SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
• if the application is made to the Registrar, the Reg - istrar may refer the application to the Court. Partial revocation or invalidation is possible, where grounds for revocation or invalidation exist only in respect of some of the goods/services for which a trade mark is registered. 5.5 Legal Remedies Against the Decision of the Trade Mark Office An applicant can appeal to the General Division of the High Court against a decision of the Registrar as to the registrability of its mark. The appeal must be brought by an originating application filed with the Court within 28 days after the Registrar’s decision, and copies must be served on the Registrar, the oppo - nent and any other parties involved. 5.6 Amendment in Revocation/Cancellation Proceedings There is nothing preventing a trade mark proprietor from applying to amend their trade mark during revo - cation or invalidation proceedings – for example, in order to narrow the specification of goods/services. 5.7 Combining Revocation/Cancellation and Infringement Where faced with a trade mark infringement suit, it is possible for a defendant to file a counterclaim for revocation or invalidation. 5.8 Measures to Address Fraud An invalidation action on grounds of fraud would be filed and proceed in the same way as any other invali - dation action. If the action is successful, the registra - tion obtained through fraud will be invalidated.
it must be in writing signed by or on behalf of the assignor. The assignment can be partial. For trade marks, this means an assignment limited to some of the goods/ services for which the mark is registered. For copy - right, an assignment may apply to some but not all the types of acts comprised in the copyright, or to only a part of each type of act. It may also apply to a part of the whole duration of the copyright. 6.2 Licensing Requirements or Restrictions A trade mark licence may be general or limited (ie, limited to particular goods/services), exclusive or non- exclusive, and perpetual or for a definite period. For purposes of the Trade Marks Act, a trade mark licence must be in writing and be signed by or on behalf of the licensor. In addition, for a licence to be valid, it is a common law requirement for there to be a trade connection between the proprietor and the goods/ser - vices traded by the licensee under the mark. A copyright licence may relate to all or some of the types of acts comprised in the copyright. It can be limited to part of the duration of the copyright. It can be exclusive or non-exclusive. Exclusive licences are valid only if they are made in writing and are signed by or on behalf of the copyright owner. A trade mark application is personal property and is assignable, transmissible and licensable like a regis - tration. Applications to register copyright do not exist in Singapore. 6.3 Registration or Recording of an Assignment or Licence Trade mark assignments are registrable transactions. It is not compulsory to register them. However, until an application to register an assign - ment has been made: • the assignment is ineffective as against a person acquiring a conflicting interest in or under the reg - istered trade mark in ignorance of the transaction; and • the assignee is not entitled to damages, an account of profits or statutory damages in respect
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions
Registered trade marks and copyright are personal property. They are transmissible by assignment, tes - tamentary disposition or operation of law. An assign - ment may be made by way of an agreement sup - ported by consideration, or by deed. For purposes of the Trade Marks Act and Copyright Act respectively,
462 CHAMBERS.COM
Powered by FlippingBook