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Singapore - New Trade Marks Act

We have been advised that on January 15, 1999 a new Trade Marks Act entered into force in Singapore. The new provisions will enable Singapore to meet the requirements of the TRIPS Agreement and to adhere to the Paris Convention, as well as the Madrid Protocol, in the future. The principal changes effected under the new Act are summarized below.

1. The definition of a mark has been broadened to include any visually perceptible sign capable of distinguishing the goods or services of a person in respect of which it is registered from the goods or services of another person and may include three-dimensional shapes, colors, and aspects of packaging.

2. A trademark shall not be registered if it consists of a geographical indication in respect of wines or spirits and it is used or proposed to be used in respect of wines or spirits not originating from the place indicated.

3. The distinction between Parts A and B of the Register have been abolished to create a single Register.

4. A single application may cover several classes of goods and/or services.

5. Applications may now cover retail services.

6. Well-known trademarks are protected.

7. Collective marks are now registrable. (Certification marks remain registrable as they were previously).

8. The term for filing an opposition remains 2 months from the date of publication in the Government Gazette, but the total extension of time to oppose may now not exceed 4 months from the date of publication of the application. The consents of adversaries are no longer required for extensions of time.

9. An action for infringement is now available against the unauthorized use of a confusingly similar mark, not only in respect of the goods and services covered by the registration, as was previously the case, but also in respect of goods and services not covered in the registration which are so similar that a likelihood of deception or confusion exists. An action for infringement is also available against the unauthorized use of a mark in relation to dissimilar goods, if such mark is similar to a registered mark that is well-known in Singapore. The proprietor of a trademark which is entitled to protection under the Paris Convention or the TRIPS Agreement as a well-known mark can restrain the use of an identical or confusingly similar mark.

10. The Act provides for remedies in the event that groundless threats of infringement proceedings are made.

11. Applications filed under the former Act and not advertised as accepted by January 15, 1999 may be converted for examination under the new Act. This option must be exercised by

July 15, 1999.

12. Since marks which were considered inherently unregistrable under the old Act may be registrable under the more liberal criteria of the new Act, conversion of applications for examination under the new Act may be considered for marks which have encountered inherent registrability objections. Similarly, fresh applications under the new Act may be considered for such marks which have been rejected on inherent registrability grounds.


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© Copyright 1999 Ladas & Parry - Posted 3/28/1999
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