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A New Trade Marks Act
By Adrian Ee

The new Trade Mark Acts 1998 (New Act) has just been passed and came into force on 15 January 1999. This Act repeals the existing Trade Mark Acts Chapter 332 of the 1992 Revised Edition (Old Act).

The purpose of the New Act is to:-

(a) simplify and modernise the trade mark law;

(b) enable Singapore to meet its obligations under the TRIPS agreement (Trade-Related Aspects of Intellectual Property Rights and the Paris Convention for the protection of Industrial Property (Paris Convention); and

(c) enable Singapore to accede to other international agreements relating to trade marks (i.e Protocol relating to the Madrid Agreement concerning the International Registration of Marks - Madrid Protocol) [Government Gazette - Bills Supplement No. 42 1998] Some of the effects of the New Act are highlighted below:

1. The existing registered marks under the Old Act whether registered in Part A or B are treated as registered trade marks for the purpose of the New Act.
   
   
2. With the commencement of the New Act there will no longer be associated marks.
   
   
3. A disclaimer or limitation entered under the Old Act shall be deemed to be transferred to the new register under the New Act.
   
   
4. Pending applications - an application filed under the Old Act which is pending will be dealt with under the old law and if registered, the mark will be treated as an existing registered mark under the old law.
   
   
5. Transitional provisions - Conversions. An applicant in a pending application which has not been advertised before 15/1/99, may give notice to the Registrar claiming to have the registrability of the mark determined under the New Act. Notice must be given no later than 6 months after the commencement of the New Act (i.e no later than 14 July 1999). The official fee for filing the notice is S$150.
   
   
6. The advantage of conversion to the new Trade Marks Act is that there would no longer be a Part A or B register. As such, the lower requirement of "capability of distinguishing" will be adopted in determining registrability of the trade mark. The definition of what is a registrable trade mark has been widened to mean any visually perceptible sign capable of being represented graphically and capable of distinguishing goods or services dealt with or provided in the course of trade. Retail store services will now be registrable. However, the conversion will result in the loss of priority in that the application will be treated as having been filed on the date the Act came into force.
   
   
7. The New Act provides a means for a proprietor of a registered mark or a licensee to give a notice to the Director-General of Customs and Excise stating his objection to the importation of infringing goods.
   
   
8. A senior authorised officer of Customs or an authorised officer acting on the general or special direction of the senior authorised officer may board any vessel, aircraft or vehicle to search all parts of the conveyance for goods liable to be seized under the provisions of the Trade Marks Act.

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