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Definition of "Use"
S2(4) TMA: References in this Act to use (or any particular description of use) of a trade mark, or of a sign
identical with, similar to, or likely to be mistaken for a trade mark, include use (or that description of use)
otherwise than by means of a graphic representation.
S27(4) TMA: (4) For the purposes of this section and sections 28, 29 and 31, a person uses a sign if, in
particular, he
(a) applies it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under
the sign, or offers or supplies services under the sign;
(c) imports or exports goods under the sign;
(d) uses the sign on an invoice, wine list, catalogue, business letter, business paper, price list or other
commercial document, including any such document in any medium; or
(e) uses the sign in advertising.
S27(1)
S27(2)
Marks
Goods
Need confusion?
Identical
Identical
No
Identical
Similar
Yes
Similar
Identical Yes
or similar
Framework:
Was infringer acting without consent?
Was the offending sign used in the course of trade?
Are marks identical or similar?
Are goods/services identical or similar?
If necessary, is there a likelihood of confusion?
What remedies?
will generally be appropriate to have regard to other relevant circumstances (see below).
Similarity is assessed from the viewpoint of the average consumer who would exercise some care and a
measure of good sense in making his purchases, not that of an unthinking person in a hurry. (Hai Tong at
[40(c)]; Polo at [34])
Note: This viewpoint is the same as that which is assumed when assessing the separate but related
question of whether there is likelihood of confusion.
Further, the average consumer has imperfect recollection. As such, the 2 contesting marks are not to be
compared side by side and examined in detail for the sake of isolating particular differences. (Hai Tong at
[40(d)])
Instead, the court will only consider the general impression likely to be left by the essential or
dominant features of the marks on the average consumer.
Sub-arguments
That first syllable is of great importance in determining similarity and thus marks can be
distinguished
However as the marks are both being applied to similar businesses, the court will not consider the
visual aspects along but also the sound significance of the names and general impression (de
Cordova v Vick)
4. the trade channels through which the goods or services reach the market;
5. in the case of self-serve consumer items, where in practice they are respectively found or likely to
be found in supermarkets and in particular whether they are, or are likely to be, found on the same
or different shelves;
6. the extent to which the respective goods and services are in competition with each other: that
inquiry may take into account how those in trade classify goods, for instance whether market
research companies, who of course act for industry, put the goods or services in the same or
different sectors.
Jacob J's factors in British Sugar must not be regarded as requirements that must all be satisfied before the
goods can be treated as similar. (Johnson & Johnson at [18])
If all the circumstances are taken into account, the better view is that the goods are indeed similar
and it is necessary to consider whether there is a likelihood of confusion as a result of the similarity.
Where a product is commonly available and purchased by the general public, the relevant segment of the
public would be the general public, though the court will try to ascertain who the target consumers really
are (Hai Tong at [95]; National Fittings at [102]).
The average consumer need not, depending on the specific facts, necessarily mean the general public.
(National Fittings at [97])
More specialized products might only be purchased (if at all) by a more specific cross section of the
public (which will itself conceivably vary in size, depending on how specialised the product is,
together with allied factors such as the price charged). (National Fittings at [97])
In National Fittings, the SGHC found (at *103+) that the average consumer of pipe fittings such as
those produced by the plaintiff and Nation Fittings would not potentially be just any person but,
rather, plumbers and contractors.
While it is permissible to have regard to extraneous factors, this does not include factors which are
inconsistent with the legislative framework (because they impermissibly curtail the rights granted to the
registered proprietor of a trademark) (Hai Tong at [87]).
For example, it is not permissible to take into account differences in the colour of the packaging
that happens to have been used. This is because a proprietors exclusive right to use his trademark
does not usually depend on the type or colour of packaging on which it is applied. If a later sign
were to be regarded as dissimilar because it has been applied on a product that bears a different
colour of packaging, this could curtail the right of the proprietor of the registered mark to use his
mark with packaging of that colour. (at [85(c)(iv)])
Note: ...It may well be, in the final analysis, that the approach set out above, when applied in real
cases, might often prove to be a distinction without a difference when compared to the global
assessment approach... but we consider it important to retain the conceptual clarity and to ensure
that the analysis is carried out in a manner that is faithful to the statutory provisions that are
applicable here (at *96+)
Factors which may aid in the assessment of whether there is a likelihood of confusion include (Hai Tong at
[94]):
the disparity in the prices of the goods or services concerned, where this goes towards drawing out
the real and substantive differences between them or towards highlighting the different degrees of
care likely to be applied by the prospective customer in each instance
o As observed by Jacob LJ in Reed Executive plc v Reed Business Information Ltd at *78+, a fifty
pence purchase in the station kiosk will involve different considerations from a once-in-alifetime expenditure of 50,000
the nature of the customer and of the article in question;
o E.g. for medicinal or highly technical products, it would be legitimate for the court to have
regard to the fact that because of their nature, a higher degree of similarity between the
contesting marks might have to be shown to warrant a finding of likely confusion than when
dealing with products that demand less fastidiousness or care on the part of the relevant
segment of the public. (Hai Tong at [85(c)(i)])
o see also factor (g)
the degree of similarity between the contesting marks and the overall impression given by them;
o It would be legitimate to consider the contesting marks and the degree of similarity that is
found to exist. As a self-evident proposition, the greater the similarity, the more likely that
confusion may ensue. (Hai Tong at [85(c)(iii)])
the imperfect recollection of the average consumer, because this is directly related to the
likelihood of confusion in this group;
the locations at which the goods or services concerned are sold or offered
o Because this might aid in assessing the real similarities or differences between the goods or
services as well as between the respective groups of customers that each category of goods
or services might attract;
the steps taken by the defendant to differentiate his goods or services from those of the
registered trade mark proprietor, because this goes directly to the degree of similarity or difference
between the goods or services in question; and;
the importance of the goods or services concerned to the consumer.
o As observed by the European General Court in Trubion, medicinal products, whether or not
acquired on prescription, and dietetic products in general may be regarded as products to
which consumers who are reasonably well-informed and reasonably observant and
circumspect will pay a high degree of attention. It goes without saying that this category of
products is not closed.
The factors relating to the (i) similarity between the goods or services concerned, (ii) the similarity
between the contesting marks and (iii) the characteristics of the relevant segment of the public must be
assessed in an interdependent way. (Hai Tong at [97])
In Sarika, the court had regard to the high degree of similarity between the contesting marks and
the proximity in the nature of the goods concerned as consumable foodstuff in assessing the
likelihood of confusion.
Some arguments
Evidence of confusion on the part of customers is relevant
Argue there was implied licence to use look at conduct of parties
Representation or inducement to use mark or consent
in infringement proceedings, the whole of the actual context of use will be relevant to the confusion
inquiry.
Similarity of goods or services - in the infringement context it will be permissible to have regard to the
classification in which the allegedly infringing item or service would have been inserted had the alleged
infringer sought registration of his mark.
Defences to infringement
S
23
Provision
Invalidity of registration
(1)
The registration of a trade mark may be declared invalid on the ground that
the trade mark was registered in breach of section 7.
(4)
(5)
24(1)
Remarks
Where the proprietor of an earlier trade mark or other earlier right has
acquiesced for a continuous period of 5 years in the use in the course of
trade of a registered trade mark in Singapore, being aware of that use, there
shall cease to be any entitlement on the basis of that earlier trade mark or
other right
(a) to apply for a declaration that the registration of the later trade mark
is invalid; or
28(1)(a)
28(1)(b)
28(1)(c)
S28(2)
S28(4)
29
(b) to oppose the use of the later trade mark in relation to the goods or
services in relation to which it has been so used, unless the
registration of the later trade mark was applied for in bad faith.
Use of own name in accordance with honest practices in industrial and
commercial matters: s28(1)(a)
Use of a sign to indicate quality, purpose other characteristic of
goods/services in accordance with honest practices in industrial and
commercial matters
Use of sign to indicate the intended purpose of goods (in particular as
accessories or spare parts) or services in accordance with honest practices in
industrial and commercial matters
Use of "Volvo" can constitute prima facie infringement even when used with
other words or material added although using "Volvo" mark was necessary
to indicate the relevant service offered, the Df was deprived of that benefit
because its use of the TM was likely to create an impression of a "continuing
commercial connection" with the claimant "must be in accordance with
hoest practices" [Aktiebolaget v Heritage]
Prior Use
Person who uses a registered trade mark does not infringe the trade mark if
such use
(a) constitutes fair use in comparative commercial advertising or promotion;
(b) is for a non-commercial purpose; or
(c) is for the purpose of news reporting or news commentary
(1) Notwithstanding section 27, a registered trade mark is not infringed by
the use of the trade mark in relation to goods which have been put on the
market, whether in Singapore or outside Singapore, under that trade mark
by the proprietor of the registered trade mark or with his express or implied
consent (conditional or otherwise).
Parallel
import
if ____ had an existing registered mark, _____ could raise an objection under s
the key question in relation to ss 22(1)(a) and 22(1)(b) would be whether there has been use of the
Opposed Mark as a trade mark which can be considered to be genuine. [Wing Joo Loong]
the concept of genuine use was closely linked to the function of a trade mark and the purpose of
registering a trade mark
use receipts to prove