Trade Marks Act 1998

In this Act, unless the context otherwise requires —

“business” includes a trade or profession;

“business identifier” means any sign capable of being represented graphically which is used to identify any business;

“certification mark” has the meaning given by section 61;

“collective mark” has the meaning given by section 60;

“Convention country” means

“Court” means the General Division of the High Court;

“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

“earlier trade mark” means

“geographical indication” has the meaning given by section 2 of the Geographical Indications Act 2014;

“International Bureau” has the meaning given by Article 2(1) of the Madrid Protocol;

“international trade mark (Singapore)” means a trade mark which is entitled to protection in Singapore under the Madrid Protocol, or a trade mark prescribed by the Minister (by rules made under section 54) as an international trade mark (Singapore);

“Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27 June 1989, as revised or amended from time to time;

“Office” means the Intellectual Property Office of Singapore incorporated under the Intellectual Property Office of Singapore Act 2001;

“Paris Convention” means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883, as revised or amended from time to time;

“proprietor” means

“register” means the register of trade marks maintained by the Registrar under section 66;

“Registrar” means the Registrar of Trade Marks mentioned in section 62 and includes any Deputy Registrar of Trade Marks mentioned in that section;

“Registry” means the Registry of Trade Marks established under section 64;

“repealed Act” means the Trade Marks Act (Cap. 332, 1992 Revised Edition) repealed by the Trade Marks Act 1998 (Act 46 of 1998, revised as Cap. 332, 1999 Revised Edition);

“sign” includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof;

“trade” includes any business or profession;

“trade mark” means any sign 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 person from goods or services so dealt with or provided by any other person;

“TRIPS Agreement” means the Agreement on Trade‑Related Aspects of Intellectual Property Rights, set out in Annex 1C to the WTO Agreement, as revised or amended from time to time;

“well known trade mark” means

“WTO Agreement” means the World Trade Organisation Agreement signed in Marrakesh in 1994 as revised or amended from time to time.

References in this Act to a trade mark include any trade mark which relates to a service that is ancillary to goods or services dealt with or provided in the course of trade by a person, whether or not the service is provided for money or money’s worth.

References in this Act to a trade mark include, unless the context otherwise requires, a collective mark or certification mark.

References in this Act to use (or any particular description of use) of a trade mark, or of a sign identical with, similar to, or likely to be mistaken for a trade mark, include use (or that description of use) otherwise than by means of a graphic representation.

References in this Act to registration (in particular, in the expression “registered trade mark”) are, unless the context otherwise requires, to registration in the register.

In this Act, a sign is taken to be applied to goods, material or any other thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing.

Subject to subsection (8), in deciding, for the purposes of this Act, whether a trade mark is well known in Singapore, it is 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:

Where it is determined that a trade mark is well known to any relevant sector of the public in Singapore, the trade mark is deemed to be well known in Singapore.

In subsections (7) and (8), “relevant sector of the public in Singapore” includes any of the following:

For the purposes of this Act

Goods are “infringing goods”, in relation to a registered trade mark, if they or their packaging bears a sign identical with or similar to that mark and

Material is “infringing material”, in relation to a registered trade mark, if it bears a sign identical with or similar to that mark and either

“Infringing articles”, in relation to a registered trade mark, means articles

Goods are “counterfeit goods”, in relation to a registered trade mark, if

A sign is a “counterfeit trade mark”, in relation to a registered trade mark, if the sign

A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.

No proceedings shall lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off or rights under the Geographical Indications Act 2014.

An application for registration of a trade mark must be made in the prescribed manner to the Registrar.

The application must

The application is subject to the payment of the application fee and such other fees as may be appropriate.

The date of the application for registration of the trade mark is the earliest date on which

Subject to this section and any rules made under subsection (3), an application for registration of a trade mark may, at the request of the applicant, be divided into 2 or more separate applications for registration of the trade mark.

A request under subsection (1)

The Minister may make rules for the purposes of this section and may, in those rules, provide for

Goods and services must be classified, for the purposes of the registration of trade marks, according to a prescribed system of classification.

Any question arising as to the class within which any goods or services fall is to be determined by the Registrar, whose decision is final.

The following must not be registered:

A trade mark must not be refused registration by virtue of subsection (1)(b), (c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

A sign must not be registered as a trade mark if it consists exclusively of

A trade mark must not be registered if it is

A trade mark must not be registered if or to the extent that its use is prohibited in Singapore by any written law or rule of law.

A trade mark must not be registered if or to the extent that the application is made in bad faith.

Despite subsection (2), a trade mark must not be registered if it contains or consists of a geographical indication in respect of a wine or spirit and the trade mark is used or intended to be used in relation to a wine or spirit not originating from the place indicated in the geographical indication.

Subsection (7) applies whether or not the trade mark has, or is accompanied by, an indication of the true geographical origin of the wine or spirit (as the case may be) or an expression such as “kind”, “type”, “style”, “imitation” or the like, and irrespective of the language the geographical indication is expressed in that trade mark.

A trade mark must not be refused registration by virtue of subsection (7) if the application for its registration had been made in good faith, or if it had been used continuously in good faith in the course of trade by the applicant for its registration or the applicant’s predecessor in title, either

A trade mark must not be refused registration by virtue of subsection (7) if the geographical indication in question

Despite subsection (2), a trade mark must not be registered if

Subsection (11) applies whether or not the trade mark has, or is accompanied by, an indication of the true geographical origin of the goods, or an expression such as “kind”, “type”, “style”, “imitation” or the like, and irrespective of the language the geographical indication is expressed in that trade mark.

A trade mark must not be refused registration by virtue of subsection (11) if the application for its registration had been made in good faith, or if it had been used continuously in good faith in the course of trade by the applicant for its registration or the applicant’s predecessor in title, either

A trade mark must not be registered in the cases specified in sections 56 and 57.

The Minister may make rules to provide that a sign specified in the rules must not be registered as a trade mark, or must not be so registered unless such conditions as may be prescribed are met.

A trade mark must not be registered if or to the extent that the registration contravenes any rule made under subsection (15).

A trade mark must not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is sought to be registered are identical with the goods or services for which the earlier trade mark is protected.

A trade mark must not be registered if, because

Where an application for registration of a trade mark is made before 1 July 2004, if the trade mark

Subject to subsection (5), where an application for registration of a trade mark is made on or after 1 July 2004, if the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark, the later trade mark must not be registered if

A trade mark must not be refused registration by virtue of subsection (4) if the application for the registration of the trade mark was filed before the earlier trade mark became well known in Singapore, unless it is shown that the application was made in bad faith.

In deciding whether any such application was made in bad faith, it is relevant to consider whether the applicant had, at the time the application was made, knowledge of, or reason to know of, the earlier trade mark.

A trade mark must not be registered if, or to the extent that, its use in Singapore is liable to be prevented

A person entitled under subsection (7) to prevent the use of a trade mark is referred to in this Act as the proprietor of an earlier right in relation to the trade mark.

The Registrar may, in his or her discretion, register a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.

The Registrar may, in his or her discretion, register any trade mark mentioned in subsection (3), (4) or (7) where the proprietor of the earlier trade mark or other earlier right fails to give notice to the Registrar of opposition to the registration in accordance with section 13.

A trade mark which is an earlier trade mark by virtue of paragraph (a) of the definition of “earlier trade mark” in section 2(1) and whose registration expires, must continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry, unless the Registrar is satisfied that there was no bona fide use of the mark during the 2 years immediately preceding the expiry.

Where, on an application for the registration of a trade mark, it appears to the Registrar

Nothing in this section affects

Subject to subsection (6), where

Where any person claims the right of priority mentioned in subsection (1), the person has priority from (and including) the date on which the first Convention application was filed.

Where the right of priority mentioned in subsection (1) is claimed in respect of a trade mark, the registrability of the trade mark is not affected by any use of the trade mark in Singapore in the period between

Any filing which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, is to be treated as giving rise to the right of priority.

In subsection (4), “regular national filing” means a filing which is adequate to establish the date on which the application was filed in the Convention country, whatever may be the subsequent fate of the application.

Where a subsequent application concerning the same subject as an earlier application is filed, whether in the same or a different Convention country, and these are the first 2 applications concerning that subject to be filed in any Convention country, the subsequent application is to be considered the first Convention application if, at the date the subsequent application is filed

To avoid doubt, where subsection (6) applies

The Minister may make rules as to the manner of claiming priority under this section.

A right of priority arising under this section may be assigned or otherwise transmitted, either with the application or independently, and the reference in subsection (1) to the applicant’s “successor in title” is to be construed accordingly.

The Minister may, by order, confer on a person who has filed an application for the registration of a trade mark in a country or territory to which the Government has entered into a treaty, convention, arrangement or engagement for the reciprocal protection of trade marks, a right to priority, for the purpose of registering the same trade mark under this Act for some or all of the same goods or services, for a specified period from the date of filing of that application.

An order under this section may make provision corresponding to that set out in section 10 or such other provision as appears to the Minister to be appropriate.

The Registrar must examine whether an application for registration of a trade mark satisfies the requirements of this Act (including any requirements imposed by rules made under this Act).

For the purpose of subsection (1), the Registrar may carry out a search, to such extent as the Registrar considers necessary, of earlier trade marks.

If it appears to the Registrar that the requirements for registration are not met or that additional information or evidence is required to meet those requirements, the Registrar must inform the applicant and give the applicant an opportunity, within such period as may be prescribed, to make representations, to amend the application or to provide the additional or any other information or evidence.

If the applicant responds within the period referred to in subsection (3) but fails to satisfy the Registrar that those requirements are met, or to amend the application or provide the additional information or evidence so as to meet them, the Registrar may refuse to accept the application.

If the applicant fails to respond within the period referred to in subsection (3), the application is to be treated as withdrawn.

If it appears to the Registrar that the requirements for registration are met, the Registrar must accept the application.

When an application for registration has been accepted, the Registrar must cause the application to be published in the prescribed manner.

Any person may, within the prescribed time from the date of the publication of the application, give notice to the Registrar of the person’s opposition to the registration.

The notice must be given in writing in the prescribed manner, and must include a statement of the grounds of opposition and such other matter as may be prescribed.

The Minister may make rules to provide for opposition proceedings and for matters relating thereto.

The applicant may at any time withdraw the applicant’s application or restrict the goods or services covered by the application.

If the application has been published, the withdrawal or restriction must also be published.

In other respects, an application may be amended, at the request of the applicant, only by correcting

The Minister may make rules for the publication of any amendment which affects the representation of the trade mark, or the goods or services covered by the application, and for the making of objections by any person claiming to be affected by it.

Where an application has been accepted and

A trade mark when registered is registered as of the date of the application for registration, and that date is deemed for the purposes of this Act to be the date of registration.

On the registration of a trade mark, the Registrar must issue to the applicant a certificate of registration.

Despite section 15(1), if, before a trade mark is registered, the Registrar is satisfied

If the Registrar revokes the acceptance

A person may make a single application under section 5 for the registration of a series of trade marks.

For the purposes of this Act, “series of trade marks” means a number of trade marks which resemble each other as to their material particulars and which differ only as to matters of a non‑distinctive character not substantially affecting the identity of the trade mark.

If the application meets all the requirements under this Act and the Registrar is required under section 15 to register the trade marks, the Registrar must register them as a series in one registration.

A trade mark is registered for a period of 10 years from the date of registration.

Registration may be renewed in accordance with section 19 for further periods of 10 years.

The registration of a trade mark may be renewed at the request of the proprietor, subject to payment of the fee mentioned in subsection (4) or the fees mentioned in subsection (5), as the case may be.

The Minister may make rules for the Registrar to inform the proprietor of a registered trade mark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed.

A request for renewal must be made not later than 6 months after the date of expiry of the registration.

Where the request for renewal is made on or before the date of expiry of the registration, the fee payable is the prescribed renewal fee.

Where the request for renewal is made within the period of 6 months after the date of expiry of the registration, the fees payable are the prescribed renewal fee and the prescribed late renewal fee.

Renewal takes effect from the expiry of the previous registration.

If the registration is not renewed in accordance with this section and the rules mentioned in subsection (2), the Registrar must remove the trade mark from the register.

The Minister may make rules to provide for the restoration of the registration of a trade mark which has been removed from the register, subject to such conditions (if any) as may be prescribed.

Subject to subsection (2), a registered trade mark must not be altered in the register, either during the period of registration or on renewal.

The Registrar may, at the request of the proprietor, allow the alteration of a registered trade mark where the mark includes the proprietor’s name or address and the alteration is limited to alteration of that name or address and does not substantially affect the identity of the mark.

The Minister may make rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it.

A registered trade mark may be cancelled by the proprietor in respect of some or all of the goods or services for which it is registered.

The Minister may make rules

The registration of a trade mark may be revoked on any of the following grounds:

For the purposes of subsection (1), use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in Singapore includes applying the trade mark to goods or to materials for the labelling or packaging of goods in Singapore solely for export purposes.

The registration of a trade mark must not be revoked on the ground mentioned in paragraph (a) or (b) of subsection (1) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the 5 year period and before the application for revocation is made.

Any commencement or resumption of use referred to in subsection (3) after the expiry of the 5 year period but within the period of 3 months before the making of the application for revocation must be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.

An application for revocation may be made by any person, and may be made either to the Registrar or to the Court, except that

Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation must relate to those goods or services only.

Where the registration of a trade mark is revoked to any extent, the rights of the proprietor are deemed to have ceased to that extent as from

The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 7.

Where the registered trade mark was registered in breach of section 7 in that it is a trade mark mentioned in subsection (1)(b), (c) or (d) of that section, it must not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

The registration of a trade mark may be declared invalid on the ground

The registration of a trade mark may be declared invalid on the ground of fraud in the registration or that the registration was obtained by misrepresentation.

An application for a declaration of invalidity may be made by any person, and may be made either to the Registrar or to the Court, except that

An application for a declaration of invalidity of the registration of a trade mark on the ground that it was in breach of section 7(7) must not be made after the expiry of 5 years from

An application for a declaration of invalidity of the registration of a trade mark on the ground that there is an earlier trade mark in relation to which the conditions set out in section 8(3) or (4) apply

In deciding whether the registration of the later trade mark was applied for in bad faith, it is relevant to consider whether the applicant for the registration of the later trade mark had, at the time the applicant’s application was made, knowledge of, or reason to know of, the earlier trade mark.

Where the ground of invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark must be declared invalid as regards those goods or services only.

Where the registration of a trade mark is declared invalid to any extent, the registration is to that extent deemed never to have been made, but this does not affect transactions past and closed.

Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of 5 years in the use in the course of trade of a registered trade mark in Singapore, being aware of that use, there ceases to be any entitlement on the basis of that earlier trade mark or other right

Where subsection (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark or (as the case may be) the exploitation of the earlier right, even though the earlier trade mark or right may no longer be invoked against the proprietor’s later trade mark.

For the purposes of subsection (1), in deciding whether the registration of the later trade mark was applied for in bad faith, it is relevant to consider whether the applicant for the registration of the later trade mark had, at the time the applicant’s application was made, knowledge of, or reason to know of, the earlier trade mark or other right.

The proprietor of a registered trade mark has the exclusive rights

The proprietor has the right to obtain relief under this Act for infringement of the proprietor’s trade mark.

The acts amounting to infringement of a registered trade mark are set out in section 27, and references in this Act to the infringement of a registered trade mark are to be construed accordingly.

The rights accrue to the proprietor as from the date of registration of the trade mark, except that

If the trade mark is registered subject to any disclaimer or limitation, the rights of the proprietor are restricted by the disclaimer or limitation.

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.

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 where because

A person infringes a registered trade mark which is well known in Singapore if

For the purposes of this section and sections 28, 29 and 31, a person uses a sign if, in particular, the person

Despite subsection (4), a person who

Despite section 27, a person does not infringe a registered trade mark when

Despite section 27, a person does not infringe a registered trade mark by using an unregistered trade mark that is identical with or similar to the registered trade mark in relation to goods or services identical with or similar to those for which the trade mark is registered if the person, or the person and the person’s predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before

Despite section 27, a registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered.

Despite section 27, a person who uses a registered trade mark does not infringe the trade mark if such use

Despite section 27, a registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market, whether in Singapore or outside Singapore, under that trade mark by the proprietor of the registered trade mark or with the proprietor’s express or implied consent (conditional or otherwise).

Subsection (1) does not apply where

An applicant for registration of a trade mark, or the proprietor of a registered trade mark, may

Where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 26 are restricted accordingly.

The Minister may make rules as to the publication and entry in the register of a disclaimer or limitation.

An infringement of a registered trade mark is actionable by the proprietor of the trade mark.

Subject to the provisions of this Act, in an action for an infringement, the types of relief that the Court may grant include the following:

When the Court awards any damages under subsection (2)(b), the Court may also make an order under subsection (2)(c) for an account of any profits attributable to the infringement that have not been taken into account in computing the damages.

Except as provided for in subsection (3), the types of relief referred to in paragraphs (b), (c) and (d) of subsection (2) are mutually exclusive.

In any action for infringement of a registered trade mark where the infringement involves the use of a counterfeit trade mark in relation to goods or services, the plaintiff is entitled, at the plaintiff’s election, to

In awarding statutory damages under subsection (5)(c), the Court is to have regard to

Subject to subsection (3), where a person is found to have infringed a registered trade mark, the Court may make an order requiring the person

If an order under subsection (1) is not complied with, or it appears to the Court likely that such an order would not be complied with, the Court may order that the infringing goods, material or articles be delivered up to such person as the Court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be.

Where a person who is found to have infringed a registered trade mark has in the person’s possession, custody or control any counterfeit goods, the Court is to order that the counterfeit goods be delivered up to such person as the Court may direct for destruction if

The Court may, in addition to any relief granted under sections 31 and 32 in any action for an infringement of a registered trade mark, order any infringing goods, material or articles in the possession of the defendant or before the Court to be delivered up to the plaintiff.

An order is not to be made under this section unless the Court also makes, or it appears to the Court that there are grounds for making, an order under section 34.

A person to whom any infringing goods, material or articles are delivered up pursuant to an order under this section must, if an order under section 34 is not made, retain them pending the making of an order, or the decision not to make an order, under that section.

Where infringing goods, material or articles have been delivered up pursuant to an order under section 33, an application may be made to the Court

In considering what order (if any) should be made, the Court is to have regard to

Despite subsection (2), where the infringing goods are counterfeit goods, the Court is to order that the goods be destroyed if

The Court is to issue directions as to the service of notice on persons having an interest in the goods, material or articles.

Any person having an interest in the goods, material or articles is entitled

An order made under this section does not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on the appeal.

Subject to subsection (3), where there is more than one person interested in the goods, material or articles, the Court may direct that the goods, material or articles be sold, or otherwise dealt with, and the proceeds divided, and is to make any other order as it thinks just.

If the Court decides that no order should be made under this section, the person in whose possession, custody or control the goods, material or articles were before being delivered up, is entitled to their return.

Where a person threatens another with proceedings for infringement of a registered trade mark other than

The relief which may be applied for is any of the following:

The plaintiff is entitled to the relief mentioned in subsection (2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.

If the defendant showed that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned, the plaintiff is nevertheless entitled to relief if the plaintiff shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.

The mere notification that a trade mark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section.

Nothing in this section renders an advocate and solicitor liable to an action under this section in respect of an act done by him or her in his or her professional capacity on behalf of a client.

Where a registered trade mark is granted to 2 or more persons jointly, each of them is entitled, subject to any agreement to the contrary, to an equal undivided share in the registered trade mark.

Subsections (3) to (8) apply where 2 or more persons are co‑proprietors of a registered trade mark, by virtue of subsection (1) or otherwise.

Subject to any agreement to the contrary, each co-proprietor is entitled, by himself, herself or itself or the co‑proprietor’s agents, to do for the co‑proprietor’s own benefit and without the consent of or the need to account to the other or others, any act which would otherwise amount to an infringement of the registered trade mark.

One co-proprietor may not, without the consent of the other or others

Infringement proceedings may be brought by any co‑proprietor, but the co‑proprietor may not, without the leave of the Court, proceed with the action unless the other, or each of the others, is either joined as a plaintiff or added as a defendant.

A co-proprietor who is added as a defendant under subsection (5) is not to be made liable for any costs in the action unless that co‑proprietor takes part in the proceedings.

Nothing in subsection (5) affects the granting of interlocutory relief on the application of a single co‑proprietor.

Nothing in this section affects the mutual rights and obligations of trustees or personal representatives, or their rights and obligations as such.

A registered trade mark is assignable and transmissible in the same way as other personal or movable property, and is so assignable or transmissible either in connection with the goodwill of a business or independently.

An assignment or transmission of a registered trade mark may be partial, that is, limited so as to apply in relation to some but not all of the goods or services for which the trade mark is registered.

An assignment of a registered trade mark, or an assent relating to a registered trade mark, is not effective unless it is in writing signed by or on behalf of the assignor or (as the case may be) a personal representative.

Subsection (3) may be satisfied in a case where the assignor or personal representative is a body corporate by the affixing of its seal.

Subsections (1) to (4) apply to assignment by way of security as they apply to any other assignment.

A registered trade mark may be the subject of a charge in the same way as other personal or movable property.

Nothing in this Act is to be construed as affecting the assignment or transmission of an unregistered trade mark as part of the goodwill of a business.

On application being made to the Registrar by

The following are registrable transactions under subsection (1):

Until an application has been made for the registration of the prescribed particulars of a registrable transaction mentioned in subsection (2)(a), (c), (d) or (e), the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of the transaction.

A person who becomes the proprietor of a registered trade mark by virtue of any registrable transaction mentioned in subsection (2)(a), (c), (d) or (e) is not entitled to damages, an account of profits or statutory damages under section 31(5)(c) in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the date of the application for the registration of the prescribed particulars of the transaction.

To avoid doubt, subsections (3) and (4) do not apply to any registrable transaction relating to

Provision may be made by rules as to

Provision may also be made by rules as to the amendment of or removal from the register of particulars relating to a security interest on the application of, or with the consent of, the person entitled to the benefit of that interest.

No notice of any implied or constructive trust is to be entered in the register, and the Registrar is not to be affected by any such notice.

A notice of an express trust or of the beneficiary of an express trust, or both, may be entered in the register; but

Subject to the provisions of this Act, equities in respect of a registered trade mark may be enforced in like manner as in respect of other personal or movable property.

The provisions of sections 36, 37, 38 and 40 apply, with the necessary modifications, in relation to an application for the registration of a trade mark as they apply in relation to a registered trade mark.

For the purposes of subsection (1), the reference in section 37(1) to the granting of a registration is to be construed as a reference to the making of an application for the registration of a trade mark.

Any person claiming to be

The following are registrable transactions under subsection (3):

The Registrar must maintain a record of each notice given to the Registrar under subsection (3).

Until the notice mentioned in subsection (3) has been given to the Registrar in respect of a transaction mentioned in subsection (4)(a), (c), (d) or (e), the transaction is ineffective as against a person acquiring a conflicting interest in or under the application for registration of a trade mark in ignorance of the transaction.

To avoid doubt, subsection (6) does not apply to any registrable transaction relating to

Provision may be made by rules as to

Provision may also be made by rules as to the amendment of the record maintained by the Registrar relating to, or the removal from the records maintained by the Registrar of, the particulars of the granting of a security interest over an application for registration of a trade mark on the application of, or with the consent of, the person entitled to the benefit of that interest.

A licence to use a registered trade mark may be general or limited.

A limited licence may, in particular, apply in relation to some but not all of the goods or services for which the trade mark is registered.

A licence is not effective unless it is in writing signed by or on behalf of the grantor.

Subsection (3) may be satisfied in a case where the grantor is a body corporate by the affixing of its seal.

Subject to subsection (7), a licence to use a registered trade mark is binding on every successor in title to the grantor’s interest

Every person is deemed to have notice of a licence if the prescribed particulars of the grant of the licence are entered in the register under section 39(1).

Where an application under section 39(1) is made before 1 July 2004 to register the prescribed particulars of the grant of a licence, then, unless the licence provides otherwise, the licence is binding on every successor in title to the grantor’s interest.

Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include references to a sub‑licence or sub‑licensee.

In this Act, an “exclusive licence” means a licence (whether general or limited) authorising the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorised by the licence, and the expression “exclusive licensee” is to be construed accordingly.

Section 42 applies, with the necessary modifications, to an exclusive licence.

This section has effect with respect to the rights of a licensee in relation to infringement of a registered trade mark.

The provisions of this section do not apply where or to the extent that, by virtue of section 45(1), the licensee has a right to bring proceedings in the licensee’s own name.

A licensee is entitled, unless the licensee’s licence, or any licence through which the licensee’s interest is derived, provides otherwise, to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects the licensee’s interests.

If the proprietor

Where infringement proceedings are brought by a licensee by virtue of this section, the licensee may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant.

Subsection (5) does not affect the granting of interlocutory relief on an application by a licensee alone.

A proprietor who is added as a defendant under subsection (5) is not to be made liable for any costs in the action unless the proprietor takes part in the proceedings.

In infringement proceedings brought by the proprietor of a registered trade mark, any loss suffered or likely to be suffered by licensees must be taken into account.

The Court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of licensees.

The provisions of this section apply in relation to an exclusive licensee if or to the extent that the exclusive licensee has, by virtue of section 45(1), the rights and remedies of an assignee as if the exclusive licensee were the proprietor of the registered trade mark.

An exclusive licence may provide that the licensee has, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

Where or to the extent that the provision referred to in subsection (1) is made, the licensee is entitled, subject to the provisions of the licence and to the provisions of this section, to bring infringement proceedings, against any person other than the proprietor, in the licensee’s own name.

Any such rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered trade mark, and references to the proprietor of a registered trade mark in the provisions of this Act relating to infringement are to be construed accordingly.

In an action brought by an exclusive licensee by virtue of this section, a defendant may avail himself, herself or itself of any defence which would have been available to the defendant if the action had been brought by the proprietor of the registered trade mark.

Where the proprietor or an exclusive licensee of a registered trade mark brings proceedings for any infringement of the trade mark in respect of which the proprietor and the exclusive licensee have concurrent rights of action, the proprietor or the exclusive licensee (as the case may be) need not

A person who is added as a defendant as mentioned in subsection (5) is not to be made liable for any costs in the action unless the person takes part in the proceedings.

Where an action for infringement of a registered trade mark is brought which relates wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action

Subsection (7) applies whether or not the proprietor and the exclusive licensee are both parties to the action, and if they are not both parties, the Court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.

The Court, in making an order under section 33, may have regard to the terms of any exclusive licence.

The provisions of subsections (5) to (9) have effect subject to any agreement to the contrary between the exclusive licensee and the proprietor.

Any person who counterfeits a registered trade mark shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $100,000 or to imprisonment for a term not exceeding 5 years or to both.

A person who

In a prosecution under this section, the burden of proving the consent of the proprietor lies on the accused.

Any person who falsely applies a registered trade mark to goods or services shall, unless the person proves that the person acted innocently, be guilty of an offence and shall be liable on conviction to a fine not exceeding $100,000 or to imprisonment for a term not exceeding 5 years or to both.

For the purposes of this section and sections 49, 53 and 53A, a person falsely applies a registered trade mark to goods or services if

For the purposes of subsection (2), a trade mark is deemed to be applied to goods or services if it is used in

For the purposes of subsection (2)

In subsection (4) —

“covering” includes any stopper, glass, bottle, vessel, box, capsule, case, frame or wrapper;

“label” includes any band or ticket.