{"id":136620,"date":"2026-04-08T12:45:21","date_gmt":"2026-04-08T12:45:21","guid":{"rendered":"https:\/\/my.legal500.com\/guides\/?post_type=comparative_guide&#038;p=136620"},"modified":"2026-04-08T12:45:21","modified_gmt":"2026-04-08T12:45:21","slug":"singapore-trademark-disputes","status":"publish","type":"comparative_guide","link":"https:\/\/my.legal500.com\/guides\/chapter\/singapore-trademark-disputes\/","title":{"rendered":"Singapore: Trademark Disputes"},"content":{"rendered":"","protected":false},"template":"","class_list":["post-136620","comparative_guide","type-comparative_guide","status-publish","hentry","guides-trademark-disputes","jurisdictions-singapore"],"acf":[],"appp":{"post_list":{"below_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Drew &amp; Napier<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2019\/12\/DN_LOGO_RGB-1.jpg\"\/><\/span><\/div>"},"post_detail":{"above_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Drew &amp; Napier<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2019\/12\/DN_LOGO_RGB-1.jpg\"\/><\/span><\/div>","below_title":"<span class=\"guide-intro\">This country specific Q&amp;A provides an overview of Trademark Disputes laws and regulations applicable in Singapore<\/span><div class=\"guide-content\"><div class=\"filter\">\r\n\r\n\t\t\t\t<input type=\"text\" placeholder=\"Search questions and answers...\" class=\"filter-container__search-field\">\r\n\t\t\t<\/div>\r\n\r\n\t\t\t\r\n\r\n\r\n\t\t\t<ol class=\"custom-counter\">\r\n\r\n\t\t\t\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">To represent a client before Court in respect of a potential trademark infringement matter, do you require a Power of Attorney \u2013 and if so, what are the execution formalities required by your courts?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A Power of Attorney is not required to represent a client before the Singapore Court in respect of a potential trade mark infringement matter.<\/p>\n<p>Instead, when a party who was not represented by a solicitor decides to appoint a solicitor, the party must file and serve a notice of appointment of solicitor on all the parties. The formal requirements for the notice of appointment are set out in a prescribed form in the Supreme Court Practice Directions. Certain details are required to be included in the form, such as the name(s) of the solicitor(s), the name of the firm of the solicitor(s), and the address of the solicitor as the address for service.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it a requirement in your jurisdiction to send a cease and desist letter to a potential infringer before commencing proceedings for infringement? What are the consequences for a trademark owner who chooses not to send a pre-action letter?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>While it is not a requirement to send a cease and desist letter, it is requirement to make an offer of amicable resolution before commencing proceedings unless the party has reasonable grounds not to do so. There are no prescribed formalities regarding an offer to settle, and the only two requirements are that an offer of amicable resolution and any rejection must be in writing and open for acceptance for at least 14 days unless parties agree otherwise.<\/p>\n<p>If a trade mark owner chooses not to make an offer of amicable resolution (e.g. via a pre-action letter), there may be implications on the costs awarded. The Court may disallow or reduce a trade mark owner\u2019s costs (should it be the successful party) or order that party to pay costs, if that party has not discharged its duty to consider amicable resolution of the dispute or to make an offer of amicable resolution.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, is there a risk that a pre-action letter could give rise to claim against the trademark owner for unjustified threats? What steps should a trademark owner take to ensure any cease and desist letter does not expose the trademark owner to any liability.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>There is a risk that a pre-action letter could give rise to a claim against the trade mark owner for groundless threats of trade mark infringement. The claimant of the groundless threats of infringement proceedings is entitled to relief unless the trade mark owner (i.e. 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.<\/p>\n<p>Before the issuing of any cease and desist letter, the trade mark owner should take steps to ensure that any potential threats included in the letter are justified, to ensure that the letter does not expose the trademark owner to any liability.<\/p>\n<p>In addition, a party will not be liable for groundless threats of trade mark infringement if the threat is not actionable, i.e. it is in relation to (a) the application of the mark to goods or to material used or intended to be used for labelling or packaging goods; (b) the importation of goods to which, or to the packaging of which, the mark has been applied; or (c) the supply of services under the mark. Hence, if a trade mark owner\u2019s claims are limited to the above 3 situations, it will not be liable for groundless threats of trade mark infringement when it issues a cease and desist letter to the potentially infringing party.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it mandatory for the parties to have attempted mediation or other alternative dispute resolution proceedings prior to commencing infringement proceedings? If so, what is the minimum expectation?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A party to any proceedings has the duty to consider amicable resolution of the party\u2019s dispute before the commencement of infringement proceedings.<\/p>\n<p>In addition, a party is to make an offer of amicable resolution before commencing the action unless the party has reasonable grounds not to do so. A party to any proceedings must not reject an offer of amicable resolution either, unless the party has reasonable grounds to do so. An offer of amicable resolution referred to above means making an offer to settle the action or appeal or making an offer to resolve the dispute other than by litigation, whether in whole or in part.<\/p>\n<p>Hence, while it is not mandatory for parties to have attempted mediation or other alternative dispute resolution proceedings prior to commencing infringement proceedings, if parties fail to do so \/ there are no reasonable grounds for not attempting alternative dispute resolution, there may be consequences on costs awarded.<\/p>\n<p>The minimum requirement \/ expectation is for parties to consider amicable resolution (i.e. mediation or other alternative dispute resolution proceedings).<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are claims for trademark infringements heard before a general commercial Court or a specialist Court focused on Intellectual Property disputes? Are trademark infringement claims decided by a judge or by a jury?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Claims for trade mark infringement are heard in the first instance before the General Division of the High Court (\u201cGDHC\u201d).<\/p>\n<p>Trade mark infringement cases in Singapore are decided by a judge. Singapore does not administer jury trials. The Supreme Court has designated several of its High Court Judges as Intellectual Property Judges who will usually hear intellectual property cases, including trade mark infringement cases.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is there a time limit for commencing trademark infringement proceedings once the facts giving rise to the infringement are known to the trademark owner. After how long would such a claim be time-barred? What action would a trade mark owner have to know to give rise to such a claim being time-barred (for example, is it knowing that a mark in question is in use or is it knowing that a trade mark application has been filed and\/or registered?)<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In Singapore, trade mark infringement is classified as a statutory tort. As such, there is a statutory time limit for commencing trade mark infringement proceedings The limitation period is six years from the date on which the cause of action accrued, i.e. when the infringing act first occurred.<\/p>\n<p>Notwithstanding the above, where the trade mark infringement first occurred more than six years ago and the breach is still continuing, the claimant can still sue for a continuing breach, so long as the claimant does not seek relief for conduct which occurred more than six years prior to the suit.<\/p>\n<p>Separately, there are common law defences which may also prevent a trade mark owner from bringing a claim. Commonly, these are the defences of laches, acquiescence and estoppel. These defences are closely related to the amount of time which was allowed to lapse from the time when the trade mark owner knew of the defendant\u2019s infringing conduct \/ use of the infringing mark, to the time that a suit was commenced. However, there is no prescribed or fixed time frame in relation to these common law defences, i.e. there is no fixed amount of time which must have lapsed before the defences of laches, acquiescence or estoppel would be made out.<\/p>\n<p>The trade mark owner\u2019s knowledge will have to pertain to knowledge that a mark in question is in use, rather than knowledge that a trade mark application has been filed and \/ or registered, since the course of action contemplated is trade mark infringement.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction does the law protect unregistered trademarks of any kind, including by way of passing off, unfair competition or protection of trade dress. What are the criteria for their subsistence?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Unregistered trade marks are protectable under Singapore law. Trade dresses, also referred to as \u201cget up\u201d, can also be considered a form of unregistered trade marks, protectable in Singapore.<\/p>\n<p>Unregistered trade marks are protectable under the tort of passing off. To succeed in a passing off action in Singapore, the claimant must establish the following three elements:<\/p>\n<p>(a) That the claimant provides goods \/ services in Singapore and therefore claims goodwill in its business in Singapore;<\/p>\n<p>(b) That the claimant\u2019s trade mark is distinctive of the client\u2019s business \/ goods \/ services in Singapore, and the use by the defendant of a confusingly similar mark will mislead consumers into believing that its services are that of, or somehow associated with, the claimant (also known as misrepresentation);<\/p>\n<p>(c) That the misrepresentation above will likely damage the claimant\u2019s goodwill.<\/p>\n<p>Unfair competition is not a separately recognised cause of action in Singapore, although it is recognised in other countries such as the United States. The same acts, in Singapore, would typically be dealt with under the tort of passing off.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction will the Court hear claims for registered trademark infringement in parallel with claims for passing off,unfair competition, infringement of trade dress or other misleading advertising, or does a claimant need to bring such claims in a separate cause of action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The Singapore Court will hear claims for trade mark infringement in parallel with related claims for the tort of passing off arising from the same factual scenario. There is no need for the claimant to bring a separate set of proceedings<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, do your Courts share jurisdiction with your Trade Mark Office, such that parties need to seek to seize the forum they prefer first in time, or does the Court take precedence and intervene to stay or transfer any live Registry proceedings (for example relating to invalidity or revocation of registered trade mark) which may overlap with an issued infringement claim and related counterclaim?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Claims for trade mark infringement are heard in the first instance by the GDHC. The Registry does not hear infringement proceedings.<\/p>\n<p>Applications for invalidation and\/or revocation may made to either the GDHC or the Registry in the first instance. However, if proceedings concerning the trade mark in question (including infringement proceedings) are already pending before the GDHC, the application for invalidation and\/or revocation must be made to the GDHC. If in any other case where the application for invalidation and\/or revocation is made to the Registrar, the Registrar may at any stage of the proceedings refer the application to the GDHC.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Where the defendant has a counterclaim for invalidity or cancellation of the registered trademark being asserted against it (either on the basis of earlier rights or as a result of non-use by the trademark proprietor), does the counterclaim become part of the infringement action, so that both issues are heard by the same Court within a single action, with the Court making a determination at its conclusion, or are the validity issues bifurcated and heard in separate parallel proceedings? If in your jurisdiction validity issues are bifurcated, what are the practical consequences of this from a timing perspective? For example, does this mean that a Court will stay the infringement claim and proceed with the validity attack first to avoid finding a trademark infringed, only to have a separate Court find the trademark invalid at a later date?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The counterclaim for invalidation and\/or revocation becomes part of the same proceedings and is heard together with the claim for infringement.<\/p>\n<p>While it is possible to apply for bifurcation, the typical form of bifurcation in trade mark infringement matters before the GDHC is for the issues of infringement and invalidity\/revocation to be heard together in the first tranche of trial, and for the assessment of damages to be heard in the second tranche of trial.<\/p>\n<p>It is not common for infringement issues to be bifurcated and heard separately from invalidity\/revocation issues before the GDHC.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, does a defendant have a defence of using a mark honestly and concurrently available to them?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Under Singapore law, a trade mark applicant may attempt to rely on honest concurrent use to overcome objections raised by the Registry based on earlier third-party marks. However, honest concurrent use is not a standalone defence to trade mark infringement.<\/p>\n<p>A defendant facing a trade mark infringement claim may instead try to rely on other defences such as the statutory defence of prior use, or the common law defence of acquiescence.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">When considering the validity of a registered trade mark, does the Court consider whether the trade mark has been registered in bad faith? If so, what actions would indicate this bad faith?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes, a registered trade mark may be invalidated if it was applied for in bad faith. The bad-faith inquiry is a fact sensitive one that demands careful examination of all the relevant circumstances, including but not limited to the parties\u2019 knowledge as well as any pre-existing relationships. In general, bad faith includes dishonesty and dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area being determined.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">If the main objective in commencing infringement proceedings is to secure an injunction, is a claimant required to state how much their claim is worth at the point their claim is issued?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>It is not necessary to plead exactly how much the claim is worth when proceedings are issued. It is acceptable to plead that damages are to be assessed.<\/p>\n<p>However, for completeness, it should be noted that the Electronic Filing System will require the claimant to provide an estimated value of its unliquidated claim before the claim can be issued. In our experience, the estimate need not be very specific.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it possible to seek a preliminary injunction in your jurisdiction? If so, what is the criteria a trademark owner needs to establish and is there a bond or other undertaking in damages payable to compensate the defendant if the Court finds no infringement following a substantive hearing?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>It is possible to apply for a preliminary injunction (\u201cPI\u201d) on the basis of trade mark infringement. In order to succeed in such an application, the applicant must prove that:<\/p>\n<p>a. There is a serious question to be tried;<br \/>\nb. The applicant cannot be adequately compensated by damages alone if a PI is not granted; and<br \/>\nc. The balance of convenience must lie in favour of granting a PI.<\/p>\n<p>In the event a PI is granted, the applicant will typically be required to provide an undertaking to compensate the injuncted party for any damages that it may suffer as a result of the PI, in the event that the applicant is eventually unsuccessful at trial. In some cases (especially when the applicant is not based in Singapore), the applicant may even be required to provide additional security in the form of a banker\u2019s guarantee or payment into Court.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is a licensee (whether exclusive or non-exclusive) of a registered trademark entitled to commence proceedings for trademark infringement? Does the trademark proprietor need to be joined as a party to the proceedings, and does it have an effect whether the licensee is registered before the local Trademark Registry?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A licensee of a registered trade mark is entitled (unless the licensee\u2019s licence or any licence through which the licensee\u2019s interest is derived provides otherwise) to call on the proprietor of the registered trade mark to commence proceedings for trade mark infringement. If the proprietor refuses to do so or fails to do so within 2 months of being called upon, the licensee may bring the proceedings in the licensee\u2019s own name as if the licensee were the proprietor. However, the licensee may not, without the permission of the Court, proceed with the action unless the proprietor is either joined as a claimant or added as a defendant.<\/p>\n<p>Where an exclusive licence provides that the licensee shall have the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment, that exclusive licensee is entitled to bring infringement proceedings in his own name. the proprietor need not be joined as a claimant or defendant unless the Court otherwise orders.<\/p>\n<p>It is possible to register a trade mark licence with IPOS. However, this is not mandatory and does not affect the right of the licensee to commence proceedings.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Where the claim for trademark infringement is premised on similarity between the defendant\u2019s mark and the trademark owner\u2019s registered mark, does the proprietor need to demonstrate that confusion has occurred or simply that there is a risk of confusion? What is the minimum standard required to secure a finding of infringement?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>There is infringement if, without the consent of the trade mark proprietor, 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 similar to the trade mark proprietor\u2019s registered trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered. Accordingly, the trade mark proprietor only needs to show that there exists a likelihood of confusion on the part of the public. While evidence of actual confusion may be helpful, its absence will not be accorded undue significance.<\/p>\n<p>There is no minimum standard per se which is required to secure a finding of infringement. The court will look at several factors in deciding whether there is a likelihood of confusion on the part of the public, which include but are not limited to:<\/p>\n<p>(a) The degree of similarity between the two marks;<br \/>\n(b) The degree of similarity between the parties\u2019 goods and\/or services;<br \/>\n(c) The level of care that an average consumer will exercise in purchasing the goods and\/or services;<br \/>\n(d) The reputation of the earlier trade mark; and<br \/>\n(e) The typical manner or circumstances in which an average consumer purchases the goods and\/or services in question.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction is it possible to rely on post-sale confusion as a means of securing a finding of trade mark infringement?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>It is not possible to rely on post-sale confusion as a means of securing a finding of trade mark infringement in Singapore.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction what type of disclosure or discovery is typically ordered by the Court in respect of trademark infringement actions from both parties?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In infringement proceedings, the Court may order parties to produce documents in their possession or control (i.e., general discovery) that will be relied upon, are known to be adverse, or are otherwise agreed upon by the parties or ordered by the Court for production. The Court may also direct the production of specific documents that are properly identified and demonstrated to be material (i.e., specific discovery).<\/p>\n<p>It is also possible to apply to the Court for the production of documents and information prior to initiating proceedings (i.e., pre-action discovery) or against non-parties. This is to identify possible parties to any proceedings, to enable a party to trace the party\u2019s property or for any other lawful purpose, in the interests of justice.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What type of expert evidence is permitted by the Court in your jurisdiction? Does the Court accept consumer surveys and are there specific rules about how consumer surveys are conducted. Do the parties need to request prior permission from the Court to adduce survey evidence?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Expert evidence is not permitted without prior approval from the Court. The Court will only permit the use of expert evidence if it will (1) contribute materially to the determination of any issue that relates to scientific, technical or other specialised knowledge, and (2) resolve such issues by an agreed statement of facts or by submissions based on mutually agreed materials.<\/p>\n<p>In trade mark proceedings, expert evidence taking the form of consumer surveys which addresses matters involving, among other things, the degree of public recognition of a mark, the distinguishing features of a mark from the consumers&#8217; perspective, the degree of similarity between two marks, and the degree of likely or actual confusion between two marks, are permitted by the Courts in Singapore.<\/p>\n<p>While consumer surveys may be accepted as evidence, the court will have regard to the Whitford guidelines (which are non-exhaustive) to determine the weight to be accorded to such evidence. The guidelines are, but not limited to:<\/p>\n<p>(a) the interviewees in the survey must be selected so as to represent the relevant cross-section of the public;<\/p>\n<p>(b) the size of the survey must be statistically significant;<\/p>\n<p>(c) the survey must be conducted fairly;<\/p>\n<p>(d) all the surveys carried out must be disclosed, including the number of surveys carried out, how they were conducted and the totality of the persons involved;<\/p>\n<p>(e) the totality of the answers given must be disclosed and made available to the defendant;<\/p>\n<p>(f) the questions must neither be leading, nor should they lead the person answering into a field of speculation he would never have embarked upon had the question not been put;<\/p>\n<p>(g) the exact answers and not some abbreviated form should be recorded;<\/p>\n<p>(h) the instructions to the interviewers as to how to carry out the survey must be disclosed; and<\/p>\n<p>(i) where the answers are coded for computer input, the coding instructions must be disclosed.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Does evidence submitted by your client in trademark infringement proceedings have to be accompanied with a statement of truth or other similar declaration?  Which party is typically responsible for signing the statement of truth (or similar), the entity itself or the entity's representatives?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Evidence submitted to the court is typically in the form of an affidavit, which is a written statement sworn\/affirmed under oath before a Commissioner for Oaths or Notary Public. The entity itself is responsible for swearing\/affirming the affidavit.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction is it possible for a claimant to seek summary judgment and\/or strike out of an infringement claim? What are the legal criteria for a Court to grant summary judgment?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>It is possible for a claimant to seek summary judgment or apply to strike out an infringement claim in Singapore.<\/p>\n<p>A claimant may apply for summary judgment against any defendant after the defence has been filed and served in an Originating Claim on the ground that the defendant has no defence to (a) a claim; (b) a particular part of a claim; or, (c) a claim or part of a claim, except as to the amount of any damages claimed.<\/p>\n<p>To obtain summary judgment, a claimant must first show that he has a prima facie case that the defendant had committed infringing use of the claimant\u2019s trade mark. If the claimant successfully shows that he has a prima facie case, the burden then shifts to the defendant who, in order to obtain leave to defend, must show that there is a triable issue or a bona fide defence or that for some other reason there ought to be a trial. Although a complete defence need not be shown, the court will not grant leave to defend if the defendant only provides a mere assertion, contained in an affidavit, of a given situation which forms the basis of his defence.<\/p>\n<p>A claimant may apply to strike out any or part or any pleading on the grounds that: (a) it discloses no reasonable cause of action; (b) the infringement claim is an abuse of process of the court; or (c) it is in the interests of justice to do so. The threshold for striking out a pleading is high. The claim must be obviously unsustainable, the pleadings unarguably bad and it must be impossible, not just improbable for the claim to succeed before the court will strike it out.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How long does it typically take to reach judgment in a trademark infringement action from issue of the claim, through to first instance decision? What is the lower and upper range of legal costs for such an action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>It typically takes one to two years to reach judgment in a trade mark infringement action from issue of the claim, through to first instance decision.<\/p>\n<p>In Singapore, practitioners typically charge based on the time spent, with fees varying significantly. The costs are highly dependent on the number and complexity of claims, the volume of evidence presented, the duration of the trial, the number of witnesses involved, and the filing of interlocutory applications or appeals, if any.<\/p>\n<p>Additionally, under the Simplified Process for Certain Intellectual Property Claims (\u201cSimplified Process\u201d), an optional track for intellectual property disputes, the claimant may choose to proceed with the Simplified Process, provided the claim is deemed suitable for such resolution. The Simplified Process is designed to streamline procedures and reduce costs, although the precise duration and legal costs will vary based on the specifics of the case.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Following a first instance decision, is it possible for either party to appeal the decision? What are the grounds upon which an appeal can be lodged? Is it necessary to request permission to appeal, or are appeals automatically permissible? If either party file an appeal, is the enforcement of the first instance decision stayed pending the outcome of the appeal?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Claims for trade mark infringement are heard at first instance before the GDHC.<\/p>\n<p>The decision of GDHC may be appealed to the Appellate Division of the High Court. The appeal may be lodged on grounds of error(s) of law and\/or fact. As the appeal is by way of rehearing, there is no threshold requirement for a material error of factor or law to be shown before appellate intervention is warranted.<\/p>\n<p>The decision of the Appellate Division of the High Court may be appealed only if the Court of Appeal grants permission. The Court of Appeal will only grant permission if the appeal will raise a point of law of public importance.<\/p>\n<p>An appeal does not operate as a stay of enforcement unless the lower Court or the appellate Court so directs.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">If the parties have been involved in a dispute before the local Trademark Office, what relevance does this have on later infringement proceedings? For example where trademark owner (A) may have already sought to oppose the registration of a third party (B\u2019s) mark in proceedings before the local Trade Mark Office, is the trademark owner estopped from seeking invalidity of a registered trade mark where its opposition failed where the invalidity action is based on the same grounds as the unsuccessful opposition?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>There is no local case law on this issue. More particularly, the position on whether the doctrine of res judicata (which encompasses, action estoppel, issue estoppel and the defence of abuse of process) will operate to preclude one party from raising certain claims in infringement proceedings against the other party\u2013 where the same parties were previously involved in a dispute before the local Trademark Office concerning same or related issues &#8211; is unsettled in Singapore.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, does the Court consider both liability and quantum within the same proceeding, or will any damages be assessed after the Court has reached a decision on liability? How are damages for trademark infringement proceedings typically assessed in your jurisdiction?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The issues of liability and quantum are considered by the Court in the same proceedings unless the proceedings were ordered to be bifurcated. It is not uncommon for trade mark infringement matters to proceed on a bifurcated basis with liability to be determined in the first tranche of trial, followed by the assessment of damages in the second tranche of trial.<\/p>\n<p>Damages are typically assessed based on the principle that damages are compensatory in nature and intended to put the claimant in the same position they would have been in if the infringement had not occurred. The burden of proof lies on the claimant, but damages will be liberally assessed. The claimant\u2019s right to damages is unaffected by the defendant\u2019s innocence.<\/p>\n<p>Where the infringement involves the use of a counterfeit trade mark, the claimant may elect to receive an award for statutory damages in lieu of damages or an account of profit. In awarding statutory damages, the Court will have 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.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In addition to an injunction and damages, what other remedies are available in your jurisdiction?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Other remedies include: (a) an account of profits, (b) statutory damages (applicable only where the trade mark infringement involves a counterfeit trademark), (c) an order for (i) erasure of the offending sign, (ii) delivery up of the infringing goods, material or articles, (iii) disposal of infringing goods, material or articles, (d) an order for destruction of the infringing goods, materials or articles (i) where erasure of the offending sign is not feasible, (ii) following an order for delivery up of the infringing goods, materials or articles.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Following a decision on the merits, is the winner entitled to recover all or a portion of its legal costs incurred in bringing or defending the proceedings. If legal costs are recoverable, what is the procedure involved and how does the Court assess the level of legal costs which should be reimbursed by the losing party.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The winning party is usually awarded legal costs by the Court 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 winning party of his costs in part or in full.<\/p>\n<p>As to the extent of recovery, costs are ordinarily assessed by the Court on a \u201cstandard\u201d basis, which means: (i) a reasonable amount in respect of all costs reasonably incurred would be awarded and (ii) any doubts as to whether the costs were reasonably incurred or were reasonable in amount will be resolved in favour of the paying party. In assessing the quantum of the costs award, the Court will consider all relevant circumstances, including:<\/p>\n<p>a. efforts made by the parties at amicable resolution;<\/p>\n<p>b. the complexity of the case and the difficulty or novelty of the questions involved;<\/p>\n<p>c. the skill, specialised knowledge and responsibility required of, and the time and labour expended by, the solicitor;<\/p>\n<p>d. the urgency and importance of the action to the parties;<\/p>\n<p>e. the number of solicitors in the case for each party;<\/p>\n<p>f. the conduct of the parties;<\/p>\n<p>g. the principle of proportionality; and<\/p>\n<p>h. the stage at which the proceedings were concluded.<\/p>\n<p>A general guide on the quantum and methodology of costs awards in proceedings including intellectual property cases is set out in Appendix G of the Supreme Court Practice Directions 2021. In practice, the winning party will typically recover a portion of its legal costs.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Once the Court has issued a judgment, how long typically does the losing party have to comply with the Court\u2019s judgment including any final injunction issued? What are the consequences for failing to comply and how would the winning party seek enforcement of its judgement.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The losing party must comply with the Court\u2019s judgment within the time frame specified by the Court in the order of the Court. If no time for compliance is specified, immediate compliance is required.<\/p>\n<p>If a losing party fails to comply with the order of the Court, a winning party may take out an application to Court for one or more of the following enforcement orders:<\/p>\n<p>a. order for examination of enforcement respondent (to determine the properties which are owned by the losing party beneficially or which the losing party will be entitled to in the future);<\/p>\n<p>b. order for seizure and sale of property;<\/p>\n<p>c. order for delivery and possession of property;<\/p>\n<p>d. order for attachment of debt; and<\/p>\n<p>e. order for committal.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\r\n<div class=\"word-count-hidden\" style=\"display:none;\">Estimated word count: <span class=\"word-count\">5487<\/span><\/div>\r\n\r\n\t\t\t<\/ol>\r\n\r\n<script type=\"text\/javascript\" src=\"\/wp-content\/themes\/twentyseventeen\/src\/jquery\/components\/filter-guides.js\" async><\/script><\/div>"}},"_links":{"self":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide\/136620","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide"}],"about":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/types\/comparative_guide"}],"wp:attachment":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/media?parent=136620"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}