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Trademarks

in 51 jurisdictions worldwide
Contributing editors: Stuart J Sinder
and Michelle Mancino Marsh
Published by
Getting the Deal Through
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Henry Davis York
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Winkler Partners
WongPartnership LLP
Zamfirescu Racoti Predoiu, Attorneys at Law
2012
Overview Michelle Mancino Marsh Kenyon & Kenyon LLP 3
The Community Trademark Mathias Kleespies and Simone Schaefer Vossius & Partner 5
Angola Patricia Rodrigues Raul Csar Ferreira (Herd) SA 10
Argentina Julio Cesar Villano Estudio Villano Attorneys at Law & IP Agents 14
Australia Donna Short and Hazel McDwyer Henry Davis York 20
Austria Peter Israiloff Barger, Piso & Partner 27
Bosnia and Herzegovina Tamara Bubalo Karanovic & Nikolic Law Office 32
Brazil Philippe Bhering and Mina Kaway Bhering Advogados 37
Canada James Buchan and Jennifer McKay Gowling Lafleur Henderson LLP 44
Cape Verde Patricia Rodrigues Raul Csar Ferreira (Herd) SA 51
China Yang Yang Essen Patent & Trademark Office 55
Cyprus Christophoros Christophi Christophi & Associates LLC 60
Denmark Johnny Petersen Delacour Dania 64
El Salvador Jos Roberto Romero Romero Pineda & Asociados 70
France Aurlia Marie Cabinet Beau de Lomnie 76
Germany Astrid Grard Preu Bohlig & Partner 81
Greece Alkisti-Irene Malamis and Aristeidis Papathanasiou Malamis & Malamis 87
Honduras Ricardo Anibal Mejia M Bufete Mejia & Asociados 94
Hong Kong Angus Forsyth Stevenson, Wong & Co 99
Hungary Pter Lukcsi SBGK Patent & Law Offices 105
India P V Balasubramaniam, D Ferdinand and K M Aasim Shehzad BFS Legal 110
Italy Fabrizio de Benedetti and Pier Luigi Roncaglia
Societ Italiana Brevetti (SIB) / Studio Legale SIB 116
Japan Yasufumi Shiroyama Anderson Mori & Tomotsune 121
Kosovo Tamara Bubalo Karanovic & Nikolic Law Office 126
Macao Patricia Rodrigues Raul Csar Ferreira (Herd) SA 130
Macedonia Tamara Bubalo Karanovic & Nikolic Law Office 134
Malaysia Benjamin J Thompson Thompson Associates 139
Mexico Sergio L Olivares Jr Olivares & Cia 145
Montenegro Tamara Bubalo Karanovic & Nikolic Law Office 152
Mozambique Patricia Rodrigues Raul Csar Ferreira (Herd) SA 157
Netherlands Maarten Haak Hoogenraad & Haak, Advertising + IP Advocaten 161
Nigeria Olusola Mesele and Aderonke Adejugbe Strachan Partners 166
Norway Trademarks Team at Oslo Patentkontor AS 171
Peru Rosa Mara Kresalja Santos Duany & Kresalja Estudio de Abogados 177
Poland Anna Zakrocka, Slawomira Piotrowska and Bartek Kochlewski Patpol 184
Portugal Patricia Rodrigues Raul Csar Ferreira (Herd) SA 190
Puerto Rico Eugenio J Torres-Oyola and Maristella Collazo-Soto Ferraiuoli LLC 194
Romania Cosmin Vasile Zamfirescu Racoti Predoiu, Attorneys at Law 200
Russia Elena Solovyova ARS Patent & Trademark 205
So Tom and Prncipe Patricia Rodrigues Raul Csar Ferreira (Herd) SA 210
Serbia Tamara Bubalo Karanovic & Nikolic Law Office 213
Singapore Lam Chung Nian and Jeffrey Lim WongPartnership LLP 218
Slovenia Nina Drnovek Law Office Drnovek LLC 223
South Africa Eugene Honey, Debbie Marriott and Craig Shapiro Bowman Gilfillan 228
Switzerland Brendan Bolli, Barbara Gehri and Felix Locher E Blum & Co AG 233
Taiwan Peter J Dernbach Winkler Partners 239
Turkey Korcan Dericioglu Dericioglu & Yasar Law Office 243
Ukraine Dariya Valiavska Sayenko Kharenko 250
United Kingdom Sarah Hadland, Isabel Davies, Holly Strube and Chloe Fernandez Boyes Turner 256
United States Michelle Mancino Marsh and Stuart J Sinder Kenyon & Kenyon LLP 262
Uruguay Martin Pittaluga and Fernanda Alonso Durn Pittaluga Abogados 269
Venezuela Maria Nebreda Hoet Pelaez Castillo & Duque 274
Vietnam Duong Thanh Long, Bui Ngoc Duong and Doan Phuong Thao Aliat Legal 279
Trademarks 2012
Contributing editors:
Stuart J Sinder and
Michelle Mancino Marsh
Kenyon & Kenyon LLP
Business development managers
Alan Lee
George Ingledew
Robyn Hetherington
Dan White
Marketing managers
Ellie Notley
Sarah Walsh
Alice Hazard
Marketing assistants
William Bentley
Sarah Savage
Megan Friedman
Business development manager
(subscriptions)
Nadine Radcliffe
Subscriptions@
GettingTheDealThrough.com
Assistant editor
Adam Myers
Editorial assistant
Lydia Gerges
Senior production editor
Jonathan Cowie
Chief subeditor
Jonathan Allen
Subeditors
Davet Hyland
Caroline Rawson
Sarah Morgan
Editor-in-chief
Callum Campbell
Publisher
Richard Davey
Trademarks 2012
Published by
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Tel: +44 20 7908 1188
Fax: +44 20 7229 6910
Law Business Research Ltd 2011
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CONTENTS

Law
Business
Research
SINGAPORE WongPartnership LLP
218 Getting the Deal Through Trademarks 2012
Singapore
Lam Chung Nian and Jeffrey Lim
WongPartnership LLP
1 Ownership of marks
Who may apply?
A registered trademark is personal property under the Trade Marks
Act (the TMA) so it may be applied for and owned by any natural or
legal person. The TMA also provides that a trademark registration
may be co-owned by two or more persons jointly, in which case,
subject to any agreement to the contrary, each co-owner is entitled
to an equal undivided share in the mark.
2 Scope of trademark
What may and may not be protected and registered as a trademark?
Under the TMA, a trademark is any sign that can perform the func-
tion of distinguishing the goods or services dealt with or provided
in the course of trade by one person from those of another. Hence
the more descriptive a mark is, the more difficult it may be to show
that the mark is perceived as identifying the goods or services of a
particular person. A mark under the TMA must also be capable
of being represented graphically. This does not mean that the mark
itself must be visually perceptible but rather that it must be possible
to precisely identify and present the mark on the trademark register.
So, for example, non-traditional marks such as sound marks could
be represented graphically by the use of musical notation but it is
arguable that the technology does not yet exist to allow an appli-
cant to provide a graphical representation of a scent (as opposed
to the chemical composition leading to a substance achieving the
scent). Under the common law, the right of a trader over his or her
mark is usually protected by an action in the tort of passing-off.
There, the mark is anything that represents to the public that the
goods or services are that of the traders and is therefore associated
with the goodwill in that persons business. The body of case law
in passing-off has, over time, provided a wide and non-exhaustive
list of examples of what could constitute a trademark, ranging from
invented words and logos, to the look and feel of storefronts, to trade
dress, to name a few.
3 Common law trademarks
Can trademark rights be established without registration?
In general, the trademark rights prescribed under the TMA may only
be secured upon registration. The TMA also protects well-known
trademarks, registered or otherwise, against use of the trademark
that indicates a connection between those goods or services and the
proprietor and that is likely to damage the interests of the trademark
proprietors, or that would cause dilution in an unfair manner of the
distinctive character of the trademark (see question 29 for protection
extended to well-known trademarks). In addition, for unregistered
trademarks, the owner of such marks can also rely on the common
law tort of passing-off as discussed in question 2. However, unlike
proof of registration (which is a simple administrative matter of
requesting for a certificate of registration for legal proceedings), a
litigant in a passing-off claim must prove the existence of local good-
will in his or her business and the trademark, which can be highly
dependent on the facts and available evidence in each claim.
4 Registration time frame and cost
How long does it typically take, and how much does it typically cost, to
obtain a trademark registration?
Assuming there are no objections raised by the registrar and no oppo-
sition proceedings are commenced by third parties, the application
process typically takes between four and six months to complete.
Most of the time, if there are no objections, costs should be within a
range of US$1,000 to US$2,000 per mark per class. Different costing
structures will apply if the trademark application is made pursuant to
the Madrid Protocol, depending on the specifics of the application.
Official objections and oppositions by third parties will delay the
application process considerably and increase the costs involved.
5 Classification system
What classification system is followed, and how does this system
differ from the International Classification System as to the goods and
services that can be claimed?
Singapore currently adopts the 9th edition of the Nice Classification
of Goods and Services. With effect from 1 January 2012, Singapore
will adopt the 10th edition of the Nice Classification of Goods and
Services.
6 Examination procedure
What procedure does the trademark office follow when determining
whether to grant a registration? Are applications examined for
potential conflicts with other trademarks? May applicants respond to
rejections by the trademark office?
The procedure will vary depending on whether the application is
a national trademark filing in Singapore or begins as an interna-
tional registration under the Madrid Protocol in which Singapore is
subsequently designated as a national filing. For both, however, the
trademark registry first examines the application for inherent regis-
trability (ie, whether the mark is capable of distinguishing the appli-
cants goods and services from those of another, and whether there
are any grounds to refuse the application due to the inherent nature
of the mark). The registrar will also conduct a non-exhaustive and
non-conclusive review of potential conflicts with other trademarks.
Any objections are communicated to the applicant, who may then
file arguments (and, where applicable, evidence) in response to the
objections within stated deadlines (which are extendable to a limit).
If and when the applicant overcomes the objections, the application
will be published in the Trademarks Gazette and if no opposition to
the application is filed by a third party within the opposition period
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WongPartnership LLP SINGAPORE
(ie, two months from the publication in the Gazette), the mark will
proceed to registration. If there is an opposition, further procedures
will apply governing the filing of grounds and evidence, and the con-
duct of hearings.
7 Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before
registration is granted or issued? Does proof of use have to be
submitted? Are foreign registrations granted any rights of priority? If
registration is granted without use, is there a time by which use must
begin either to maintain the registration or to defeat a third-party
challenge on grounds of non-use?
A trademark or service mark does not generally have to be in use
before it can be applied for or registered, although all applications
for registration should be on the basis that there is a bona fide inten-
tion to use the mark in the course of trade. Proof of use during the
course of an application for registration may also be relevant if the
Registry requires proof to overcome any objection as to the inherent
distinctiveness of the mark. Proof of use may also be required in the
course of opposition proceedings.
If a registration is granted before actual use of the mark, the
proprietor (or its licensee) must put that mark to genuine use in the
course of trade within the period of five years following the date
of completion of the registration procedure. If there are no proper
reasons for such non-use, the registration may be revoked. A regis-
tration may also be revoked if the use of a mark should cease or be
suspended for an uninterrupted period of five years, and there are no
proper reasons for non-use.
It is possible to file priority claims in respect of corresponding
applications filed in Paris Convention or World Trade Organization
member countries within six months of the first application in any
such country (other than Singapore) for the registration of the same
trademark in respect of the same goods or services. When a priority
is claimed, the filing date of the Singaporean application is replaced
by the earlier date of the first filing. This allows the applicant to claim
rights and protection from that earlier date.
8 Appealing a denied application
Is there an appeal process if the application is denied?
All appeals against a decision of the registrar (whether as to the regis-
trability of the mark or the outcome of an opposition) are to be made
to the High Court. The appeal procedures are governed mostly by
specific rules under the rules of court. Further appeals from the High
Court are possible, with leave, to the Court of Appeal, which is the
highest appellate court in Singapore.
9 Third-party opposition
May a third party oppose registration, or seek cancellation of a
trademark or service mark? What are the primary bases of such
challenges, and what are the procedures?
Any person may oppose the registration of a mark by lodging a
notice of opposition during the two-month period following pub-
lication of the trademark in the Trademarks Gazette. Oppositions
may be based on any ground available under the TMA, including
the inherent distinctiveness of the mark, bad faith, existence of ear-
lier trademark, where the use of the mark is liable to be prevented
by virtue of any law protecting an unregistered mark (eg, rights in
passing-off), copyright law or the law with regard to protection of
designs, to name a few.
A registered trademark may also be cancelled, revoked or invali-
dated, which are three distinct concepts. Cancellation of a trademark
can only be made by the proprietor while any third party may apply
for revocation or invalidation. Cancellations are made by the pro-
prietor by application to the registry. Applications for revocations
and invalidation are either through an application to the Registry or
to the court (typically as a claimed counterclaim by a defendant in
infringement proceedings by the owner of the registered mark).
Revocation, on the other hand, can only be made on specific
grounds (including non-use over a certain duration) and, if granted,
will take effect only from either the date of the revocation appli-
cation (or an earlier date accepted by the Registry or the court).
By contrast, an invalidated mark is deemed never to have been
registered.
10 Duration and maintenance of registration
How long does a registration remain in effect and what is required
to maintain a registration? Is use of the trademark required for its
maintenance? If so, what proof of use is required?
The registration of a trademark is for a period of 10 years from the
date of registration (which is, in turn, the date of the application for
the mark) but this may be renewed for successive 10-year periods.
Although no evidence of the use of the mark needs be filed to main-
tain the registration, a registration may be revoked for non-use (see
answer to question 7 above). Proof of use should comprise evidence
of the good-faith use of the mark in the course of trade. Use should
be of the mark as registered (discounting immaterial differences),
and in Singapore.
11 The benefits of registration
What are the benefits of registration?
Fundamentally, a registration creates a property right that can be
dealt with as an asset and gives the owner a legally enforceable right
to exclusive use of the mark in the course of trade as a trademark for
the goods and/or services for which it is registered. It also gives the
public due notice of the owners rights in the mark.
A registration can also give the owner a litigation advantage in
that, unlike unregistered rights in passing-off, where goodwill must
be proved in each case, the owner can rely on the registration to
establish the existence of a legal right in an infringement claim. Nota-
bly, proof of goodwill in a passing-off claim can add another layer
of factual complexity and require more evidence in what is usually
already a fact-centric dispute.
A registration also permits the owner to use additional enforce-
ment provisions in the TMA, including provisions that criminalise
trading in counterfeit goods. This in turn allows the owner to call on
the assistance of governmental/law enforcement authorities including
in raids or border enforcement for the seizure of counterfeit goods.
12 Assignment
What can be assigned?
A registered trademark or an application for registration of a mark
may be assigned (whether in whole or in part) as personal property,
either with or without goodwill. Apart from the need for the assign-
ment to be in writing (see question 13), there is no specific need to
prove, for example, whether the assignment includes goodwill or
the business to which the mark is used. By contrast, the assignment
of an unregistered mark is only valid under Singaporean law if it is
assigned only with the transfer of goodwill in the business to which
it relates.
13 Assignment documentation
What documents are required for assignment and what form must
they take?
The assignment of a registered trademark must be in writing signed
by or on behalf of the assignor (or his personal representative).
SINGAPORE WongPartnership LLP
220 Getting the Deal Through Trademarks 2012
The assignment must be for consideration (ie, a legal benefit to the
assignor or legal detriment to the assignee) if it is to be executed as
a contract. Alternatively, in the absence of consideration, the assign-
ment can be executed as a deed. Notarisation of the assignment
document is not necessary.
14 Validity of assignment
Must the assignment be recorded for purposes of its validity?
Failing to register the assignment can create difficulties in that the
transaction is ineffective as against a person acquiring a conflict-
ing interest in or under the registered trademark in ignorance of the
transaction.
15 Security interests
Are security interests recognised and what form must they take?
Must the security interest be recorded for purposes of its validity or
enforceability?
The TMA recognises the granting of a security interest over both a
registered trademark and the application for registration of a trade-
mark or any right under these. Fixed and floating security interests
over a registered trademark or any right in or under it are recognised.
The document evidencing the security interest must be registered. A
failure to register the security interest can create difficulties especially
if a third party subsequently obtains a conflicting right in ignorance
of the interest. Notarisation of the document evidencing the security
interest is not necessary.
16 Markings
What words or symbols can be used to indicate trademark use or
registration? Is marking mandatory? What are the benefits of using
and the risks of not using such words or symbols?
The symbol can be used to denote that a sign is intended as a
trademark. The use of such a symbol will assist in educating the pub-
lic that the sign is intended as a trademark and this in turn may help
allow a mark to acquire or maintain its distinctiveness as a trade-
mark. The symbol is used to indicate that the mark is registered.
Use of either symbol is not mandatory. However, it should be noted
that if the symbol is knowingly applied to falsely represent that a
mark is registered, this constitutes an offence under the TMA.
17 Trademark enforcement proceedings
What types of legal or administrative proceedings are available to
enforce the rights of a trademark owner against an alleged infringer,
apart from previously discussed opposition and cancellation actions?
Are there specialised courts or other tribunals? Is there any provision
in the criminal law regarding trademark infringement or an equivalent
offence?
Claims for infringement of a registered trademark must be brought
in the High Court. Criminal offences concerning trademarks under
the TMA may be prosecuted. Border enforcement measures are also
available in Singapore.
18 Procedural format and timing
What is the format of the infringement proceeding?
Civil actions for trademark infringement are typically commenced
via writ actions, and will involve the filing of pleadings, discovery,
the hearing and disposal of interlocutory applications, the exchange
of evidence in affidavits and ultimately trial in open court with the
cross-examination of witnesses and the filing of submissions). Inter-
locutory applications can include the application for interlocutory
injunctions, which may be heard on an ex parte basis (ie, hearings
where only one side to the dispute is present) or on an inter partes
basis (ie, contested or heard between the parties). An interlocutory
application will involve the filing of supporting evidence by affidavits
and submissions (usually in chambers as opposed to open court).
It is also possible to seek summary judgment (ie, a decision for the
plaintiff or the defendant in the case of a counterclaim on any or all
issues without trial) but this is usually for clear-cut cases for which
there is no arguable defence to the claims in issue.
Criminal enforcement proceedings do not generally include dis-
covery but will similarly involve the process of hearing of evidence
at trial in an open court.
In both criminal and civil proceedings, experts can be called upon
to assist the court. There are no jury trials in Singapore. Hence, the
judge at first instance will make a determination based on the facts
and the applicable law. It can take about 12 to 18 months for the civil
litigation process, depending on the complexity of the matter and
the number of interlocutory applications taken out. The time frame
for criminal matters would depend on the approaches taken by the
prosecuting party, representations made, plea bargains and any other
matters that arise in the run-up to prosecution.
19 Burden of proof
What is the burden of proof to establish infringement or dilution?
The general rule for civil cases is that the claimant asserting infringe-
ment or dilution has the legal burden of proving its case. The stand-
ard applied is typically on the balance of probabilities. The general
rule for criminal cases is that the prosecuting party has the legal
burden of proving the charges beyond reasonable doubt, which is
a higher standard.
20 Standing
Who may seek a remedy for an alleged trademark violation and under
what conditions? Who has standing to bring a criminal complaint?
A trademark owner can bring proceedings in its own name. A
licensee may only bring civil proceedings in its own name if it is an
exclusive licensee and it will otherwise require the cooperation of the
owner (including joining the owner as a co-defendant if the owner
refuses to join). Both the owner and licensee may file a police report
or criminal complaint.
21 Foreign activities
Can activities that take place outside the country of registration
support a charge of infringement or dilution?
The scope of the protection under the TMA or common law is gener-
ally confined to activities occurring (in the case of the TMA) or (addi-
tionally, for the common law tort of passing-off) having their impact
within Singapore. As an example, border enforcement provisions
only apply if they relate to the importation or threatened importation
into Singapore of infringing goods.
22 Discovery
What discovery devices are permitted for obtaining evidence from an
adverse party, from third parties, or from parties outside the country?
In civil proceedings involving a writ action (ie, a trial), there is a uni-
form obligation on all litigants to give discovery to the other party of
all evidence in its possession, custody or power that is relevant. There
are some exceptions, particularly evidence that is covered under rules
relating to legal privilege. It is also possible, in some cases, to seek
pre-action discovery (ie, applications to compel a party to provide
evidence prior to the commencement of a particular action). The
orders to compel discovery range from orders (subpoenas) to pro-
duce a document or attend trial, to specific interlocutory or orders
by court that are ultimately backed by the authority of the court
www.gettingthedealthrough.com 221
WongPartnership LLP SINGAPORE
(in breach of which there may be criminal contempt proceedings).
Discovery is a standard feature of civil litigation and costs will vary
depending on the nature of the case and evidence involved. It is criti-
cal to use discovery techniques efficiently, electronic or otherwise,
since these can and often do influence the outcome of a trial or result
in a settlement.
23 Timing
What is the typical time frame for an infringement or dilution, or
related action, at the preliminary injunction and trial levels, and on
appeal?
Proceedings typically last between 12 to 18 months, although it is
possible to seek the directions of the court for an expedited trial
or urgent hearing dates for applications in chambers. Requests for
interim injunctions can be heard by the court within the span of a
few days.
Appeals for infringement proceedings under the TMA are to the
Court of Appeal and the time taken for appeals to be heard can range
from a few months to a year. Dilution actions are also brought before
the High Court and are appealable to the Court of Appeal.
24 Litigation costs
What is the typical range of costs associated with an infringement or
dilution action, including trial preparation, trial and appeal?
Costs will vary according to the evidence and complexity of the case,
including the nature of the proceedings involved. The general rule is
that a successful party may recover its costs from the losing party, but
the usual result is that costs recovered are unlikely to meet all legal
costs and disbursements incurred. The amount of costs awarded may
be determined by the court.
25 Appeals
What avenues of appeal are available?
Appeals on decisions of a registrar under the TMA are to the High
Court, and the leave of the court is required to further appeal to the
Court of Appeal, the highest appellate court in Singapore. Appeals
from infringement proceedings under the TMA (which are heard,
in the first instance, in the High Court) are to the Court of Appeal.
Passing-off claims may be brought in either the subordinate courts
or the High Court. Appeals from the subordinate courts may be
through the High Court and may in relevant cases, lie from there
onto the Court of Appeal.
26 Defences
What defences are available to a charge of infringement or dilution, or
any related action?
Assuming a case for infringement under the TMA is made out, the
defences that are prescribed under the TMA include the following,
namely that the infringing use:
is consented to by the owner;
is in respect of genuine goods/parallel imports;
is of the defendants own registered mark;
refers to the name or address of the defendant and such use is in
accordance with honest practices;
is actually descriptive or concerns the purpose or characteristics
of the goods; and
was first begun prior to (and has been continuously used since)
the earlier of either the registration of the mark or the first use
by the registered owner of its own mark.
Other defences or arguments may also be available depending on the
facts (such as that the owners registration is subject to a limitation
or disclaimer, or that there has been significant delay or acquiescence
by the owner etc).
The defences to a claim for passing-off, assuming that all the
elements of a prima facie case (including the existence of goodwill,
likelihood of confusion and damage) are made out, include the
claims that:
the acts in question do not carry a distinctive reference to the
claimants goods, services or business;
the acts in question are covered under a concurrent or independ-
ent right to use the mark;
there has been acquiescence or delay by the claimant; and
there is no likelihood of appreciable damage.
Other defences or arguments may also be available depending on
the facts.
27 Remedies
What remedies are available to a successful party in an action for
infringement or dilution, etc? What criminal remedies exist?
Remedies under the TMA for infringement of a registered trademark
include:
damages;
an account of profits;
statutory damages (subject to financial limits and other
factors);
prohibitive injunctions to cease the infringing use;
orders to erase, remove or obliterate the offending sign;
orders for delivery up, forfeiture and/or destruction of infringing
goods, materials or articles; and
declaratory judgments (ie, a declaration by the court that a par-
ticular act was an infringement).
Monetary relief is assessed on a compensatory basis and the loss must
be proved by the claimant with a typical basis of claim being the lost
profit on sales, lost royalties (in licensing scenarios) etc. Preliminary
and final injunctions may be obtained, with preliminary injunctions
being generally granted in cases where the balance of convenience
lies in favour of granting the injunction and final injunctions being
granted after a trial on the merits of the case.
Criminal remedies are generally in the form of fines, sentences
of imprisonment (in appropriate cases), orders for forfeiture and
destruction of goods or articles.
28 ADR
Are ADR techniques available, commonly used and enforceable? What
are the benefits and risks?
ADR techniques (such as mediation and arbitration) are generally
available and common, with mediation being a standard court-sup-
Recent judgments have pointed to an emerging trend in
Singaporean courts on the issue of whether, in claims for
infringement, the alleged infringing mark must be shown to have
been used as a trademark (ie, a as a badge of origin denoting
the source of the goods/services) (the narrow view of use), or
whether the claimant need only show that the infringing use is
liable to affect the functions of the registered mark (the broader
view of use). The decisions of the Singaporean courts have tended
to indicate an inclination that to be infringing, the alleged infringing
mark must have been used in a trademark sense (ie, as a badge
of origin), and therefore the narrow view of use would apply. We
expect that the jurisprudence is likely to continue to develop and
further definitive clarity on the point will emerge in due course.
Update and trends
SINGAPORE WongPartnership LLP
222 Getting the Deal Through Trademarks 2012
ported element in litigation. Since they involve a mutual agreement
between the parties to submit their dispute, these will usually only
arise in the context of commercial disputes (eg, where there is a
pre-existing agreement between the parties). One of the chief benefits
of mediation lies in the ready framework for the parties to reach a
settlement, although one risk is that if mediation fails, the cost of
choosing mediation would have been an additional wasted expense.
Arbitration can be a practical option in situations where multi-juris-
dictional enforcement/issues arise. The arbitral process offers flex-
ibility and confidentiality to the parties. However, if a declaratory
judgment is required or is important to a claimant, or it is necessary
to establish a public record of successful enforcement of rights, this
could conflict with the usual confidentiality of arbitral proceedings.
Additionally, due to the private and personal nature of an award
in arbitration, the arbitral body cannot, as a matter of law, oust
the jurisdiction of the court over matters that are solely within the
courts purview (in respect of the determination of the validity or
invalidity of rights, determinations on the status and ownership of
rights accorded under statute etc).
29 Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not
used domestically? If so, must the foreign trademark be famous
domestically? What protection is provided?
A well-known trademark can be protected under the TMA, whether
or not such mark has been registered in Singapore and whether or
not the owner of the mark has any business or goodwill in Singapore.
The mark must, however, be well known in Singapore. A trademark
that is well known to the public at large also enjoys wider protection
than a trademark that is only well known to a particular segment of
the public. The protection granted is limited to injunctive relief and
no damages are prescribed under the TMA for such marks.
WongPartnership LLP
Lam Chung Nian chungnian.lam@wongpartnership.com
Jeffrey Lim jeffrey.lim@wongpartnership.com
One George Street Tel: +65 6416 8000
#20-01 Fax: +65 6532 5711
Singapore 049145 www.wongpartnership.com
TRADEMARKS 2012 ISSN 1745-4638
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