topic 9: Trade marks Flashcards
What is a trade mark?
- used by a person in business to distinguish goods or services from other businesses
- REGISTERED trade mark : owner has legal rights as to how it is used
a trade mark includes letter, word, name, signature, numeral, device, brand, heading, shape, color etc or a combination of everything
® : registered trade mark
™ : just a trade mark, no protection, not registered
Benefits of a trade mark
- not compulsory to register a trademark
- protection possible under common law
- registration enables CONTROL of usage, including licensing it to others for a fee, selling the mark for profit or to raise funds
Singapore : TMA (trade mark act)
- protection granted if registered with IPOS (intellectual property office of Singapore)
- first to register has priority over unregistered mark
- trade mark limited to goods and service as defined under intentional classification for goods and services
3 key criteria for a trade mark
1) any sign capable of being graphically represented to distinguish goods and services from other traders.
(the registration of a sign is prohibited if it does not satisfy the definition of a trade mark)
2) mark must be distinctive
3) does not conflict with an earlier mark
other kinds of trade marks
sounds if graphically represented (intel chime in advertisements)
these are non-visually perceptible
Un-registerable marks
- describing goods and services or origin of location
- well accepted and common in trade
- contrary to public morality, policy
- tendency to mislead members of the public
- earlier identical marks
- marks likely to confuse the public (marks that provides the same goods & services as earlier marks)
- marks similar to well-known marks
Descriptive marks
Generally descriptive marks are not distinctive unless it has build up a market for a long time
Ownership, rights and limitations
- a registered mark is a personal property (has exclusive right to use)
- owner can grant licenses to others
- registration is valid for 10 years (further for another 10 years)
- not used within first 5 years without reasons = may lose the registration
Remedies (1)
- infringement to use registered marks without permission : caused confusion to the public
- owners : use injunctions to restrain unauthorized use
- other penalties include accounting for profits, delivery and destruction of infringing articles and fined up to SGD 1 million if involved use of counterfeit trade marks
- usage of registered marks is not an offence in limited situations such as reporting news, non-commercial purpose etc
Remedies (2)
- criminal proceedings are done by the owner
- fines of up to 100K SGD or 5 years in jail
- custodial sentence is the norm unless the infringing articles are small quantities : public policy of promoting Singapore as an IPR (Intellectual property rights) hub
Common Law: passing off
- an actionable tort to represent for trading purposes the goods or business, from another party
elements of passing off :
- goodwill
- misrepresentation
- damage
remedies :
injunction, damages, account of profits
Goodwill (Passing off)
- defined between trader and customers
- trader enjoys reputation within Singapore and has a business attached to it
- this including pre-launch activities before commencing actual sale of goods or services
- burden of proof is heavy : requires extensive and long usage of mark(s) to prove it belongs to owner
Misrepresentation (Passing off)
- as to the origin and quality of the goods or services by using the trade marks
- public likely to be misled by such usage
- lack of intention to deceive irrelevant
- goods or services can be different from those provided by the owner and they need not be in direct competition to commit infringement
Other issues of passing off
- the proximity of a defendant’s (suspect) field of activity to that of the plaintiff (victim) is a relevant consideration in deciding whether there is a likelihood of confusion
- when there is a common field of activity and the parties are in competition with each other, the plaintiff’s case is strengthened
- if the parties are not in mutual competition (product-wise), it is more difficult to convince the court that there is a likelihood of confusion
- slight difference that is sufficient to claim distinction, therefore no misrepresentation
Damage (Passing off)
- real or likelihood of damage to goodwill or loss of sales due to diversion of business
when the parties are in direct competition with each other, the court will readily infer likelihood or damage
another type of damage which the plaintiff could be deprived of is the loss licensing revenue
- dilution of goodwill if mark symbolize world class quality and another party uses the mark of lower quality goods (public maybe mislead) leading to lowering the prestige of the owner
