Governing Laws

Statutes and the common law govern trade marks and copyright in Singapore. The respective primary legislation is the Trade Marks Act 1998 (the “Trade Marks Act”) and the Copyright Act 2021 (the “Copyright Act”).

Common Law Trade Marks/Copyright

Common law trade marks are recognised.

Common law copyright is generally not recognised.

Singapore is a member of the following main treaties/conventions relating to trade mark/copyright. They are not self-executing:

• the Agreement on Trade-Related Aspects of Intellectual Property Rights;
• the Berne Convention for the Protection of Literary and Artistic Works;
• the Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite;
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
• the Singapore Treaty on the Law of Trademarks;
• the Trans-Pacific Strategic Economic Partnership Agreement;
• the Paris Convention for the Protection of Industrial Property;
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
• the WIPO Copyright Treaty; and
• the WIPO Performances and Phonograms Treaty.

Trade Marks

The Trade Marks Act and its subsidiary legislation, particularly the Trade Marks (International Registration) Rules, govern the rights of foreign trade mark holders in Singapore.

Copyright

The Copyright Act and its subsidiary legislation, particularly the Copyright Regulations 2021, govern the rights of foreign copyright holders in Singapore.

Types of Trade Marks/Source Identifiers

The potential types of trade marks include trade marks, service marks, collective marks, certification marks, geographical indications, signs (including a letter, word, foreign word, name, surname, slogan, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof), images, shapes, get-ups (akin to trade dress), moving signs, smells, sounds, gestures, holograms, buildings and grilles.

As with the potential types of trade marks listed above, an industrial design is entitled to trade mark protection, so long as it is a sign capable of being represented graphically and capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Marks that consist of the shape of goods will be refused registration under Section 7(3) of the Trade Marks Act if, inter alia, they consist exclusively of:

• the shape that results from the nature of the goods themselves;
• the shape of goods that is necessary to obtain a technical result; or
• the shape that gives substantial value to the goods.

This will be particularly relevant for the protection of industrial designs as trade marks.

Collective and certification marks

Part 8 and the First and Second Schedules of the Trade Marks Act govern collective and certification marks. An applicant for registration of a collective mark/certification mark must file with the Registrar regulations governing the use of the mark.

For a collective mark, the regulations must specify:

• the persons authorised to use the mark;
• the conditions of membership of the association; and
• where they exist, the conditions of use of the mark, including any sanctions against misuse.

For a certification mark, the regulations must indicate:

• who is authorised to use the mark;
• the characteristics to be certified by the mark;
• how the certifying body is to test those characteristics and to supervise the use of the mark;
• the fees (if any) to be paid in connection with the operation of the mark; and
• the procedures for resolving disputes.

Geographical indications

The Geographical Indications Act 2014 provides for the protection of geographical indications in relation to goods, and for matters connected therewith. Section 4 provides that, subject to the provisions of the Act, an interested party of goods identified by a geographical indication may bring an action against a person for carrying out an act to which the section applies in relation to the geographical indication. However, there are various exceptions, such as Section 13, where Section 4 does not apply to the use in the course of trade by a person of that person’s name or the name of that person’s predecessor in business, except where the name is used in such a manner as to mislead the public.

Specific Marks Protected by Statute

Sections 56 and 57 of the Trade Marks Act provide that a trade mark may not be registered if it consists of or contains:

• the flag of a Convention country (defined as a country or territory that is a party to the Paris Convention or a member of the WTO);
• armorial bearing and other state emblem of a Convention country;
• official sign and hallmark adopted by a Convention country; and
• armorial bearing, flag, emblem, abbreviation and name of an international organisation of which one or more Convention countries are members.

Protection of Well-Known Marks

Singapore protects marks that are well known outside Singapore but are not yet in use or registered in Singapore. However, such protection will only be afforded where it is shown that the mark in question is also well known in Singapore.

Elements for Trade Mark Protection

The essential elements of trade mark protection are that it is a sign capable of being represented graphically, and capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. A trade mark must also be sufficiently distinctive (see also further comments below).

Proving Acquired Distinctiveness/Secondary Meaning

The trade mark applicant bears the burden of proving that its mark has acquired a distinctive character as a result of use before the date of the trade mark application. The factors that may be relevant in the analysis include:

• the nature of the mark;
• the market share held by goods bearing the mark;
• how intensive, geographically widespread and long-standing the use of the mark has been;
• the amount invested by the proprietor in promoting the mark;
• the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from the proprietor;
• evidence from trade or other professional associations, (where the competent authority has difficulty in assessing the distinctive character);
• an opinion poll;
• the fact that the mark does or does not contain an element descriptive of the goods or services in question;
• the prevalence of the wide variety of actual trade mark and non-trade mark use;
• the promotion and advertising by other traders of the same mark or similar marks;
• all relevant actions by other traders of similar goods and services which have the effect of eroding the general perception of the average discerning consumer linking the inherently non-distinctive trade mark in question to the identity of the originator of the goods or services; and
• all relevant actions by the promoter of the trade mark in using the trade mark in question constantly as its badge of trade origin, by inscribing the mark invariably on all their goods, by extensively and intensively promoting, advertising, and educating the average discerning consumer of the promoter’s trade mark, and relevant enforcement action against infringers to protect its registered trade mark.

Section 26 of the Trade Marks Act provides that the proprietor of a registered trade mark has the exclusive rights to use the trade mark and to authorise other persons to use the trade mark in relation to the goods or services for which the trade mark is registered. The proprietor has the right to obtain relief under said Act for infringement of its trade mark.

The above rights persist throughout the term of a mark.

Section 27(4) of the Trade Marks Act states that for the purposes of the infringement provisions (Sections 27, 28, 29 and 31 of the Trade Marks Act) a person uses a sign if, in particular, they:

• apply it to goods or the packaging thereof;
• offer or expose goods for sale, put them on the market or stock them for those purposes under the sign, or offer or supply services under the sign;
• import or export goods under the sign;
• use the sign on an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document; or
• use the sign in advertising.

Notwithstanding the foregoing, a person who applies a sign to any material used or intended to be used for labelling or packaging goods, or who uses it on any document described in Section 27(4)(d) of the Trade Marks Act or in advertising, is deemed not to use the sign if, at the time of such application or use, they do not know nor have reason to believe that the proprietor or a licensee of the registered trade mark did not consent to such application or use of the sign.

It is necessary to establish that the defendant has used the sign as a trade mark, in contrast to a purely descriptive use.

The proprietor of a registered mark may use the encircled R symbol next to the mark. If the mark is not registered, but is used as a trade mark, the TM symbol may be used. However, there is no requirement to use these symbols in Singapore.

A trade mark can also be protected by copyright or related rights.

The local courts have not had the opportunity to consider how a trade mark that is a surname interacts with moral rights laws under the Copyright Act.

As it stands, the scope of trade mark laws is generally not limited by copyright or related rights laws.

Types of Works

Sections 8 and 9 of the Copyright Act provide that there are nine categories of work: literary, dramatic, musical, artistic (all of the foregoing “authorial work”), a published edition of an authorial work, sound recording, a film, a broadcast and a cable programme. These are statutory categories.

Dual Protection

The Copyright Act has provisions delimiting the scope of copyright protection for “industrial” artistic works, under Sections 272 to 276. Subject to the other general provisions, other industrial designs are entitled to copyright protection.

The essential elements for authorial works to qualify for copyright protection are:

• the existence of a “connecting factor” – ie, the work must be connected with Singapore or a reciprocating country in a relevant way;
• the work must exist in some material form; and
• the work must be original (see Sections 109 to 111 of the Copyright Act).

As for non-authorial works, the “connecting factor” is also an essential element (see Sections 117(1), 120, 123, 126(1), and 130(1) of the Copyright Act). Additionally, for a published edition of an authorial work, it must not be a reproduction of a previous edition of the same authorial work (see Section 117(2) of the Copyright Act). For a broadcast, it must not be a repeat broadcast made after the expiry of the copyright in the original broadcast (see Section 129(3) of the Copyright Act). For a cable programme, it must not be a broadcast that has been received and immediately re-transmitted via the cable network (see Section 130(2)(a) of the Copyright Act).

Authorship

The Copyright Act does not define “author” or “authorship”. The Court of Appeal in Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011] 4 SLR 381 held that only natural persons could be considered an author in copyright law, and a corporate body was not so entitled. For a natural person to qualify as an author, they must have contributed the relevant types of mental labour, skill or judgement which can confer originality to the authorial work.

Section 166 of the Copyright Act provides a rebuttable presumption as to authorship, in situations where a name purporting to be that of the author (or a joint author) of an authorial work appears on a published copy of the work, or where a name purporting to be that of the author (or a joint author) of the work appears on an artistic work when it is made, and the name is a person’s true name or a name by which a person is commonly known.

A “work made for hire” is not a term used in the context of Singapore copyright laws. In cases where copyright work is created under commissioning contracts or employment, the author remains the natural person who created the work. Under Section 133(1)(a) of the Copyright Act, the author is the first copyright owner of an authorial work. This applies to commissioned works where the commissioning contract is made on or after the date of commencement of the current Act. The Copyright Act does not define “commissioned work”.

Based on the position that authorship is limited to human authorship, it would appear that a person cannot claim authorship of an authorial work not created by a human/created without the intervention of, or direction by, any human.

Joint Authorship

Section 10 of the Copyright Act provides that an authorial work is a “work of joint authorship” if it is produced by the collaboration of two or more authors, and the contributions of the authors are not separate.

Assuming that the joint authors are the joint owners, the same rights are afforded to each of the joint owners (see 3.4 Copyright Rights), assuming that they are each a qualified individual. Section 146(1) of the Copyright Act provides that, subject to the provisions of the Act, copyright is infringed if a person does in Singapore, or authorises the doing of in Singapore, any act comprised in the copyright, and the person neither owns the copyright nor has the licence of the copyright owner. Section 100 of the Copyright Act provides that an act comprised in a copyright is any act that, under this Act, the owner of the copyright has the exclusive right to do. In Ng-Loy Wee Loon, Law of Intellectual Property of Singapore (3rd edition, 2021, Sweet & Maxwell) at [10.1.1], footnote 1, it is stated that “[t]he reference to the person not being the copyright owner has significance in cases where the copyright is jointly owned by X and another person(s): since X is one of the copyright owners, he cannot be liable for copyright infringement even if he does the act without the consent of the other joint owner(s)”.

The extent to which each author can independently exploit the copyrighted work, and the ownership percentage, would depend on the facts. Joint authors usually own the copyright as tenants in common, but this is not always the case: see Nanofilm Technologies International Pte Ltd v Semivac International Pte Ltd [2018] 5 SLR 956.

Rights Granted to Copyright Owners

Rights granted to copyright owners are outlined by the Copyright Act. For instance, Section 112 of the Copyright Act provides that copyright in a literary, dramatic or musical work is the exclusive right to do all or any of the following acts:

• (a) to make a copy of the work;
• (b) to publish the work if the work is unpublished;
• (c) to perform the work in public;
• (d) to communicate the work to the public;
• (e) to make an adaptation of the work;
• (f) to do, in relation to an adaptation of the work, any of the acts specified in paragraphs (a) to (e); and
• (g) in the case of a computer program – to enter into a commercial rental arrangement the essential object of which is the rental of the program.

Section 113 of the Copyright Act provides that copyright in an artistic work is the exclusive right to do all or any of the following acts:

• to make a copy of the work;
• to publish the work if it is unpublished; and
• to communicate the work to the public.

These rights generally persist throughout the term of a copyright.

Section 108(1) of the Copyright Act makes clear that, where a copyright owner has the exclusive right to do an act, the right is a right to exclude others from doing that act (or authorising the doing of that act) without the authorisation of the copyright owner, and it is declared that the right is not a positive right of the copyright owner to do that act.

Moral Rights

Moral rights are recognised in Singapore. These rights are set out in the Copyright Act, Part 7, Divisions 1 and 2.

Duration of Protection

The duration of protection would depend on various factors, such as:

• whether the copyright work originates from Singapore or another jurisdiction;
• whether and when the work is first published;
• whether and when the work is first made available to the public; and
• whether and when the author is identified.

Generally, copyright protection for authorial works lasts the lifetime of the author and 70 years thereafter.

Copyright protection lasts:

• 25 years from the first publication of a published edition of an authorial work;
• 70 years from the first publication/creation of a sound recording;
• 70 years from the time a film is first made available to the public/from the creation of the film; and
• 50 years from the making of a broadcast/the first inclusion of a cable programme in a cable programme service.

The operative provisions are Sections 114, 119, 122, 125, 128, 129 and 132 of the Copyright Act. For works originating from other jurisdictions, the provisions are Regulations 17 to 21 of the Copyright Regulations 2021.

Termination

The Copyright Act provides for the duration of copyright, and does not specify means of “termination” of copyright.

The Collective Management Organisations (CMOs) operating in Singapore include those representing composers and lyricists, major record labels, authors and book publishers, Hollywood studios, and independent, special interest and local producers.

The Copyright Act and its subsidiary legislation, particularly the Copyright (Collective Management Organisations) Regulations 2023, govern these systems. According to the Intellectual Property Office of Singapore, a CMO’s role involves the collective management of content usage, encompassing copyright works and protected performances, contributed by various creators such as authors, makers, publishers or performers who are unrelated to the CMO. This management is carried out either as the rights-owner or with the rights-owner’s authority, for the collective benefit of those creators or rights-owners. Furthermore, a CMO is responsible for offering one or more tariff schemes to the public in Singapore.

Further, a CMO is appointed by rights-owners to manage the rights in their copyright works or protected performances. A CMO administers the licensing of rights, collection of royalties and enforcement of rights on behalf of these rights-owners. A CMO will then monitor the use of the works and performances, and will collect licence fees on behalf of the rights owners. The Regulations do not control the fees/tariff schemes set by a CMO. A CMO is free to make its own policies, as long as they are not inconsistent with the class licence conditions.

There is no copyright registration regime in Singapore.       

There is no copyright registration regime in Singapore.       

There is no copyright registration regime in Singapore.       

A copyright can also be protected by trade mark or related rights. As it stands, the scope of copyright laws is generally not limited by the trade marks laws.

When a trader conducts business under their trade mark in Singapore, it gives rise to goodwill attaching to their business. This goodwill is protected by the common law tort of passing off.

Concurrently, the registration of a trade mark under the Trade Marks Act confers upon the registered proprietor the exclusive rights to use that mark and to obtain relief for infringement. There is no requirement for the proprietor to have used their mark. To obtain registration, the mark must be free from absolute and relative grounds for refusal of registration. The standards for registration are the same for different types of marks, though in practice it may be more difficult for certain types of marks to be registered (eg, shape marks or non-conventional marks such as scent marks or sound marks).

The Registrar maintains a register of trade marks. The Intellectual Property Office of Singapore provides free trade mark search tools which are available through its e-services platform, IPOS Digital Hub. Prior to filing a new trade mark application, trade mark clearance searches are commonly conducted to ensure that there are no earlier conflicting marks in the register.

A trade mark is registered for a period of ten years from the date of registration. It may be renewed for further periods of ten years.

If the registration is not renewed by its expiry date, a late renewal application may be made within six months after the expiry date.

If the registration is still not renewed within such time, the Registrar will remove the trade mark from the register. The proprietor has a final six months to apply for restoration of the mark.

If a registered trade mark includes the proprietor’s name or address, the Registrar may allow a request to alter the mark limited to alteration of that name or address, which must not substantially affect the identity of the mark. The proprietor may also apply to cancel the registration in respect of some (or all) of its goods/services.

An application for registration of a trade mark must be made in Form TM 4. Multi-class applications are allowed. Currently, the official fees are SGD380 per class, or SGD280 per class where all goods/services descriptions in that class are pre-approved by the Registry. The application must contain:

• a request for registration of a mark;
• the applicant’s name and address;
• a clear representation of the mark;
• the goods/services to be covered by the mark; and
• a statement that the mark is being used in the course of trade, by the applicant or with the applicant’s consent, in relation to those goods/services, or that the applicant has a bona fide intention that the mark should be so used.

Anyone may apply for a trade mark. This can include, for example, individuals, bodies corporate and unincorporated bodies. There is also no requirement for a foreign applicant to be represented by a local agent. However, the applicant must have a local address for service. If not, it may choose to appoint a local agent.

There is no requirement for an applicant to have used its trade mark in commerce prior to registration. However, there must be a bona fide intention to do so (see 4.4 Application Requirements).

A trade mark must not be registered if any of the following relative grounds for refusal apply:

• it is identical with an earlier trade mark covering identical goods or services;
• there exists a likelihood of confusion on the part of the public because that trade mark is identical with/similar to an earlier trade mark covering identical/similar goods or services (if there is double identity, see the ground above instead);
• it contravenes the protection given to well-known marks in Singapore under the Trade Marks Act; or
• its use is liable to be prevented by the law of passing off or some other earlier right such as copyright.

The Registrar will consider the existence of prior rights during examination. They must raise an objection if they consider there to be conflicting prior rights. The applicant will have an opportunity to respond within four months of the Registrar’s examination report. It may do so by making representations in writing, applying for a hearing, applying to amend the application, or furnishing additional information or evidence. If the applicant fails to respond, the application will be treated as withdrawn.

In practice, most objections citing prior rights are based on earlier marks in the register. To overcome such an objection, an applicant can lodge a letter from the owner of the earlier mark consenting to registration. In general, the consent letter must provide unequivocal consent and clearly state the particulars of the trade mark application, including the goods/services to which consent is given. The Registrar may decide if that letter suffices to overcome their objection.

During the registration process, an applicant may apply to restrict the goods/services under the trade mark application.

An applicant may also apply to amend or correct the following in respect of its application, and only where the amendment does not substantially affect the identity of the trade mark or extend the goods/services covered by the application:

• the applicant’s name or other particular;
• errors of wording or of copying; or
• obvious mistakes.

An applicant may at any time withdraw its trade mark application.

A trade mark applicant may apply to divide its trade mark application into two or more separate applications. This is typically done where a Registry objection or an opposition lies against some but not all of its goods/services. Upon division, the part of the original application without issue may proceed to publication or registration sooner.

A trade mark application must include a declaration that the information furnished is true to the best of the applicant’s knowledge. There may be criminal liability for providing false information.

Amendments or corrections in respect of pending applications for registration have been covered in 4.7 Revocation, Change, Amendment or Correction of an Application.

For an error or mistake in any filing other than an application for registration, a request can be made to the Registrar for amendment. The Registrar may make the amendment if it is to correct a clerical error or an obvious mistake, or if the Registrar is of the opinion that it is fair and reasonable to do so.

In addition to the above, any person having a sufficient interest may apply to the Registrar or the General Division of the High Court for the rectification of an error or omission in the register.

The absolute grounds for refusal of registration of a mark include:

• failing to satisfy the definition of a “trade mark”;
• being devoid of distinctive character;
• consisting exclusively of signs or indications describing the characteristics of the goods/services;
• consisting exclusively of signs or indications that have become customary in the current language or trade;
• being contrary to public policy or morality;
• being deceptive in nature; or
• where the application is made in bad faith.

There are also absolute grounds for refusal relating to certain types of shapes and geographical indications, and to crests, armorial bearings, insignias, flags and other symbols.

During examination, the Registrar must raise an objection if they consider any of the grounds above to apply. The applicant will have an opportunity to respond within four months of the Registrar’s examination report. It may do so by making representations in writing, applying for a hearing, applying to amend the application, or furnishing additional information or evidence. If the applicant fails to respond, the application will be treated as withdrawn.

Singapore is a signatory to the Madrid Agreement Concerning the International Registration of Marks – ie, the “Madrid Protocol”. Under the Protocol, a trade mark owner can submit one international application and one set of fees to seek protection of its mark in multiple Protocol member states. International registrations designating Singapore are subject to examination and opposition in a manner largely similar to domestic applications.

A third party has two months upon publication of a trade mark application to oppose the registration of the mark. A one-time extension of two months may be sought by filing a request with the Registry. There is no cooling-off period for parties to reach an amicable resolution.

There is no limitation period for filing trade mark revocation actions. The earliest possible date to seek revocation for non-use is five years after the date of completion of the registration procedure.

In contrast, an application for invalidity relying on an earlier mark cannot be brought if the earlier proprietor has acquiesced in the knowledge of use of the later mark for a continuous five years. An invalidation action relying on an earlier geographical indication for a wine or spirit or a well-known mark cannot be filed after five years from the date of completion of the later mark’s registration procedure. These limitations, however, do not apply where the later mark was filed in bad faith.

The absolute and relative grounds for refusal of registration are grounds upon which an opponent may file an opposition (see 4.6 Consideration of Prior Rights in Registration and 4.10 Refusal of Registration).

A trade mark registration may be revoked on grounds of non-use, genericism as a result of the proprietor’s acts or inactivity, or deception as a result thereof. The non-use period for the first ground is five years from the date of completion of the registration procedure.

The grounds for invalidation include the absolute and relative grounds for refusal of registration (see again 4.10 Refusal of Registration and 4.6 Consideration of Prior Rights in Registration). Additionally, invalidation may be ordered where there was fraud in the registration or the registration was obtained by misrepresentation.

Any person may file an opposition. The opponent does not have to be represented by an agent. However, proceedings can be complex. Thus, parties to proceedings should consider engaging a qualified agent or lawyer.

Any person may file a trade mark revocation or invalidation action.

An applicant wishing to contest an opposition must file a counter-statement within two months after the date that it receives a copy of the notice of opposition. This deadline is extendible by two months.

After the close of pleadings, the parties will file evidence. There are generally three rounds:

• the opponent’s evidence in support of the opposition;
• the applicant’s evidence in support of the application; and
• the opponent’s evidence in reply.

The Registrar may grant longer evidentiary timelines where parties are negotiating or if there are pending court proceedings which may affect the outcome of the opposition.

After the evidence has been filed, the Registrar may convene a pre-hearing review to give directions for the disposal of the proceedings. They will set down the matter for hearing, and parties have one month before the hearing date to submit their written submissions. After the hearing, the Registrar will issue a decision as soon as is practicable.

Applications for revocation or invalidity may be made to the Registrar or in the General Division of the High Court. Exceptions apply such that:

• the action must be brought in Court where proceedings concerning the trade mark in question are pending in the Court; or
• if the application is made to the Registrar, the Registrar may refer the application to the Court.

Partial revocation or invalidation is possible, where grounds for revocation or invalidation exist only in respect of some of the goods/services for which a trade mark is registered.

An applicant can appeal to the General Division 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 application 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.

There is nothing preventing a trade mark proprietor from applying to amend their trade mark during revocation or invalidation proceedings – for example, in order to narrow the specification of goods/services.

Where faced with a trade mark infringement suit, it is possible for a defendant to file a counterclaim for revocation or invalidation.

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 successful, the registration obtained through fraud will be invalidated.

Registered trade marks and copyright are personal property. They are transmissible by assignment, testamentary disposition or operation of law. An assignment may be made by way of an agreement supported by consideration, or by 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.

A trade mark licence may be general or limited (ie, limited to particular goods/services), exclusive 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 addition, 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 copyright do not exist in Singapore.

Trade mark assignments are registrable transactions. 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 person 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 assignment.

It is likewise possible but not compulsory to register 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. Consequently, it is not possible to register copyright-related transactions.

Copyright and trade mark infringement actions may not be brought more than six years after the infringement takes place.

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 identical 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 business in Singapore;
• the claimant’s mark has acquired distinctiveness (typically demonstrated through evidence of use), and there is a misrepresentation by the defendant to the public leading or likely to lead the public to the belief that the defendant’s goods/services are the claimant’s, or that parties are commercially connected; and
• the claimant is likely to suffer damage as a result of such misrepresentation.

Well-Known Trade Marks

Under the Trade Marks Act, well-known trade marks are protected from dilution, both by blurring and tarnishment, and from others taking unfair advantage of their distinctive character. Protection does not depend on registration or goodwill in Singapore. The proprietor of a well-known mark may seek an injunction to restrain the use of an offending mark in the course of trade in Singapore.

Copyright Claims

There are three categories of copyright infringement:

• primary infringement, where a person does, in Singapore, any act comprised in the copyright without the copyright owner’s consent;
• authorising infringement, where a person authorises the doing, in Singapore, of any act comprised in the copyright without the copyright owner’s consent; and
• secondary infringement, where a person imports or distributes an infringing article for the purpose of commercial dealing without the copyright owner’s consent.

In addition, the Copyright Act protects rights management information (RMI) – that is, information that identifies a copyright work, the copyright owner and/or the terms and conditions of use of that work. The knowing and unauthorised removal or alteration of RMI, and the commercial dealing in infringing copies of the relevant works, are prohibited.

Trade Mark Infringement

To establish infringement, the courts take a step-by-step approach.

• First, the parties’ marks must be identical or similar. The assessment is mark-for-mark, having regard to the distinctive and dominant components of each mark. Marks are compared for visual, aural and conceptual identity/similarity.
• Second, the parties’ goods/services must be identical or similar.
• The final step is to determine if there is a likelihood of confusion giving rise to infringement.

Copyright Infringement

To establish primary copyright infringement, first the infringing act must have been done in Singapore. Second, the defendant must have copied, directly or indirectly, the copyright work. Third, there must have been unauthorised taking of the whole or a substantial part of the work.

To establish authorising infringement, first there must be an underlying primary infringement. Second, the defendant must have authorised that infringement.

As regards secondary infringement, in addition to there being an unauthorised importation or distribution of an infringing article for commercial dealing, the claimant must prove that the defendant knew or ought to have known that the article was infringing.

It is common for rights-holders to issue cease-and-desist letters prior to commencing action. Rights-holders must be mindful of the risks of liability for groundless threats of infringement proceedings under the relevant IP legislation.

Before filing a suit, it is a requirement under the Rules of Court 2021 that the rights-holder make an offer of amicable resolution unless there are reasonable grounds not to do so. The offer must be in writing and must generally be open for at least 14 days. Failure to make the offer may result in the court disallowing or reducing a successful party’s costs or ordering that party to pay costs.

Both trade mark and copyright infringement proceedings are heard by the General Division of the High Court at first instance. An appeal against the General Division’s decision may be made to the Appellate Division of the High Court. Leave of court must be obtained for any further appeal to the Court of Appeal.

Any person who is not a minor, not disabled and does not lack mental capacity may carry on proceedings in person and without legal representation. A company must engage legal representation unless the court gives permission for a company officer to act on its behalf.

Intellectual property rights are territorial. Foreign rights-holders may bring infringement claims in Singapore so long as they rely on their rights in Singapore.

Where a person has made threats of trade mark or copyright infringement proceedings, an aggrieved person may apply to the court for:

• a declaration that the threats are unjustifiable;
• an injunction against continuing threats; and
• damages for losses arising from such threats.

All trade mark infringement and copyright infringement claims must be brought in the General Division of the High Court. To facilitate access to the court system, a simplified process for intellectual property claims was implemented in April 2022, which prioritises efficiency and cost-effectiveness. Under this process, there are limits to the monetary relief and recoverable costs.

The Registry of Trade Marks is a low-cost tribunal that is subordinate to the courts. The Registry is bound by the courts’ decisions and not the other way around.

Counterfeiting Under Trade Mark Law

A counterfeit trade mark is a sign which is:

• identical with or so nearly resembling of the registered trade mark as to be calculated to deceive; and
• applied to goods or services without the proprietor’s consent and to falsely represent those goods/services to be the genuine or actual goods/services of the proprietor or a licensee.

In a civil action involving a counterfeit mark, the claimant may elect to receive statutory damages in lieu of damages or an account of profits.

As regards criminal action, an offender may be liable upon conviction to a fine and/or imprisonment. The court may order forfeiture and destruction of the counterfeit goods.

Counterfeiting Under Copyright Law

The Copyright Act does not expressly deal with counterfeiting or bootlegging. Provisions relating to copyright infringement would apply. Both civil and criminal liability can arise.

The remedies for a civil claim include statutory damages in lieu of damages or an account of profits.

If convicted of a criminal offence, the offender may be liable to a fine and/or imprisonment. The court may order delivery and forfeiture or destruction of the infringing articles.

Trade mark and copyright proceedings follow the standard procedural rules laid down in the Rules of Court 2021 and the Supreme Court of Judicature (Intellectual Property) Rules 2022.

Singapore has no specialised intellectual property courts. However, there is a simplified process in the General Division of the High Court for certain intellectual property claims (see 7.7 Small Claims).

There is no jury system in Singapore. Questions of fact and of law are decided by judges.

The registration of a trade mark provides the registered proprietor with the following benefits:

• the proprietor enjoys the right to obtain relief for infringement of that mark; and
• the proprietor has a defence against infringement in that the use of its mark in respect of the goods/services registered under it does not infringe another registered trade mark.

There is no copyright registration system in Singapore.

Practitioners in Singapore generally bill based on time spent. The fees may vary widely. Factors affecting costs include:

• the number and complexity of the claims;
• the volume of evidence filed;
• the length of trial;
• the number of witnesses involved; and
• whether any interlocutory applications or appeals are filed.

There are several statutory defences to trade mark infringement, which are briefly outlined below.

A person does not commit infringement when they use, in accordance with honest practice in industrial or commercial matters:

• their name or the name of their place of business (ie, the “own name” defence);
• a sign to indicate the characteristics of goods/services (ie, the “descriptive use” defence); or
• a mark to indicate the intended purpose of goods/services (in particular as accessories or spare parts).

There is also no infringement where a person uses:

• an unregistered mark from a time before the registered proprietor’s first use or registration of the registered mark, whichever is earlier (ie, the “prior user” defence);
• another registered mark in relation to the goods/services thereunder;
• the registered mark and such use is fair use in comparative commercial advertising or promotion; or
• the registered mark for a non-commercial purpose, or for the purpose of news reporting or news commentary.

See also 9.3 Exhaustion on exhaustion of rights.

Fair Use Defence in Copyright Law

It is a permitted use of a work to make fair use of that work. This inquiry into fairness is based on the following non-exhaustive factors:

• the purpose and character of the use, including whether the use is of a commercial nature or is for non‑profit educational purposes;
• the nature of the work or performance;
• the amount and substantiality of the portion used in relation to the whole work or performance; and
• the effect of the use on the potential market for, or value of, the work or performance.

The fair use defence is an open-ended one. The Copyright Act additionally identifies three specific categories of permitted use: fair use for the purposes of reporting news, criticism or review, and research or study.

Fair Use Defence in Trade Mark Law

A person who uses a registered trade mark does not infringe it if that use:

• constitutes fair use in comparative commercial advertising or promotion;
• is for a non-commercial purpose; or
• is for the purpose of news reporting or news commentary.

Singapore adopts a principle of international exhaustion of rights.

Once a proprietor’s goods bearing their registered trade mark are put on the market anywhere in the world by them or with their consent, their rights in those goods are exhausted. There is no infringement where third parties trade in those goods. An exception applies where the condition of those goods has been changed or impaired and the offending use of the mark has caused dilution in an unfair manner of its distinctive character.

As regards copyright law, the copyright owner’s rights in relation to importing and dealing commercially in a genuine article are exhausted once that article has been put on the market by them or with their consent.

Available injunctive remedies include:

• final injunctions;
• interim injunctions;
• injunctions prohibiting the disposal of assets (also known as Mareva injunctions); and
• search orders (also known as an Anton Piller order).

The granting of injunctive relief is at the court’s discretion. As a general rule, the following applies.

Interim injunctions will be granted only if the claimant can show that:

• there is a serious question to be tried; and
• the balance of convenience lies in favour of granting the injunction.

Where damages are an adequate remedy for the plaintiff if they succeed at trial, and if the defendant is in a financial position to pay them, an interim injunction would not normally be granted. If damages would not be an adequate remedy, the court will take whichever course appears to carry the lower risk of injustice if it should turn out to have been wrong at trial in the sense of having granted the injunction when it should have been refused, or of an injunction having been refused when it should have been granted.

Injunctions prohibiting the disposal of assets will be granted only where the claimant can establish that:

• there is a valid cause of action over which the court has jurisdiction;
• there is a good arguable case on the merits of its claim;
• the defendant has assets within jurisdiction; and
• there is a real risk that the defendant will dissipate its assets to frustrate the enforcement of an anticipated judgment of the court (additional considerations apply to applications for a worldwide Mareva injunction).

Search orders will be granted only where:

• the plaintiff has shown that it has an extremely strong prima facie case;
• the damage suffered by the plaintiff would have been very serious;
• there was a real possibility that the defendant(s) would destroy relevant documents; and
• the effect of the Anton Piller order would be out of proportion to the legitimate object of the order.

Trade Marks

Monetary remedies take the form of damages or an account of profits. An account of profits is an equitable remedy which may not be awarded if the infringer can establish an equitable defence such as estoppel, laches, acquiescence or delay.

Damages are compensatory in nature and are intended to restore the plaintiff to the position they would have been in if the infringement had not occurred. For damages, loss must be proved, and general rules of causation will apply. On the other hand, the remedy of an account of profits seeks to disgorge unjust gains and the maximum payment is confined to the net profits attributable to the infringement.

The remedies of damages and account of profits are mutually exclusive, with the exception that a court may award account of profits in addition to an order for damages for any amount that was considered in computing the damages.

Where the infringement involves the use of a counterfeit trade mark, statutory damages are available as an alternative form of damages. In awarding statutory damages, the court has regard to various factors such as:

• the flagrancy of the infringement;
• any loss that the claimant has suffered or is likely to suffer by reason of the infringement;
• any benefit shown to have accrued to the defendant because of the infringement;
• whether there is a need for deterrence; and
• all other relevant matters.

Copyright

Monetary remedies take the form of damages, additional damages or an account of profits. The claimant may elect for statutory damages, as an alternative.

The remedies of damages (including additional damages), account of profits and statutory damages are mutually exclusive, with the exception that a court may award account of profits in addition to an order for damages for any amount that was taken into account in computing the damages.

Damages may not be awarded for copyright infringement if the defendant was innocent or could not have reasonably known that its act was infringing. However, the court is not prevented from ordering any other remedy for the infringement, including an account of profits.

As with damages under trade mark infringement, damages are compensatory in nature, intended to restore – as much as possible – the plaintiff to the position they would have been in if the infringement had not occurred.

In deciding whether to award additional damages, the court has regard to all relevant matters, including the flagrancy of the infringement and any benefit gained by the defendant because of the infringement.

In assessing the quantum of statutory damages, the court will consider all relevant matters, including:

• the nature and purpose of the infringing act;
• the flagrancy of the infringement;
• whether bad faith was involved;
• any loss that the claimant has suffered or is likely to suffer by reason of the infringement;
• any benefit shown to have accrued to the defendant because of the infringement;
• the conduct of the parties before and during the proceedings; and
• whether there is a need for deterrence.

In general, the court awards costs to the successful party, except where it appears to the court that, in the circumstances of the case, some other order should be made or that there are special reasons for depriving the successful party of their costs in part or in full.

The quantum of costs may be fixed by the court or determined by the court in assessment of costs proceedings. Costs are typically assessed on the standard basis, which means all costs reasonably incurred would be allowed. Any doubts as to whether the costs were reasonably incurred should be resolved in favour of the paying party.

Guidelines found in the Supreme Court Practice Directions 2021 provide a general indication on the quantum of costs awards in proceedings, including intellectual property cases. However, the precise amount of costs awarded remains at the discretion of the court, and the court may depart from the amounts set in the guidelines.

A successful party’s costs may be reduced or disallowed where the successful party:

• is partially successful in establishing any claim or issue (leading to an unnecessary increase in the amount of time taken, costs or complexity of proceedings);
• acted unreasonably;
• failed to discharge its duty to consider amicable resolution of the dispute or to make an offer of amicable resolution; or
• failed to comply with any order of court, any relevant pre-action protocol or any practice direction.

In general, all applications for relief should be heard with both parties present.

In urgent cases, injunctive relief may be sought without notice to the defendant. The application made to court must be supported by an affidavit stating the urgency and explaining why the defendant should not be informed about the application and the merits of the application.

Paragraph 71 of the Supreme Court Practice Directions 2021 prescribes that notice must be given to the other concerned parties. A minimum of two hours’ notice of the application must be given to the other concerned parties before the hearing, except in cases of extreme urgency or with the permission of the court. The notice should inform the other parties of the date, time and place fixed for the hearing of the application and the nature of the relief sought. If possible, a copy of the originating process, the summons without notice or the originating application without notice (if no originating process has been issued yet) and supporting affidavit(s) should be given to each of the other parties in draft form as soon as they are ready to be filed in court.

Notice need not be given to other concerned parties if doing so would defeat the purpose of the ex parte application (such as applications for search orders or injunctions prohibiting the disposal of assets).

The Singapore Customs is empowered by border enforcement measures provisions found in the Trade Marks Act and the Copyright Act to seize counterfeit goods (not being goods in transit) that are imported into, or to be exported from, Singapore.

These powers of seizure may be exercised:

• upon request of the registered trade mark proprietor or copyright owner or their respective licensees, by way of a written notification to the Singapore Customs, providing sufficient information to identify the infringing goods and the time and place of expected importation and exportation; or
• ex officio by a customs officer – when the customs officer is acting ex-officio, their power of seizure extends to goods-in-transit provided that these goods are consigned to a person with a commercial or physical presence in Singapore.

Under both the Trade Marks Act and the Copyright Act, parallel imports of genuine goods are not classified as infringing goods, except in very limited circumstances, meaning that such goods are generally not subject to custom seizures.

Trade mark and copyright infringement actions are commenced in the General Division of the High Court. Decisions of the General Division of the High Court may be appealed to the Appellate Division of the High Court. A party who intends to appeal to the Appellate Division of the High Court must file and serve a notice of appeal on all parties with an interest in the appeal, within 28 days of the decision of the General Division of the High Court. However, where further arguments have been requested in compliance with Section 29B(2) of the Supreme Court of Judicature Act 1969, the time for filing the notice of appeal does not start running until the judge has either:

• heard the further arguments and affirms, varies or sets aside the decision after hearing further arguments; or
• certified or been deemed to have certified that no further arguments are required.

The appellant must provide security for the respondent’s costs of the appeal and file a certificate for security for costs at the time the appellant files the notice of appeal.

The decision from the Appellate Division of the High Court may be further appealed to the Court of Appeal, provided permission is received from the Court of Appeal. The granting of this permission is at the Court of Appeal’s discretion and is contingent upon the appeal raising a point of law of public importance.

A party who intends to appeal to the Court of Appeal must first apply for permission to appeal from the Court of Appeal, and must file and serve the application on all parties who have an interest in the appeal within 14 days of the decision of the Appellate Division of the High Court. However, where further arguments have been requested in compliance with Section 29B(2) of the Supreme Court of Judicature Act 1969, the time for the permission application does not start running until the judge has either:

• heard the further arguments and affirms, varies or sets aside the decision after hearing further arguments; or
• certified or been deemed to have certified that no further arguments are required.

Where permission to appeal is granted, the appellant must file and serve a notice of appeal on all parties who have an interest in the appeal, within 14 days of the date of the decision granting permission to appeal.

Regarding timelines to file an appeal, see 11.1 Appellate Procedure.

The duration for settling an appeal is contingent upon the complexity of the issues and the caseload of the appellate court. In general, an appeal from the trial court may take around one to two years from the date of filing to be decided.

Artificial Intelligence (AI)

Singapore aims to be a global hub for developing, test-bedding, deploying and scaling AI solutions. It was observed in the 2019 Singapore Copyright Review Report, published by the Singapore government, that “text and data mining and its applications are crucial to fuelling economic growth and supporting Singapore’s drive to catalyse innovation in the digital economy”.

To support Singapore’s efforts to grow its AI sector, a copyright exception for computational data analysis (which by definition includes text and data mining) activities was introduced in November 2021 (the “TDM exception”). The TDM exception permits the copying or communication of a copy of a work or recording of a performance if the copy is made for the purposes of computational analysis or preparing the work for computational data analysis, provided certain conditions are met that were put in place to safeguard the commercial interests of the copyright owners (for instance, that the user must have lawful access to the works that are copied). The TDM exception applies only to acts performed in Singapore. The TDM exception is potentially far-reaching as it may not be excluded by contract and extends to both non-commercial and commercial activities. However, the operation and limits of the TDM exception are untested in the Singapore courts.

A report (“When Code Creates: A Landscape Report on Issues at the Intersection of Artificial Intelligence and Intellectual Property Law”), published on 28 February 2024 by the Intellectual Property Office of Singapore and the Singapore Management University, observed that under Singapore law the author of authorial works – ie, literary, dramatic, musical, artistic works – must be a natural person, and concluded that under the current position an AI system cannot be named as an author.

There have not been any reported trade mark or copyright decisions pertaining to generative AI in Singapore.

Outcomes in the UK, EU and USA on these issues would very likely be considered by Singapore courts when determining the same issues.

“Site-Blocking” Orders

A copyright owner or its exclusive licensee may apply to the General Division of the High Court for a “site-blocking” order (an access-disabling order) to require a network connection provider to take reasonable steps to disable access to an online location that has been or is being used to flagrantly commit or facilitate copyright infringements. “Dynamic” injunctions requiring the network connection provider to block any new means (for instance, additional domain names, URL and/or IP addresses) of accessing the same infringing online locations have also been granted in recent years.

Commercial Dealings With a Device or Service Capable of Facilitating Access to an Infringing Work Protected by Copyright

Commercial dealing (including sale or distribution) by a person of a device capable of facilitating access (for example, set-top boxes or other devices containing pre-loaded applications that stream infringing materials) or the provision of a service that facilitates access to an infringing copyrighted work is an infringement of the copyright in a work, if the person knows or ought reasonably to have known that the device or service:

• was capable of facilitating access to works communicated to the public without the authority of their copyright owners; and
• has only a limited commercially significant purpose or use other than that capacity.

Such commercial dealing also amounts to a criminal offence under the Copyright Act. In 2024, the first criminal prosecution in Singapore involving the sale of illegal streaming devices resulted in a jail term for the convicted offender.

Online Marketplaces

Major online marketplaces operating in Singapore have established takedown/notice policies to address trade mark and copyright infringement complaints. In practice, demonstrating proof of ownership of the relevant Singapore trade mark registration is an effective way to support complaints against trade mark counterfeits.