SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
5.5 Legal Remedies Against the Decision of the Trade Mark Office An applicant can appeal to the General Divi - sion 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 appli - cation filed with the Court within 28 days after the Registrar’s decision, and copies must be served on the Registrar, the opponent and any other parties involved. 5.6 Amendment in Revocation/ Cancellation Proceedings There is nothing preventing a trade mark pro - prietor from applying to amend their trade mark during revocation 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 counter - An invalidation action on grounds of fraud would be filed and proceed in the same way as any other invalidation action. If the action is success - ful, the registration obtained through fraud will be invalidated. 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Registered trade marks and copyright are per - sonal property. They are transmissible by assign - ment, testamentary disposition or operation of law. An assignment may be made by way of an agreement supported by consideration, or by claim for revocation or invalidation. 5.8 Measures to Address Fraud
deed. For purposes of the Trade Marks Act and Copyright Act respectively, 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 copyright, 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), exclu - sive 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 addi - tion, 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/services 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 registration. Applications to register copy - right do not exist in Singapore.
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