SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
Proving Acquired Distinctiveness/Secondary Meaning The trade mark applicant bears the burden of prov - ing that its mark has acquired a distinctive character as a result of use before the date of the trade mark application. The factors that may be relevant in the analysis include: • the nature of the mark; • the market share held by goods bearing the mark; • how intensive, geographically widespread and long-standing the use of the mark has been; • the amount invested by the proprietor in promoting the mark; • the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from the proprietor; • evidence from trade or other professional associa - tions, (where the competent authority has difficulty in assessing the distinctive character); • an opinion poll; • the fact that the mark does or does not contain an element descriptive of the goods or services in question; • the prevalence of the wide variety of actual trade mark and non-trade mark use; • the promotion and advertising by other traders of the same mark or similar marks; • all relevant actions by other traders of similar goods and services which have the effect of erod - ing the general perception of the average discern - ing consumer linking the inherently non-distinctive trade mark in question to the identity of the origina - tor of the goods or services; and • all relevant actions by the promoter of the trade mark in using the trade mark in question constantly as its badge of trade origin, by inscribing the mark invariably on all their goods, by extensively and intensively promoting, advertising, and educating the average discerning consumer of the promot - er’s trade mark, and relevant enforcement action against infringers to protect its registered trade mark. 2.3 Trade Mark Rights Section 26 of the Trade Marks Act provides that the proprietor of a registered trade mark has the exclusive rights to use the trade mark and to authorise other
persons to use the trade mark in relation to the goods or services for which the trade mark is registered. The proprietor has the right to obtain relief under said Act for infringement of its trade mark. The above rights persist throughout the term of a mark. 2.4 Use in Commerce Section 27 (4) of the Trade Marks Act states that for the purposes of the infringement provisions (Sections 27, 28, 29 and 31 of the Trade Marks Act) a person uses a sign if, in particular, they: • apply it to goods or the packaging thereof; • offer or expose goods for sale, put them on the market or stock them for those purposes under the sign, or offer or supply services under the sign; • import or export goods under the sign; • use the sign on an invoice, wine list, catalogue, business letter, business paper, price list or other Notwithstanding the foregoing, a person who applies a sign to any material used or intended to be used for labelling or packaging goods, or who uses it on any document described in Section 27 (4)(d) of the Trade Marks Act or in advertising, is deemed not to use the sign if, at the time of such application or use, they do not know nor have reason to believe that the proprie - tor or a licensee of the registered trade mark did not consent to such application or use of the sign. It is necessary to establish that the defendant has used the sign as a trade mark, in contrast to a purely descriptive use. 2.5 Notices and Symbols The proprietor of a registered mark may use the encir - cled R symbol next to the mark. If the mark is not registered, but is used as a trade mark, the TM symbol may be used. However, there is no requirement to use these symbols in Singapore. 2.6 Related Rights A trade mark can also be protected by copyright or related rights. commercial document; or • use the sign in advertising.
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