designated by Singapore is finally approved by IPOS, protection in Singapore will accrue from the date of international registration and will have the same effect as a domestic registration. Since renewals are also carried out via Madrid, there is no need for Singapore-specific renewal procedures.
Practical Advantages and Disadvantages: Using the Madrid system has the advantage of being able to manage applications to multiple countries all at once. You can obtain multinational protection with one language (English) and one application, reducing costs and administrative burden. On the other hand, as mentioned earlier, there are also issues such as the risk of central attack (if the basic application/registration collapses within 5 years, it will affect everything) and how to deal with each country in the event of a refusal in some designated countries (in the end, local agent fees will be incurred). Therefore, when a Singaporean company expands overseas, it is determined whether it is advantageous to file in Madrid or whether to file directly in each country, depending on the number of designated countries and trademark strategy.
In any case, as a member of the Madrid Protocol, Singapore has implemented the framework into its domestic law (as stipulated in Article 54 et seq. of the Trademark Act and regulations), making it possible for both domestic and foreign applicants to protect their trademarks globally using the international application system. The Intellectual Property Office of Singapore also provides guidelines and support information regarding the Madrid System to help facilitate the international filing process.
AUTHOR
Takefumi SUGIURA （杉浦 健文）
EVORIX Intellectual Property Law Firm Managing Patent Attorney
Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).