SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
7.8 Effect of Trade Mark and Copyright Office Decisions The Registry of Trade Marks is a low-cost tribunal that is subordinate to the courts. The Registry is bound by the courts’ decisions and not the other way around. 7.9 Counterfeiting and Bootlegging Counterfeiting Under Trade Mark Law A counterfeit trade mark is a sign which is: • identical with or so nearly resembling the registered trade mark as to be calculated to deceive; and • applied to goods or services without the proprie - tor’s consent and to falsely represent those goods/ services to be the genuine or actual goods/ser - vices of the proprietor or a licensee. In a civil action involving a counterfeit mark, the claim - ant may elect to receive statutory damages in lieu of damages or an account of profits. As regards criminal action, an offender may be liable upon conviction to a fine and/or imprisonment. The court may order forfeiture and destruction of the coun - terfeit goods. Counterfeiting Under Copyright Law The Copyright Act does not expressly deal with coun - terfeiting or bootlegging. Provisions relating to copy - right infringement would apply. Both civil and criminal liability can arise. The remedies for a civil claim include statutory dam - ages in lieu of damages or an account of profits. If convicted of a criminal offence, the offender may be liable to a fine and/or imprisonment. The court may order delivery and forfeiture or destruction of the infringing articles. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings Trade mark and copyright proceedings follow the standard procedural rules laid down in the Rules of
Court 2021 and the Supreme Court of Judicature (Intellectual Property) Rules 2022. Singapore has no specialised intellectual property courts. However, there is a simplified process in the General Division of the High Court for certain intellec - tual property claims (see 7.7 Small Claims ). There is no jury system in Singapore. Questions of fact and of law are decided by judges. 8.2 Effect of Registration The registration of a trade mark provides the regis - tered proprietor with the following benefits: • the proprietor enjoys the right to obtain relief for infringement of that mark; and • the proprietor has a defence against infringement in that the use of its mark in respect of the goods/ services registered under it does not infringe another registered trade mark. There is no copyright registration system in Singapore. 8.3 Costs of Litigating Infringement Actions Practitioners in Singapore generally bill based on time spent. The fees may vary widely. Factors affecting costs include: • the number and complexity of the claims; • the volume of evidence filed; • the length of trial; • the number of witnesses involved; and • whether any interlocutory applications or appeals are filed. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement There are several statutory defences to trade mark infringement, which are briefly outlined below. A person does not commit infringement when they use, in accordance with honest practice in industrial or commercial matters:
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