SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
Fair Use Defence in Trade Mark Law A person who uses a registered trade mark does not infringe it if that use: • constitutes fair use in comparative commercial advertising or promotion; • is for a non-commercial purpose; or • is for the purpose of news reporting or news com - mentary. 9.3 Exhaustion Singapore adopts a principle of international exhaus - tion of rights. Once a proprietor’s goods bearing their registered trade mark are put on the market anywhere in the world by them or with their consent, their rights in those goods are exhausted. There is no infringement where third parties trade in those goods. An excep - tion applies where the condition of those goods has been changed or impaired and the offending use of the mark has caused dilution in an unfair manner of its distinctive character. As regards copyright law, the copyright owner’s rights in relation to importing and dealing commercially in a genuine article are exhausted once that article has been put on the market by them or with their consent. 10. Remedies 10.1 Injunctive Remedies Available injunctive remedies include: • final injunctions; • interim injunctions; • injunctions prohibiting the disposal of assets (also known as Mareva injunctions); and • search orders (also known as an Anton Piller order). The granting of injunctive relief is at the court’s discre - tion. As a general rule, the following applies. Interim injunctions will be granted only if the claimant can show that: • there is a serious question to be tried; and
• their name or the name of their place of business (ie, the “own name” defence); • a sign to indicate the characteristics of goods/ser - vices (ie, the “descriptive use” defence); or • a mark to indicate the intended purpose of goods/ services (in particular as accessories or spare parts). There is also no infringement where a person uses: • an unregistered mark from a time before the reg - istered proprietor’s first use or registration of the registered mark, whichever is earlier (ie, the “prior user” defence); • another registered mark in relation to the goods/ services thereunder; • the registered mark and such use is fair use in comparative commercial advertising or promotion; or • the registered mark for a non-commercial purpose, or for the purpose of news reporting or news com - mentary. See also 9.3 Exhaustion on exhaustion of rights. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Fair Use Defence in Copyright Law It is a permitted use of a work to make fair use of that work. This inquiry into fairness is based on the follow - ing non-exhaustive factors: • the purpose and character of the use, including whether the use is of a commercial nature or is for non‑profit educational purposes; • the nature of the work or performance; • the amount and substantiality of the portion used in relation to the whole work or performance; and • the effect of the use on the potential market for, or value of, the work or performance. The fair use defence is an open-ended one. The Copy - right Act additionally identifies three specific catego - ries of permitted use – ie, fair use for the purposes of: • reporting news; • criticism or review; and • research or study.
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