- Registered owners can sue for infringement under the Trade Marks Act.
- Unregistered owners may rely on passing off, which is harder to prove.
- A letter of demand is the usual first step.
- Remedies include injunctions, damages, an account of profits, and orders against infringing goods.
- There are statutory defences, so check the other side's position before acting.
If your mark is registered: infringement
Infringement generally arises where, without your consent, someone uses in the course of trade:
- An identical mark for identical goods or services.
- An identical or similar mark for identical or similar goods or services, where there is a likelihood of confusion.
Owners of well-known marks can also act in some situations even where the mark is not registered in Singapore. For civil infringement, you do not need to prove that the other party meant to infringe.
If your mark is not registered: passing off
Without a registration, the usual claim is passing off. You must show goodwill in Singapore, a misrepresentation by the other trader that is likely to mislead the public, and damage. This is often harder and more costly to prove than infringement of a registered mark.
Defences the other side may raise
The Trade Marks Act allows some uses of another's mark. Examples include honest use of a person's own name or business address, use to indicate what a product is for, continuous use that began before your registration, fair use in comparative advertising, and non-commercial use. It is worth considering these before deciding how hard to press.
The letter of demand
Most disputes begin with a letter of demand (also called a cease and desist letter), usually sent by a lawyer. It puts the other party on notice, so they cannot later claim they acted in good faith without knowing of your rights. A well-prepared letter typically:
- Identifies your rights and the conduct complained of, with supporting evidence.
- Asks the other party to stop, and sets a reasonable deadline.
- Explains what you may do if they do not comply, and reserves your right to claim damages and other remedies.
Many cases are resolved at this stage, or through negotiation or mediation. Singapore also offers mediation and arbitration of IP disputes, including through WIPO.
Going to court
If the dispute does not settle, the claim can go to court. The Supreme Court has an intellectual property court with specialist judges. Remedies a court may grant include:
- An injunction ordering the infringing use to stop.
- Damages, or an account of the profits the other party made from the infringement.
- In some cases, statutory damages.
- Orders to remove the offending mark, or to deliver up or destroy infringing goods.
Some trade mark misuse, such as counterfeiting, can also be a criminal offence under the Trade Marks Act.
Act promptly and get advice
Before sending a letter, it is worth getting advice on the strength of your rights, the likely defences, and how to word your demands. A lawyer can assess your situation and explain your options.
This article is general information on Singapore law and is not legal advice. Rules and agency policies change, and every situation is different. For advice on your own circumstances, speak with one of our lawyers.
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