332). An identical mark is being used in the same industry by another business. The information provided does not constitute legal advice. Finally, the best way of avoiding trade mark infringement issues is by registering your own trade mark in the relevant jurisdictions before listing your product on the e-commerce platform. They are professional and can provide valuable advice which not…, I was browsing the web looking for legal advice as I was facing a likely charge from AGC after my…, Ronald is one of the best lawyers you could ever be fortunate enough to come across. Trade mark registration is territorial in nature. E-commerce platforms are often under pressure from authorities and intellectual property owners to enforce intellectual property rights. This means that the trade mark must be registered in the jurisdictions the e-commerce platform operates in before it can be infringed by a product being sold on the platform. What are the criminal offences relating to trade marks? For example, the trade mark “Tiger” is registered in Singapore by different companies for different categories of goods including beer, air travel and medicinal products (Tiger Beer, Tigerair and Tiger Balm respectively). If the right holder wants the Director-General to continue to detain the seized copies or goods in order to institute an infringement action, he must, within 48 hours after the date of the notice from the Director-General, give a written notice to the Director-General. While other trademark agents may be stumped, we are familiar with virtually every objection that IPOS may raise and we have the expertise to craft the best legal arguments in your favour. If there are such products, it is advisable to first contact the sellers of those products to confirm that your trade marks are not similar to theirs, or acquire permission from them to list your product. Yuen Law has been doing our contracts for our clients. If you have registered your own trade mark in the relevant jurisdictions, it is less likely that you will be found to have infringed another business’ registered trade mark. Such goods include counterfeits. On the other hand, the same product on an e-commerce platform accessed globally, such as Amazon.com, could be found to infringe trade marks globally. An identical mark is being used in a similar (but not identical) industry such that the public is likely to be confused. The requestor or right holder is required to furnish a security that is sufficient (a) to reimburse the Government for any liability or reasonable expense it is likely to incur in relation to the seizure, storage and disposal of the copies or goods, and (b) to pay such compensation as ordered by the court for loss suffered by the defendant if the infringement action is not taken or is dismissed or discontinued, or if the court decides there was no infringement. c. To satisfy the Director-General that the copies or goods are infringing copies or goods. This is because the site is based in Singapore and generally accessed only by users in Singapore. This means that unless the trade mark is very well-known, the trade mark generally can be enforced only in the country (or countries) it is registered in. How to Revoke Another Business' Trade Mark for Non-Use So You Can Register Your Own, Cybersquatting: How to Win Back Stolen Domains in Singapore. The trade mark owner reporting the URLs of the infringing items to the e-commerce platform; The trade mark owner providing details of their trade mark registration such as what the trade mark is, jurisdictions it is registered in and the categories of products it is registered for; The e-commerce platform evaluating the claim and possibly then delisting the reported item. The High Court of Singapore deals with trade mark infringement actions. 1. The time limit for initiating infringement action may be extended by a further 10 working days upon request by the right holder. If the trade mark owner does not wish to sue you, he may still take action against you using the reporting tools provided on the e-commerce platform itself. This is because cross-border intellectual property lawsuits are especially complex, expensive and time-consuming. Besides seizure on request, Singapore Customs may also seize copies or goods which are reasonably suspected to be copyright-infringing copies or counterfeit trademark goods that are imported into or to be exported from Singapore. A 10-year blueprint to strengthen Singapore’s position as a global intangible assets (IA) and intellectual property (IP) hub as well as maintain Singapore’s position … AMC Live Group China (S) Pte Ltd, the Singapore Court of Appeal, in a ruling dated April 21, 2016, found in favour of the appellant, thus overturning a decision by the High Court which had dismissed the appellant’s (who was the plaintiff in the earlier suit) claims of trademark infringement under Section 27 (2) (b) of the Trade Marks Act (TMA) and Passing Off of its AMC … How practical is it for the trade mark owner to sue for infringement? It … (3) For the purposes of the application of section 26 of the Act — (a) the rights of the proprietor shall have effect as of the date on which the protected international trade mark (Singapore) is to be This means that the products you listed on the e-commerce site allegedly have a logo or brand that is similar or identical to a registered trade mark owned by the other business. Singapore acceded to the Madrid Protocol on July 31, 2000, and it came into force in Singapore … Use of this site constitutes acceptance of our Terms of Service and Privacy Policy. 4. As a seller you should always take precautions to avoid selling counterfeit goods. The requestor and the importer or exporter will be informed of the seizure. The following rights are established by registration: the exclusive right to use the registered trademark. Here’s How to Bring Criminal Charges against Them. Although you may have been accused of trade mark infringement, this accusation may not have a strong legal basis. Trademark registration in Singapore is governed by the Trade Marks Act (Cap. What do I do? This is a relatively small category of trade marks that are well known to the general public and include large international brands such as “Gucci” or “Adidas”. Most e-commerce platforms including Shopify, Amazon, ebay and Alibaba (which owns Taobao) provide avenues for intellectual property owners to report alleged trade mark and other intellectual property infringement on their respective e-commerce platforms. While there was prima facie infringement (due to visual and aural similarities between the AMC Asia Mark and AMC Live’s marks, AMC Live was able to rely on the own name defence to trade mark infringement under s 28(1)(a) of the TMA. An annual security can cover up to 5 outstanding shipments (i.e. The Intellectual Property Law of Singapore is the comprehensive legal structure for protecting intellectual property. This would ensure that you are not infringing an existing trade mark. The best way to lawfully take advantage of such protection offered by e-commerce platforms is to become a registered trade mark owner yourself. 3. 12.5.33 Further, where the trade mark is well known to the public at large in Singapore, its proprietor is entitled to restrain by injunction any use in relation to any goods or services which would cause dilution in an unfair manner, or take unfair advantage, of the distinctive character of the trade mark. A possible final option is to seek a declaratory judgment from a court of law in the relevant jurisdiction that your product does not infringe the trade mark owner’s mark. The validity period of a registered trademark in Singapore is 10 years, and can be renewed indefinitely at the end of each 10-year period. The Singapore Court of Appeal has clarified that liability for trade mark infringement can be established notwithstanding the fact that the infringing goods were merely in transit and never intended for entry into the Singapore market. The High Court dismissed the suit, and the CA ... Case Review, or require any further advice on trade mark law in Singapore. If so you may, in fact, not have infringed the trade mark. He has a strong…. Complete the notice using the following template. Where the right holder has been notified by Customs that there has been Ex-officio Seizure of goods or copies, and the right holder wants the Director-General to continue to detain the seized goods or copies in order to institute an infringement action, the written notice should be given using Trade Marks Form 2 or Copyright Form 2. a statutory declaration that the particulars in the notice are true; security in the form of a deposit of money or a guarantee issued by a bank, finance company or insurance company in Singapore. for trade mark infringement for importing and/or exporting the goods under an infringing sign. Why is this case significant? for 60 days). Singapore Customs, Trade Marks (Border Enforcement Measures) Rules, Trade Marks (Border Enforcement Measures Fees) Rules, Copyright (Border Enforcement Measures) Regulations, Copyright (Border Enforcement Measures Fees) Regulations, customs_operations_management@customs.gov.sg, Trade Marks Form 1 - Seizure of Goods on Request, Copyright Form 1 - Seizure of Copies on Request, Trade Marks Form 2 - Ex-officio Seizure of Goods, Copyright Form 2 - Ex-officio Seizure of Copies, Guarantee to be issued by a bank, finance company or insurance company in Singapore, Letter of Undertaking under Trade Marks Act, Letter of Undertaking under Copyright Act. The courts will also grant you the right to receive compensation for the damages or losses you have suffered as a result of the actions of the Trademark which may be protected in Singapore, is any signs (includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof) capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a … There would likely be infringement if a business was to use marks like “Guci” or “Cucci” for bags, as it is too similar to the existing luxury bag brand “Gucci”. Singapore Customs will inform the owner or exclusive licensee of the copyright or the proprietor or licensee of the registered trademark (“the right holder”) as soon as practicable after the seizure. The requestor has to institute an action for copyright or trademark infringement and notify the Director-General accordingly within 10 working days after the day specified in the notice of seizure by the Director-General. 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This is because if another similar or identical trade mark is filed earlier than yours, your trade mark application may face an objection. ... investing on a name, brand, logo, slogan, or symbol, it's advisable to conduct a thorough search to avoid possible trademark infringement. I have received a letter for trademark infringement. When a user in Singapore selects and … ( a) every applicant for the registration of a trade mark; ( … Within this period, Singapore Customs will seize the infringing copies or goods if they are imported into, or are exported from, Singapore. Defendant”) for trade mark infringement, passing off and malicious falsehood. search Singapore’s trade mark registry at the IP2SG portal, View all lawyers for Trademark Infringement. Based on Singapore law, your mark would infringe a registered trade mark only in the following situations: However, if the other business’ registered trade mark is identical to yours, there would be no issue using the mark as long as it is used for a completely different category of products. It provides due warning to interested parties who wish to file a similar or identical trade mark since the Singapore trademark office will refuse to register any confusingly similar marks. The exception to this is well-known marks, which can receive protection even if they are not registered. Rights of Trademark Owners: Trademarks may be: Transferred in … *Trademark infringement(For trademark infringement, the provisions in the TMA that give a trade mark owner a cause of action against any infringers are laid out in s 31 of the TMA, which are similar to that in the CA. How Can I Protect My Business from Imitators? the goods are proposed to be imported into Singapore and the application of the sign in Singapore to them or their packaging would be an infringement of the registered trade mark; or ( c ) the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trade mark. 2 In the present dispute, the Plaintiffs have sued the Defendants for trade mark infringement carried out on a website, sgbuy4u.com (“the SGbuy4u Website”). What can you do if you want to dispute the infringement claim? The right holder has to institute an action for copyright or trademark infringement and notify the Director-General accordingly within 10 working days after the day specified in the notice to take action by the Director-General. Here are 5 trusted lawyers you can contact directly for a quote. Please note that you should avoid re-listing your item without first resolving the dispute with the trade mark owner, as the e-commerce platform may suspend your account. An application for summary judgment … The remedy … Examples of such evidence could include comparisons of the registered trade mark and your business’ mark, or evidence that the trade mark has not been registered in the relevant jurisdictions. How Do I Register a Trade Mark in Singapore? How to Check for Registered Trade Marks in Singapore, Registering Trade Marks Internationally via Madrid Protocol in Singapore, Drafting a Trade Mark Licensing Agreement in Singapore, Accused of Ecommerce Trade Mark Infringement: What to Do. The trade mark proprietor can still pursue a claim for damages, an account of profits or statutory damages in respect of any infringement of the registered trade mark that occurs after the date of the transaction and before the date of the recordal of … Firstly, you may appeal to the e-commerce platform if they provide an avenue of appeal – Alibaba, for example, allows you to submit a counter-notification. the right to sue third parties for infringement or for using a confusingly similar trademark. Businesses: Stop Losing Money to Sellers of Infringing Goods. If so, you may contact the trade mark owner directly to request that they retract their infringement report. Appeals against decisions of the High Court can be filed to the Court of Appeal, subject to the fulfilment of certain conditions. You should obtain specific legal advice from a lawyer before taking any legal action. In terms of the two fingers composite mark, the Defendants had submitted that 1 st Plaintiff’s red packaging does not function the same way as the origin of the trade mark. For example, a counterfeit product being advertised and sold on the Singaporean online marketplace “Carousell” is likely to be determined to only infringe a trade mark registered in Singapore. As an e-commerce seller, it is ultimately a commercial decision you will need to make as to whether the potential cost is worth it. Some platforms such as ebay do not have an avenue for appeal if your product has been delisted due to an infringement claim. What should I do? This, of course, includes trademarks, copyrights, patents. Samsonite bags trade mark infringement win against a local parallel importer of genuine Samsonite-branded backpacks. the right to object to later conflicting applications. The applicant applied to protect the trademark “MARINER” (the application mark) in Singapore on February 5, 2016, under Trade Mark Application No. 3 Reasons to Register Trade Marks for Singapore Businesses. This is because you may need to prepare legal arguments and documents for the court, and these often require a competent trade mark lawyer to handle. Counterfeit Goods: Is it Illegal to Sell or Buy Them in Singapore? If the trade mark owner refuses to retract their report and the e-commerce platform does not provide any official avenue for appeal, you may nonetheless contact the e-commerce platform via a general inquiry to appeal against the delisting. If you receive such a notification, you should contact a trade mark lawyer immediately to seek legal advice. The Intellectual Property Office of Singapore (IPOS) may issue objections to trademark applications from time to time. If the trade mark is not registered in any of those jurisdictions, there may be no infringement. The security may be given to cover (a) the current shipment only, or (b) the current shipment and any future shipments to be seized by Singapore Customs (an “annual security”). FMTM Distribution Ltd (the applicant) is a company selling high-end luxury watches. Next, before listing your item on an e-commerce platform, you can do a search of that platform to identify existing products of a similar category that bear a trade mark similar to your business’ mark. What can you do to prevent such infringement disputes from arising in the first place? To enable the Director-General to ascertain the time and place where the infringing copies or goods are expected to be imported; and This is Singapore’s model of the ‘anti-dilution’ right. A similar mark is used in the same industry such that the public is likely to be confused. 4. If you have filed for the same trade mark in another country (which is either a member of the Paris Convention or the World Trade Organization) within 6 months and that application is the first filing, you may file for priority claim in your Singapore trade mark … You should also consult a trade mark lawyer if you are sued or threatened to be sued by another business for trade mark infringement. Protect Your Brand: How to Oppose Registration of Copycat Trade Marks. Get in touch with experienced trade mark lawyers here. This judgment could then be submitted to the e-commerce platform as proof of non-infringement. At present there are no reported cases of such an application being made in Singapore. Hence it is not possible for the 1 st Plaintiff to claim that the trade mark is a well-known mark in Singapore. GST Exemption For Investment Precious Metals, Home Brewed Beer And Other Fermented Liquors, Transfer Of Remains For Cremation Or Burial, Harmonised System Competent Authority Product Code Search Engine, Manifest Reconciliation Statement (MRS) Scheme, © 2021 © 2014-2017 First World Problems Pte Ltd. All rights reserved. However, this involves engaging in litigation which may be expensive. Facts The Plaintiffs’ product, mark and sign ... wholly-owned Singapore subsidiary of the First Plaintiff. If you wish to register your business’ trade mark, a trade mark lawyer will be able to assist you in taking the appropriate steps and submitting the relevant information needed to register your trade mark, both in Singapore and overseas. Rolex S.A. (the opponent) is a watchmaker established in 1905, based in Geneva, Switzerland. When selling goods on e-commerce platforms, you may be accused by another business of selling goods that infringe upon their trade mark. For trade mark issues, mediation is often an effective tool which, given the severity of penalties for infringement in Singapore, will often result in a favorable outcome, as well as representing a considerable saving over civil or criminal actions. Under Singapore law, a registered trade mark does not infringe another registered trade mark. For Seizure on Request (Lodgement of Notice), the written notice should be given using Trade Marks Form 1 or Copyright Form 1. Not only is there a higher risk of having your listing reported, it is also an offence under Singapore law. Enforcement of trademark rights – infringement of registered trademarks and opposition proceedings The Madrid Protocol – How brand owners can protect their trademarks internationally Similarity of trade marks – Decision by the Singapore High Court in Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd If at any time the Director-General of Customs is of the opinion that the security given is insufficient, the objector shall top up the security accordingly. Please contact Operations Management Branch, Singapore Customs, on the quantum of the security required. Each platform’s specific trade mark infringement reporting process may be different, but they generally involve the following steps: If you are certain that your product is not counterfeit and does not infringe the registered trade mark, there are steps you can take to oppose the infringement report. Singapore October 13 2016 In a recent High Court hearing the operator of a local website, SGbuy4u.com, was held liable for trademark … The owner or licensee of a copyright or a registered trademark (the “requestor”) may give the Director-General of Customs (“Director-General”) a written notice stating that he requests the seizure of copyright infringing copies or trademark-infringing goods that are expected to be imported or exported. A guarantee shall remain in force (a) until 31 December of the following year in the case of an annual security; or (b) for 1 year in the case of a one-time security; a Letter of Undertaking to bear all reasonable costs relating to the seizure, transportation, storage and disposal of the copies or goods; (for trade marks) a copy of the certificate of registration issued by the Registrar of Trade Marks in relation to the registered trade mark specified in the notice, and evidence that the registration of the registered trade mark was duly renewed at all times; (where the notice is given by a person as agent) evidence of the authority of the person giving the notice. An identical mark is being used in a similar (but not identical) industry such that the public is … The first step you can take is to check whether the trade mark has been registered in the jurisdiction in which the e-commerce site is hosted, and the jurisdictions which the e-commerce site targets. The required documents shall be submitted to Singapore Customs (attention: Operations Management Branch) at 55 Newton Road, #07-01, Revenue House, Singapore 307987. AMC Asia’s claim for trade mark infringement was consequently dismissed. If you need to make amendment (s) to the application as directed by the examiner, you may be required to submit the Form TM27 at a fee of S$40 per class. You can search Singapore’s trade mark registry at the IP2SG portal. However, registering your trade mark across multiple jurisdictions may be an expensive process. You may incur additional cost if you wish to seek professional advice from a trade mark agent/lawyer. The fee of S$200 and security (if furnished in the form of deposit of money) shall be made via crossed cheque payable to “Singapore Customs” or bank transfer to Singapore Customs’ bank account (DBS 001-028867-9). The time limit for initiating infringement action may be extended by a further 10 working days upon request by the requestor. The Singapore Treaty on the Law of Trademarks was adopted on March 27, 2006 and came into force on March 16, 2009. Trusted trademark agent specialized in trade mark search, registration, application, renewal, licensing, assignment in Singapore, Malaysia, Southeast Asia. It is not compulsory to register a trademark in Singapore; one may also rely on rights under the common law doctrine of "passing off" to protect a trademark. However, they may instead provide you with the trade mark owner’s contact details when notifying you of the delisting. The Defendant counterclaims against the Plaintiffs for making groundless threats of infringement. (1) For the purposes of any proceedings before the Registrar, an address for service in Singapore shall be filed in accordance with paragraph (2) or (5) by or on behalf of —. The territoriality of trade marks is more complex due to the global nature of e-commerce. Some e-commerce platforms including ebay and Amazon also allow you to register your brand with the e-commerce platform. The applicant can renew his trademark application with the IPOS. This would help ensure that your brand is recognised by the site, and it would be much less likely that the e-commerce platform de-lists your item for trade mark infringement later on. This accusation may come directly from the trade mark owner in the form of a lawyer’s letter, or it could come via the e-commerce platform if the trade mark owner reported your listing to the platform.
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