TM

Question 1

What is the function of a trademark ?

Answer 1

TM is a badge of origin and it is sign that is represented graphically that is capable to distinguish between goods and service

Question 2

Who do you think trademark should protect?

Answer 2

Protect sign and against unlicensed personnel in the course of trade

Question 3

FOR registrability, what are the two types of ground of refusal.

Answer 3

1. Absolute ground of refusal (7)
   - If trademark lack of distinctiveness
   - If trademark is descriptive eg. describing time, value, intended purposes.
   - if trademark consist exclusively of signs that has become customary
   - deceptive to public
   - against the public policy /
   - did not have good faith
   - use of trademark is prohibited in singapore by any written law
2. Relative ground of refusal
   Mark and goods & services are both identical
   if not 1 identical, 1 similar - vice versa
   check for likelihood of confusion (3)
3. Visually, 2. Aurally, 3. Conceptuall

Question 4

Is there any other relative ground of refusal ?

Answer 4

Yes, the one that if you infringe other IP rights ( Copyright, Design, Passing off) you will be rejected for registration.

Question 5

What is the process of registration for a trademark?

Answer 5

1. Fill your name and address
2. Give a graphical representation of the mark
3. List the goods and services that are being registered under the NICE classification.
4. Declaration of the proposed use of the trademark
5. Pay the fee

On the other hand, they will do a formality check. ( your name, address, design of the mark correct anot)
2. Search for any senior mark infringment
3. Examine if your mark is registrable
5. Publish
6. Wait for opposition proceeding, if everything ok then ok.

Question 6

Trademark protection outside of Singapore

Answer 6

You can file separately or use the Madrid Protocol
Madrid Protocol.
There is a 6 months priority claim.
1. The conditions is that first your trademark must be registered in the country of origin before filing for an international application.
2. The country of origin must be a party of madrid protocol.
3. The applicant is a resident / citizen or if not have strong impact in the industry for the given country of origin.

Advantages of Madrid Protocol
1. Convenient: Apply one time can use for all other countries
2. Dont have to wait for all different countries to approve your application, just the country that you applied within
3. Renewal convenience: 1 renewal fee only

Disadvantage:
1. Expensive
2. You cannot make any changes to the scope of the goods and services
3. First five years dependant on the validity of the mark registered in the country of origin

Question 7

Remedies for trademark infringement

Answer 7

1. Injunction
2. Order to disposal any infringing articles
3. Demand the profit the infringer made from the infringement / any loss the plaintiff have due to the infringement
4. Statutory damages: up to 100k per

Question 8

The exception and defence of trademark infringement

Answer 8

1. Honest commercial practices
   - use ur name as the trademark, but must prove your name is legit. not suddenly change one
   - the sign used is to indicate the characteristic of the goods and services
   - the sign used is to indicate the intended purpose of the goods and services
2. Can prove that you use the sign for a long time even before you register for the tm
3. Using your own registered trademark without alteration
4. Fair use
   - Comparative purposes for advertisement
   - Non commercial practices
   - News reporting

Question 9

What about Special / WK Marks ?

Answer 9

Blocking the registration of junior marks if (different from checking for confusingly similar marks)
1. cause dilution
2. cause damage
3. take unfair advantage of the well known mark