TRADE MARKS (AMENDMENT) BILL

TRADE MARKS (AMENDMENT) BILL: Order for Second Reading read.

4.16 pm

The Deputy Prime Minister and Minister for Law (Prof. S Jayakumar): Mr Speaker, Sir, I beg to move, "That the Bill be now read a Second time."

Sir, this Bill seeks to amend the Trade Marks Act to pave the way for Singapore to ratify the Singapore Treaty on the Law of Trademarks. That Treaty is the tangible outcome of a very successful diplomatic conference that the World Intellectual Property Organisation held in Singapore in March last year. The Treaty further harmonises trademark registration procedures and provides for electronic filing, making it more convenient for businesses to register and manage their trademarks globally.

For applicants filing trademarks in Singapore to gain from the benefits of the Treaty, we need to bring our domestic trademarks regime into full compliance with its provisions, and also for us to ratify the Treaty.

Provision for multiple-class system

Sir, our trademarks regime is already largely compliant with the provisions of the Treaty. But for full compliance, we need to amend the Trade Marks Act to enable IPOS to fully implement a "multiple-class" trademark registration system.

For trademark registration, goods and services are categorised into 45 classes as defined in the Third Schedule of the Trade Mark Rules. Currently, those wishing to register a trademark with IPOS in more than one class have to submit a separate application for each class. With a multiple-class system, they only need to submit one single application for all the applicable classes. This will make it more

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convenient for trademark owners and their agents, as they will be able to manage their trademark registrations in appropriate bundles instead of handling each registration individually. For example, only one registration will be necessary for all classes of goods and services claimed for the same trademark. These bundles of registrations can be assigned, renewed or licensed as bundles as well.

To implement a multiple-class system, clause 3 of the Bill amends section 17 of the Trade Marks Act to allow the registration of a series of similar trademarks in two or more classes of goods or services. To complement a multiple-class system, clause 2 introduces a new section 5A to allow the division of a trademark application into two or more applications. This is because there may be times when an applicant may wish to divide up a multiple-class application into two or more applications. For example, the applicant may wish to register the trademarks for those classes that do not face opposition first, instead of holding the entire multiple-class application back.

Relief measures for procedural oversight

Sir, the Treaty also provides for relief measures to alleviate procedural mistakes by trademark applicants so that they do not lose the rights to the trademarks filed. This is because there may be instances when they miss certain time limits to respond to objections or queries from the Registrar of Trademarks and their trademark applications then become treated as withdrawn. There may also be instances when applicants may need more time to respond to the Registrar. To comply with the Treaty, clause 5 amends section 108 for rules to be made on extending time limits and for reinstating withdrawn trademark applications.

For consistency with the other rule-making provisions in the Act, clause 5 also removes the technical requirement

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for the Minister to consult IPOS on rule changes since these are inevitably done in consultation with IPOS.

Other amendments: registration of licence of pending trademarks

Other than aligning our trademarks regime with the provisions of the Treaty, this Bill also seeks to provide businesses with greater flexibility in trademark management. Specifically, clause 4 amends section 41 to allow the registration of licences relating to pending trademarks and not just registered trademarks. This is to enable third parties to take note of the licensee’s interest in the trademark. It is useful even if the trademark is pending registration as some trademarks can quickly acquire goodwill and become highly desirable for licensing through franchising. This proposed amendment will enhance our business-friendliness and put Singapore on par with jurisdictions such as the UK and Australia.

To sum up, Sir, this Bill will bring about greater convenience to businesses as well as update our trademarks regime to be on par with international practices. It will also enable us to ratify and participate in the Singapore Treaty on the Law of Trademarks so that applicants filing trademarks in Singapore may benefit when the Treaty comes into operation. Consultations by IPOS indicate that the proposed changes have been welcomed by trademark applicants and supported by the trademark agents in Singapore.

Sir, I beg to move.

Question put, and agreed to.

Bill accordingly read a Second time and committed to a Committee of the whole House.

The House immediately resolved itself into a Committee on the Bill. - [Prof. S Jayakumar].

Bill considered in Committee.

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The Deputy Prime Minister and Minister for Law (Prof. S Jayakumar):

The Chairman: The citation year "2006" will be changed to "2007", as indicated in the Order Paper Supplement.

Clauses 1 to 6 inclusive ordered to stand part of the Bill.

Bill reported without amendment; read a Third time and passed.

Mr Speaker: Order. I propose to take the break now. I suspend the Sitting and will take the Chair again at 4.45 pm.

Sitting accordingly suspended

at 4.24 pm until 4.45 pm.

Sitting resumed at 4.45 pm

[Mr Deputy Speaker (Mr Matthias Yao Chih) in the Chair]: