Defences to Trade Mark Infringement in Singapore

If you are a businessman, you may find your business or product name inadvertently infringing on a trade mark which is already existing on the register. However, there are various defences to trade mark infringement which you may use in order to avoid liability. They are provided for in the Trade Marks Act (TMA). Some of these are explained below.

Invalidity of Registration of the Earlier Trade Mark

If you have been sued for trade mark infringement, you may attack the other trade mark by counterclaiming that it is invalid. As registration of a trade mark provides evidence of validity for all intents and purposes however (see section 101 of the Act), you will have to provide evidence of non-validity to support your claim in court.

Some of the grounds under which a claim of invalidity may be brought include:

1. The trade mark should have been refused registration as it was in breach of section 7 of the TMA. This is provided for under section 23(1) of the TMA. A trade mark will be in breach of s 7 if, for example, if it does not fulfil the definition of a “trade mark” in section 2(1) of the TMA, does not have any distinctive character, or is exclusively made out of signs or indications which may serve in trade to designate some characteristic of the good or service e.g. kind of good, quality or intended purpose. However, it must be noted that under section 23(2) of the TMA, if the trade mark satisfies the definition of a trade mark in s 2(1), it may not be declared invalid if, after registration, it acquires a distinctive character in relation to the goods or services for which it has been registered.
2. The other trade mark is identical to a trade mark which was registered before it and that the goods or services provided under these two trade marks are identical, such that there is a likelihood of the public becoming confused. This is provided for under section 23(3)(a)(i) read with section 8(1) of the TMA.
3. The other trade mark is identical to a trade mark which was registered before it and that the goods or services provided under these two trade marks are similar, such that there is a likelihood of the public becoming confused. This is provided for under section 23(3)(a)(i) read with section 8(2) of the TMA.
4. The registration of the other trade mark was obtained due to fraud or misrepresentation. This is provided for under section 23(4) of the TMA.

Revocation of Registration of the Other Trade Mark

Another offensive move is to attempt to revoke the registration of the other trade mark on grounds other than invalidity. This is provided for under section 22 of the TMA. For example, you may argue that the other trade mark has not been put to genuine use in the course of trade in relation to the relevant goods or services in Singapore during the period of five years after its registration, and that there are no proper reasons for such lack of use.

Alternatively, under the same provision, you may argue that the acts (or inactivity) of the owner of the other trade mark has resulted in the trade mark becoming the common name in the trade for the good or service for which it is registered. A good example is how the word “Google” has become the generic name for all search engines such that it may no longer serve to indicate that a particular search engine originates from the Google company.

Own Name Defence

If you have trademarked your own name as the name of your business, this provides a legitimate defence in an action for trade mark infringement. This is provided for under section 28(1)(a) of the TMA and applies even if your business provides goods or services identical to those of the other business. However, the use of your name has to be in accordance with honest practices in industrial or commercial matters. In other words, the defence will fail if your use of your name as a trade mark is dishonest, e.g. it has caused deception.

Indication of Quality etc.

Under section 28(1)(b) of the TMA, it is a defence if the trade mark is used to indicate

1. Characteristics such as the kind, quality or intended purpose of the goods or services being sold; or
2. The time of production or provision of the goods or services.

However, such use has to accord with honest practices in industrial or commercial matters. For example, there will not be any liability for infringement if your product is labelled as “Oreo cheesecake”, with “Oreo” being the trademarked name of the popular chocolate sandwich cookie, as the word “Oreo” is merely being used to describe the flavour of the cheesecake being sold in this case.

A similar defence applies if the other trade mark happens to be a well-known one, and may be referenced under section 55A(1)(b) of the TMA. Under section 2(7) of the TMA, whether a trade mark may be regarded as well-known in Singapore depends on factors such as the duration, extent and geographical area of any use of the trade mark. Under section 2(8) of the TMA however, a trade mark will automatically be deemed well-known in Singapore if it is well-known to any relevant sector of the public in Singapore (i.e. the actual and/or potential consumers of the business using the already registered trade mark).

Prior Use Defence

Section 28(2) of the TMA provides for a prior use defence, where the use of an unregistered trade mark will not constitute infringement if it has been used continuously in the course of trade before the date of registration of the other trade mark, or before the date of when the other trade mark was first used, whichever is earlier. The requirement of continuous use merely requires there to be more than occasional use of the trade mark; it need not be used every week or even every month.

As can be seen from this article, all is not lost even if you have been found to have infringed on another’s trade mark as you may be able to utilise a defence to avoid liability. As the law on trade marks is highly complex however, you may require specialist advice from a qualified trade mark lawyer in order to get an opinion more tailored to your circumstances.

This article was written by Tan Siew Ann.