SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
6.3 Registration or Recording of an Assignment or Licence Trade mark assignments are registrable transac - tions. It is not compulsory to register them. However, until an application to register an assignment has been made: • the assignment is ineffective as against a per - son acquiring a conflicting interest in or under the registered trade mark in ignorance of the transaction; and • the assignee is not entitled to damages, an account of profits or statutory damages in respect of any infringement occurring after the date of the assignment and before the date of the application to register the assign - ment. It is likewise possible but not compulsory to reg - ister a licence. Registration, however, provides deemed notice of the licence to the public. Such notice operates 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 infringement 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 which is identical 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 consent of the proprietor of the trade mark, the person uses in the course of trade a sign and there exists a likelihood 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 identi - cal with or similar 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 busi - ness in Singapore; • the claimant’s mark has acquired distinctive - ness (typically demonstrated through evi -
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