SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
protection, so long as it is a sign capable of being represented graphically and capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Marks that consist of the shape of goods will be refused registration under Section 7 (3) of the Trade Marks Act if, inter alia, they consist exclusively of: • the shape that results from the nature of the goods themselves; • the shape of goods that is necessary to obtain a technical result; or • the shape that gives substantial value to the goods. This will be particularly relevant for the protection of Part 8 and the First and Second Schedules of the Trade Marks Act govern collective and certification marks. An applicant for registration of a collective mark/certification mark must file with the Registrar regulations governing the use of the mark. For a collective mark, the regulations must specify: • the persons authorised to use the mark; • the conditions of membership of the association; and • where they exist, the conditions of use of the mark, including any sanctions against misuse. For a certification mark, the regulations must indicate: • who is authorised to use the mark; • the characteristics to be certified by the mark; • how the certifying body is to test those characteris - tics and to supervise the use of the mark; • the fees (if any) to be paid in connection with the operation of the mark; and • the procedures for resolving disputes. Geographical indications The Geographical Indications Act 2014 provides for the protection of geographical indications in relation to industrial designs as trade marks. Collective and certification marks
goods, and for matters connected therewith. Section 4 provides that, subject to the provisions of the Act, an interested party of goods identified by a geographical indication may bring an action against a person for carrying out an act to which the section applies in rela - tion to the geographical indication. However, there are various exceptions, such as Section 13, where Sec - tion 4 does not apply to the use in the course of trade by a person of that person’s name or the name of that person’s predecessor in business, except where the name is used in such a manner as to mislead the public. Specific Marks Protected by Statute Sections 56 and 57 of the Trade Marks Act provide that a trade mark may not be registered if it consists of or contains: • the flag of a Convention country (defined as a country or territory that is a party to the Paris Con - vention or a member of the WTO); • armorial bearing and other state emblem of a Con - vention country; • official sign and hallmark adopted by a Convention country; and • armorial bearing, flag, emblem, abbreviation and name of an international organisation of which one or more Convention countries are members. Protection of Well-Known Marks Singapore protects marks that are well known outside Singapore but are not yet in use or registered in Sin - gapore. However, such protection will only be afforded where it is shown that the mark in question is also well known in Singapore. 2.2 Essential Elements of Trade Mark Protection Elements for Trade Mark Protection The essential elements of trade mark protection are that it is a sign capable of being represented graphi - cally, and capable of distinguishing goods or services dealt with or provided in the course of trade by a per - son from goods or services so dealt with or provided by any other person. A trade mark must also be suf - ficiently distinctive (see also further comments below).
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