October 1, 2015
Grounds for legal action
Foreign brand-owners seeking to protect or enforce their unregistered marks in Singapore can typically do so by taking action under the tort of passing-off, or by asserting that the mark(s) is a well-known mark and seeking protection under section 55 of the Trade Marks Act.
There are three elements to satisfy before a brand-owner can maintain an action in passing-off. First, that the brand-owner has goodwill in Singapore. Second, that there is a misrepresentation (e.g. the misuse of a trade mark by an infringer to indicate a connection with the brand-owner where there is none). Third, that the brand-owner has suffered loss and damage.
Historically, foreign brand-owners which did not conduct any business activity in Singapore were not considered to have any goodwill in Singapore and therefore not entitled to maintain an action in passing-off.
Is goodwill within the jurisdiction required?
In 2014, the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resort Worldwide, Inc  1 SLR 911, indicated that it may be prepared to soften this position and recognise that a foreign business without business activities in Singapore could have goodwill within the jurisdiction (but the Court expressly stated that it would not make a determination on this point until an appropriate case requires a determination).
However, in the recent 2015 Court of Appeal case of Guy Neale v Ku De Ta SG Pte Ltd  4 SLR 283* (Ku De Ta), the Court of Appeal, after examining authorities in other common law jurisdictions (UK, Australia and Hong Kong), re-affirmed the legal position that:
“a foreign trader who does not conduct any business activity in Singapore will generally not be able to maintain an action in passing off here.”
The Court of Appeal felt that the Ku De Ta case was not the appropriate case to change the law.
Only well-known marks are protected
The effect of the decision in the Ku De Ta case is that foreign brand-owners that do not have a business presence or business activities in Singapore will be unable to protect their unregistered marks in Singapore unless the marks are entitled to protection as well-known marks.
Section 55 Trade Marks Act – Requirements and limitations
Although well-known mark(s) are entitled to protection under section 55 of the Trade Marks Act, there are certain statutory requirements / limitations:
The foreign brand-owner will need to overcome the evidentiary burden of proving that the marks are well-known in Singapore.
The remedy available for an action under section 55 is limited to an injunction against further use of the mark. In contrast, a successful action in trade mark infringement or passing-off entitles foreign brand-owners to both injunctive relief and damages.
It is advisable for a foreign trade mark owner to secure registration for its mark in Singapore ahead of its intention to enter the Singapore market. However, the mark should be used within five years from the date of registration, failing which the registration may be susceptible to revocation.
*Rodyk & Davidson LLP acted for Ku De Ta Pte Ltd before the Court of Appeal.