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Dilution Under Singapore Trade Marks Act
In contrast with the concept of dilution in Thailand and Malaysia, under the Singapore Trade Marks Act there are the explicit provisions to protect against dilution. Being modeled after the WIPO Joint Recommendations Concerning the Provisions on the Protection of Well-Known Marks, dilution is incorporated as one of the integral parts of the Singapore Trade Marks Act. It can be seen that the definition of dilution is also defined in the Section 2 of the Singapore Trade Marks Act.
Section 2
"dilution", in relation to a trade mark, means the lessening of the capacity of the trade mark to identify and distinguish goods or services, regardless of whether there is
(a)any competition between the proprietor of the trade mark and any other party; or
(b)any likelihood of confusion on the part of the public;
Dilution is considered one of the relative grounds for refusal of registration.58 The proprietor of well known marks can enjoy the protection against dilution in the infringement case and to be entitled to injunctive relief.59 There are three requirements that the owners of well known trademarks need to be satisfied under section 55(3)(a). First, that the defendant's mark, or an essential part of it, is identical with or similar to the proprietor's mark. Second, the use of defendant's mark would indicate a connection between the goods or services of the defendant and those of the senior mark proprietor. Finally, the interests of the proprietor are likely to be damaged as a result of such connection.
Regarding the types of dilution, the definition of dilution by blurring and dilution by tarnishment is accepted in the Singapore Court of Appeal in Novelty Pte Ltd v Amanresorts Ltd.60
However, not every single trademark can benefit from these anti-dilution provisions because there are some requirements that need to be satisfied. Firstly, the fame standard must be reached. In order to be a well known trademark, that mark must be well known to the public at large in Singapore.61 Therefore, niche fame seems to be regarded as insufficient Moreover, section 2(7) also provides some guidelines in deciding which trademark is qualified as well known.
Section 2 (7) Subject to subsection (8), in deciding, for the purposes of this Act, whether a trade mark is well known in Singapore, it shall be relevant to take into account any matter from which it may be inferred that the trade mark is well known, including such of the following matters as may be relevant:
(a) the degree to which the trade mark is known to or recognized by any relevant sector of the public in Singapore;
(b) the duration, extent and geographical area of
(i) any use of the trade mark; or
(ii) any promotion of the trade mark, including any advertising of any publicity given to, or any presentation at any fair or exhibition of the goods or services to which the trade mark is applied;
(c) any registration or application for the registration of the trade mark in any country or territory in which the trade mark is used or recognized, and the duration of such registration or application;
(d) any successful enforcement of any right in the trade mark in any country or territory, and the extent to which the trade mark was recognised as well known by the competent authorities of that country or territory;
(e) any value associated with the trade mark
The criteria of being the well known marks in Singapore is not limited to registered marks. According to section 2(1), which gives the interpretation of some key words under this act, defines well known marks as follows:
"well known trade mark means –
(a) any registered trade mark that is well known in Singapore; or
(b) any unregistered trade mark that is well known in Singapore and that belongs to a person who –
(i) is a national of a Convention country; or
(ii) is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country,whether or not that person carries, on business, or has any goodwill, in Singapore;"62
The trademark proprietors, who would like to seek for the protection against dilution, must bear the burden of proof that all the criteria under the fame standard and eligibility of being the well known mark are met. Nonetheless, it is fortunate for trademark owners that actual dilution is not required. If a real or serious probability of damage to the well known marks are shown, it is sufficient under the Singapore Trade Marks Act. The Court of Appeal in Connoiseur Cafe Pte Ltd v Ferrero SpA63 held that it is quite difficult to prove actual or immediate damage so 'a real or serious probability of damage to the well known trademark's advertising quality or symbolic function in order to establish a dilution claim'64 is sufficient. Moreover, in case of dilution by blurring, it is not necessary to show the dramatic change in the economic behaviors of consumers to prove detriment to the mark's distinctiveness.
In conclusion, the concept of trademark dilution in Singapore is considered to have far more development than Thailand and Malaysia. However, different country has different views towards the new form of trademark injury like dilution. One might realise that the effects of the change in the role of trademark function is capable of leading to a new form of injury. Either a dilution by blurring or dilution by tarnishment are the damages that are able to happen to well known marks. The former one takes place where the ability to identify a single undertaking of a well known mark is blurred and the mark itself gradually lo,se its uniqueness. The latter one occurs where there is a debasement of a mark caused by an association with a later use, either in an unsavory, degrading context or a cause of incompatibility between the image of senior and junior marks.65 In general, tarnishment is found where the later use associates with the sexual or obscene context or illegal activities. While others may hesitate to grant more protection to well known marks beyond the confusion base infringement as a result of the fear of granting property right to trademark 'proprietors. Due to the different views towards anti-dilution law, protection against dilution is granted only in some countries for example, the US, EU and Canada. In the context of ASEAN, many factors play the role in pushing dilution to be one of the trademark infringement and relative grounds for refusal of registration in Singapore. In marked contrast, Thailand and Malaysia have no specific law to provide protection against dilution. Will the trend of trademark protection gradually continue to expand the scope? Will the dilution be accepted and incorporated in every ASEAN country? Should it be the mutual recognition on well known marks in ASEAN? These questions are what we have to follow in the future.
Sathita Wimonkunarak
(ASEANLegal StudiesCenter) |
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58 Singapore Trade Marks Act Section 8(4)(b)(ii)
59 Singapore Trade Marks Act Section 55 Protection of well known trade marks
(1) A well known trade mark shall be entitled to protection under this section
(a) whether or not the trade mark has been registered in Singapore, or an application for the registration of the trade mark has be en made to the Registrar; and
(b) whether or not the proprietor of the trade mark carries on business, or has any goodwill, in Singapore.
(2) Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore, in the course of trade and without the proprietor's consent, of any trade mark which, or an essential part of which, is identical with or similar to the proprietor's trade mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.
(3) Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore, in the course of trade and without the proprietor's consent, of any trade mark which, or an essential part of which, is identical with or similar to the proprietor's trade mark, in relation to any goods or services, where the use of the trade mark
(a) would indicate a connection between those goods or services and the proprietor, and is likely to damage the interests of the proprietor; or
(b) if the proprietor's trade mark is well known to the public at large in Singapore
(i) would cause dilution in an unfair manner of the distinctive character of the proprietor's trade mark; or
(ii) would take unfair advantage of the distinctive character of the proprietor's trade mark.
(4) Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore without the proprietor's consent of any business identifier which, or an essential part of which, is identical with or similar to the proprietor's trade mark, where the use of the business identifier
(a)would indicate a connection between the business in respect of which it is used and the proprietor, and is likely to damage the interests of the proprietor; or
(b)if the proprietor's trade mark is well known to the public at large in Singapore
(i) would cause dilution in an unfair manner of the distinctive character of the proprietor's trade mark; or
(ii) would take unfair advantage of the distinctive character of the proprietor's trade mark.
(5) If the Court grants an injunction under subsection (4) restraining the use by any business of any business identifier, the Court may make such other order as the Court deems fit in respect of any entry in any record maintained by any person, body or authority which associates that business with that business identifier.
(6)The proprietor shall not be entitled to the right referred to in subsection (2), (3) or (4) if the use of the trade mark or business identifier, as the case may be, began before the proprietor's trade mark became well known in Singapore, unless the trade mark or business identifier has been used in bad faith.
(7)The proprietor shall cease to be entitled to the right referred to in subsection (2), (3) or (4) if the proprietor has acquiesced for a continuous period of 5 years in the use of the trade mark or business identifier, as the case may be, in Singapore, being aware of that use, unless the trade mark or business identifier has been used in bad faith.
(8) In deciding whether the trade mark or business identifier, as the case may be, has been used in bad faith, it shall be relevant to consider whether the person who used the trade mark or business identifier had, at the time he began to use the trade mark or business identifier, knowledge of, or reason to know of, the proprietor's trade mark.
(9) Nothing in subsection (2) shall affect the continuation of any use referred to therein in good faith of a trade mark that was begun before 15th January 1999.
(10)Nothing in subsection (3) or (4) shall affect the continuation of any use referred to therein in good faith of a trade mark or business identifier, as the case may be, that was begun before 1st July 2004.
(11)For the purposes of this section and sections 55A, 56, 57 and 59, "use", in relation to a trade mark, means use within the meaning of section 27(4).
60 Novelty Pte Ltd v Amanresorts Ltd [2009] SGCA 13, March 13, 2009.
62 Singapore Trade Marks Act Section 2(1)
63 Connoiseur Cafe Pte Ltd v Ferrero SpA [2012] SGCA 56
64 Connoiseur Cafe Pte Ltd v Ferrero SpA [2012] SGCA 56 para 94.
65 Frederick W. Mostert, 'Famous and Well-Known Marks' 2nd edn (2004), 1-114
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