SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
2.2 Essential Elements of Trade Mark Protection Elements for Trade Mark Protection The essential elements of trade mark protection are that it is a sign capable of being represented graphically, and capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. A trade mark must also be sufficiently distinctive (see also further comments below). Proving Acquired Distinctiveness/Secondary Meaning The trade mark applicant bears the burden of proving 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 pro - moting 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 associations, (where the competent author - ity has difficulty in assessing the distinctive character); • an opinion poll; • the fact that the mark does or does not con - tain 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 trad - ers of the same mark or similar marks; • all relevant actions by other traders of similar goods and services which have the effect of eroding the general perception of the aver - age discerning consumer linking the inher - ently non-distinctive trade mark in question to the identity of the originator of the goods or services; and • all relevant actions by the promoter of the trade mark in using the trade mark in ques - tion constantly as its badge of trade origin, by inscribing the mark invariably on all their goods, by extensively and intensively promot - ing, advertising, and educating the aver - age discerning consumer of the promoter’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 infringe - ment 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
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