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Infringement

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.

Types of infringing acts

S27(1)

S27(2)

Marks

Goods

Need confusion?

Identical

Identical

No

(a) the sign is identical with the trade mark and is


used in relation to goods or services similar to those
for which the trade mark is registered; or

Identical

Similar

Yes

(b) the sign is similar to the trade mark and is used in


relation to goods or services identical with or similar
to those for which the trade mark is registered,

Similar

Identical Yes
or similar

A person infringes a registered trade mark if, without


the consent of the proprietor of the trade mark, he
uses in the course of trade a sign which is identical
with the trade mark in relation to goods or services
which are identical with those for which it is
registered.
A person infringes a registered trade mark if, without
the consent of the proprietor of the trade mark, he
uses in the course of trade a sign where because

there exists a likelihood of confusion on the part of


the public.

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?

Origins Natural Resources test


Used in the trade mark sense and compared on a mark for mark basis (British sugar)
Use in the course of trade:
As a threshold issue, it must first be shown that the offending sign was used in the course of trade as
trademark (i.e. as a badge of origin) as opposed to purely decorative or descriptive purposes. (Hai Tong v
Ventree (SGCA) at [17])
A defendant who through websites and brochures offered goods for sale under an infringing sign
and who used the infringing sign on catalogues and commercial documents and advertising in the
case Caterpillar inc would have used the mark in the course of trade
The preference for this stricter approach over the broad community approach taken in City Chain
was recently reaffirmed by the SGCA in Hai Tong v Ventree (at [17]).
In Hai Tong, the SGCA found (at [20]) that the allegedly offending sign was used as a trademark as
the Rose Lady sign was prominently displayed on the packaging of the allegedly infringing
products.
In City Chain, the SGCA (at [38]) found that the allegedly offending sign was used for purely
decorative purposes due to the lack of uniformity on how the Solvil flowers were represented on
the watches
Wagamama court considered that another restaurant called Rajamama had a similar sounding
name and look in deciding there was infringement and held that customers might be deceived
Must use be "trade mark use"?
TMs Use in the course of trade must function as a badge of origin, and not descriptive or badge of
support:
SG: City Chain v Louis Vuitton [2010] CA***** (applies to well-known TM also)
Held, at *37+, that we are conscious that a sign may have several functions, one of which is as a badge
of origin... (or for) descriptive purposes. For the TMA, use must be as a badge of origin, the issue
which is a finding of fact that is fact-sensitive and determined on a case-by-case basis.
At [38]: So, if it is used in any other way than as a TM, eg, predominantly as a decorative symbol, then
it will not be considered an infringing use of a TM as the alleged infringing copy was NOT a TM
Thus on the facts, use of the Solvil Flower is decorative, and not indicative of origin.
Singapore position infringing use must be TM use before there can be a TM infringement
Used as a badge of origin but Susanna Leong thinks that SGCA endorsed EU approach to
recognize other possible functions of a TM
Arsenal v Reed
It is important to note that the ECJ is not concerned with whether the use complained about is trade mark
use. The consideration is whether the third party's use affects or is likely to affect the functions of the
trade mark. An instance of where that will occur is given, namely where a competitor wishes to take unfair
advantage of the reputation of the trade mark by selling products illegally bearing the mark. That would
happen whether or not the third party's use was trade mark use or whether there was confusion.
The material consideration was whether the use complained of was liable to jeopardise the guarantee of
origin, not whether the use was trade mark use
L'Oreal v Bellure
Functions of a TM also include guaranteeing the quality of the goods or services in question and
those of communication, investment or advertising

Expansion of TM owners exclusive right in a TM to go beyond a guarantee of trade origin closer


to law of unfair competition
Even though there was no likelihood of confusion, Bellure's cheap perfume imitations were
considered to ride on the coat-tails of LOreal

Can be verbal use in the course of trade


Compare whether marks are identical or similar
Can be tricky because of the concept of "imperfect recollection" in determining whether an almost
identical sign is identical to the RTM blurs what is identical and similar

Are the marks identical?


The test of whether a sign is identical with a registered mark under s 27(1) of the Act entails a strict
interpretation. Minor differences would take the case outside of the definition of identical. (City Chain v
LV at [39]; Nation Fittings at [85])
The protection accorded under this provision cannot be extended beyond the situations for which
it was envisaged, in particular, to those situations more specifically covered by another provision,
e.g., s 27(2)(b) of the Act on similar goods or services or where the sign is similar
Such a strict approach is taken with regard to s 27(1) of the Act because once a case is shown to
fall within that provision, protection ipso facto follows, irrespective of whether there is proof of
likelihood of confusion on the part of the public.
In City Chain, the SGCA found (at [40]) that given the absence of a distinctive circle in the centre of
the Solvil Flower, the Solvil Flower and the Flower Quatrefoil mark were not identical for purposes
of s 27(1) of the Act.
In Mitac International, the mio mark was used by both parties. Although there was aural
similarity, there was no visual identity as the m in the Plaintiffs mark was highly stylised and
distinctive.
In LTJ Diffusion: a sign is identical to a trade mark where it reproduces, without any modification or
addition, all the elements constituting the trade mark or where, viewed as a whole, it contains
differences so insignificant that they may go unnoticed by an average consumer
Are the marks similar? [also refer back to the similarity factors in the normal opposition proceedings
above for visual/aural/conceptual similarity]
the marks are to be considered without regard to any added or extraneous matter factors, done
mark-for-mark
In considering the similarity between the marks, an assessment of their visual, aural and
conceptual similarities is undertaken (Hai Tong v Ventree at [39])this is a question of fact
This is not a mechanistic formula and the law does not require all 3 of be made out before finding
the marks similar. The relative importance of each aspect of similarity will depend on the
circumstances. (Hai Tong at [40(a)])
The similarity between the marks are assessed as a whole without taking into account external matter
and circumstances. (Hai Tong at [40(b)]; Caterpillar Inc at [55])
Note: This is unlike the position when assessing whether there is a likelihood of confusion, where it

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)

Cases where no similarity was found


The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd
Polo vs. POLO PACIFIC The fact that polo is a common English word weighed against finding
similarity. POLO PACIFIC had a special font and design and the only similarity in design was that one word
was common to both marks. No similarity.
Mitac International Corp v Singapore Telecommunications Ltd and another action
Mio mark used by both parties - From the perspective of an average customer, the parties mio marks
were not similar. Their script and font were clearly not visually similar. Apart from the fact that the m in
the plaintiffs trademarks was highly stylised while the m in the marks complained of was very plain, the
letters in the Plaintiffs mio were all of the same size, whereas the letters in the Defendants mio were
of different sizes, namely featuring an elongated I. Furthermore, the placement of the letters in the
Plaintiffs mio was on the same level plane, whereas in the Defendants mio the letters all sat on
different levels.
Cases where similarity was found
City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier
Flower Quatrefoil mark vs. Solvil Flower The Flower Quatrefoil mark was essentially made up of two
shapes, a circle and a petal shape. The circle was surrounded by four identically- shaped petals arranged
evenly around the circle at 90 degree angles from each other
The Solvil Flower was similar to the outline shape of the Flower Quatrefoil mark: there were four petals
arranged at 90 degree angles from each other and the radiated from a common centre. The only
differences were that there was a lack of a distinctive circle in the centre of the Solvil Flower and that the
shape of the petals on the Solvil Flower were minutely different from the from the shape of the petals on
the Flower Quatrefoil mark.
The Court held that looking at the two signs as a whole, there were sufficient similarities to conclude that

they are similar for purposes of s 27(2)(b) of the Act


Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International)
CAT vs. CATPLUS The Court held that the marks were essentially word marks and that the significant
and prominent visual and aural part of the plaintiffs mark was the word CAT, even though some of the
CAT marks were coupled with a triangle device beneath the A in the plaintiffs mark. Thus the offending
marks were similar to the plaintiffs visually and aurally.
The additional inscription of CATPLUS INC, USA at one corner was in small-sized print and is hardly
noticeable. The inscription did not appear in every instance where CATPLUS was used. In any event, even
if anyone noticed the inscription, the prominent word was CAT
Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp)
Carefree vs. Careree - The Court found that Carefree and Careree were visually similar. Both marks
began with the word Care and end with ree, with only a missing f to distinguish the first and the
second. In the context of multilingual Singapore, it was pertinent to note that as a general rule, it was
assumed that non-English-speaking audiences will pay little attention to verbal or textual, as opposed to
visual references

Comparsion of goods or services = identical or similar

Are the goods or services identical?


In determining whether the goods/services are identical, the first reference point is the specification of
goods/services.
If a comparison with the specification shows that the goods/services are not identical, proceed to
consider if they are similar
Once it has been determined that the goods are identical from a comparison of the specifications there is
no need to consider any other factor (Richemont International v Goldlion Enterprise at [18]).
Goods and services will be regarded as identical where they are registered or to be registered in the
same class and specification in opposition proceedings, while 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. [Staywell]

Are the goods or services similar?


In determining the similarity of goods, the comparison is to be made between the alleged infringing goods
and the products in respect of which the trade mark is registered for (and NOT the actual goods of the
trademark owner). (Sarika v Ferrero at [46])
This is in accordance with the wording of the provision
The consideration of whether the goods are similar should take into account the following factors (per
Jacob J in British Sugar Plc applied in Richemont International):
1. the uses of the respective goods or services;
2. the users of the respective goods or services;
3. the physical nature of the goods or acts of service;

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.

Is there a likelihood of confusion?


The plaintiff must show that there exists a likelihood of confusion as to the origin of his goods and the
defendants goods. The likelihood of confusion must be a direct consequence of the identity or similarity
between the marks and between the goods or services to which they are applied. (Hai Tong v Ventree at
[73])
Confusion in this context extends to the situation where the consumer mistakenly assumes some
kind of economic link or connection between goods bearing the registered mark and those bearing
the allegedly infringing sign. (at [73])
There are at least 2 aspects to the element of confusion: (1) mistaking one mark for another, so
that the relevant segment of the public may not even perceive that there are two distinct marks;
(2) where the relevant segment of the public perceives that the contesting marks are different, but
remain confused as to the origin which each mark signifies. (at [74])
o It is not sufficient that the relevant segment of the public would recognise similarities
between the contesting marks if there is no likelihood of confusion as to origin ensuing (at
[75]).
Unlike the inquiry into similarity, which is a somewhat objective inquiry direct at the features of the
marks in question, the inquiry into the likelihood of confusion focuses on the effect that each
similarity is likely to have on the relevant segment of the public. (at [76])
The greater the similarities, the greater the likelihood of confusion. (Hai Tong at [85(c)])
As earlier observed, the comparison of similarity between two contesting marks is done without
regard to external circumstances. However, this is not the case when assessing the extent to which
the goods bearing the contesting marks are similar and the likelihood of confusion among the
relevant segment of the public. (at [85](c))
o In assessing the degree of similarity, it may be appropriate to have regard to steps that have
been taken to differentiate the goods or services. (at [85(c)])
Note: where goods or services in question are identical, then extraneous factors relating to that
element will not rise for consideration in assessing the likelihood of confusion. This follows from
the simple fact that once an element is found to be identical, it ceases to be material to inquire
whether it is similar, and the ways in which it may be differentiated. (at [87])
See also factor [94(c)] below
The test is whether a substantial portion of the relevant segment of the public is likely to be confused.
While not amounting to a majority, the relevant segment of the public must go beyond a de minimis
level. (Hai Tong at [78]; Sarika at [57]).

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)

The registration of a trade mark may be declared invalid on the ground of


fraud in the registration or that the registration was obtained by
misrepresentation.
An application for a declaration of invalidity may be made by any person, and
may be made either to the Registrar or to the Court, except that
(a) if proceedings concerning the trade mark in question are pending in
the Court, the application must be made to the Court; and
(b) if in any other case the application is made to the Registrar, he may at
any stage of the proceedings refer the application to the Court.
Acquisecence

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

(2) Subsection (1) shall not apply where


(a) the condition of the goods has been changed or impaired after they have
been put on the market; and
(b) the use of the registered trade mark in relation to those goods has caused
dilution in an unfair manner of the distinctive character of the registered
trade mark.
"Keep your baby dry" a descriptive term using it is not infringement although "Baby-dry" is a distinctive
term
Oppostion
- grounds of bad faith s24(1) TMA

if ____ had an existing registered mark, _____ could raise an objection under s

COUNTER CLAIM to revoke TM


Revocation of registration
22.(1) The registration of a trade mark may be revoked on any of the following grounds:
(a) that, within the period of 5 years following the date of completion of the registration procedure, it has
not been put to genuine use in the course of trade in Singapore, by the proprietor or with his consent,
in relation to the goods or services for which it is registered, and there are no proper reasons for nonuse;
(b) that such use has been suspended for an uninterrupted period of 5 years, and there are no proper
reasons for non-use;
(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the
trade for the product or service for which it is registered;
a. trade mark which has become a common name in the trade as one which *has come+ to be
used as a description of the product itself
(d) that, in consequence of the use made of it by the proprietor or with his consent in relation to the goods
or services for which it is registered, it is liable to mislead the public, particularly as to the nature,
quality or geographical origin of those goods or services.

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

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