Relevance of a Function-based Analysis for Trade Mark Infringements in Singapore

the following article is an add-on to this article
that introduces the role of the trademark functions when evaluating trademark infringements in the EU and in Singapore.

Trademark functions in Singapore Jurisprudence

Although Singapore has not developed as extensive jurisprudence as we have seen in the EU concerning the intended functions of trade marks and how these can be used to define the rights of the proprietor, case law and academic commentary has embraced the European function-based approach to these questions.

In the Court of Appeal decision in City Chain, for example, the Court favourably considered the English statement from Arsenal v Reed that:

“the relevant consideration was whether the use complained about was likely to damage that property right or, as the ECJ put it, is likely to affect or jeopardise the guarantee of origin which constitutes the essential function of the mark. That did not depend on whether the use complained of was trade mark significance”
City Chain para 21; referring to Aldous LJ in Arsenal Football Club Plc v Reed [2003] RPC 39 at [33]

Additionally, in his textbook on trademarks, Tan Tee Jim notes that, as in the EU, in Singapore the essence of a trade mark is that it is a badge of origin indicating trade source. He notes that the:

use of a mark in a manner not indicative of the trade origin has not been perceived to encroach upon the proprietor’s monopoly rights. This is consistent with Article 15 of the TRIPS Agreement as well as section 2(1) of our 1998 Act which defines a trade mark as any sign capable of being represented graphically and capable of distinguishing goods or services ‘in the course of trade’” (page 224)

Further, George Wei notes in his writings ‘Some Thoughts on Intellectual Property Rights in Singapore’ that “in its purest form, registered trade mark protection is all about protecting indicia of origin applied to actual goods and services in the market place” (page 227).


Conclusion – Relevance for Intermediary Cases in SIngapore

Applying this to Intermediary cases, such as freight forwarders and Internet Service Providers, their actions do not infringe the core function of the relevant marks to indicate origin. As in the English case of Eli Lilly, the relevant marks would not see the light of day within Singapore unless special circumstances are given. At no point do Intermediaries have any dealings with the infringing goods, or obtain any commercial advantage from them, and at no point would the actions of Intermediaries bring the signs in front of consumers based in Singapore. The core function of the relevant marks to indicate origin were therefore wholly unaffected by any of the actions of Intermediaries and no infringement action can, therefore, lie against them in Singapore.

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