SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
of any infringement occurring after the date of the assignment and before the date of the application to register the assignment. It is likewise possible but not compulsory to register a licence. Registration, however, provides deemed notice of the licence to the public. Such notice oper - ates to bind the licensor’s successor-in-title to the licence, unless the licence provides otherwise. There is no copyright registry or register. Conse - quently, it is not possible to register copyright-related transactions. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Copyright and trade mark infringement actions may not be brought more than six years after the infringe - ment takes place. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Trade Mark Claims When faced with unauthorised use of its trade mark, a trade mark owner may explore claims based on registered trade mark infringement, passing off, and protection of a well-known trade mark. Trade Mark Infringement A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, the person uses in the course of trade a sign that is identi - cal with the trade mark in relation to goods or services which are identical with those for which it is registered. Alternatively, there is infringement if, without the con - sent of the proprietor of the trade mark, the person uses in the course of trade a sign and there exists a likeli - hood of confusion on the part of the public because: • the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or
• the sign is similar to the trade mark and is used in relation to goods or services identical with or simi - lar to those for which the trade mark is registered. Passing Off Passing off is based on common law rights acquired through prior use, irrespective of trade mark registration. To establish passing off, it must be established that: • the claimant has acquired goodwill in its business in Singapore; • the claimant’s mark has acquired distinctiveness (typically demonstrated through evidence of use), and there is a misrepresentation by the defendant to the public leading or likely to lead the public to the belief that the defendant’s goods/services are the claimant’s, or that parties are commercially connected; and • the claimant is likely to suffer damage as a result of Under the Trade Marks Act, well-known trade marks are protected from dilution, both by blurring and tar - nishment, and from others taking unfair advantage of their distinctive character. Protection does not depend on registration or goodwill in Singapore. The proprie - tor of a well-known mark may seek an injunction to restrain the use of an offending mark in the course of such misrepresentation. Well-Known Trade Marks There are three categories of copyright infringement: • primary infringement, where a person does, in Sin - gapore, any act comprised in the copyright without the copyright owner’s consent; • authorising infringement, where a person author - ises the doing, in Singapore, of any act comprised in the copyright without the copyright owner’s consent; and • secondary infringement, where a person imports or distributes an infringing article for the purpose of commercial dealing without the copyright owner’s consent. In addition, the Copyright Act protects rights man - agement information (RMI) – that is, information that trade in Singapore. Copyright Claims
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