TRADE MARKS (AMENDMENT) BILL

Order for Second Reading read. 3.15 pm

The 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 has two main aspects. First, it is to provide greater protection for trade marks against infringement and against sale of counterfeit products. Secondly, it also introduces the registration of service marks.

On the first aspect, Members know that there has been a growing problem in respect of counterfeit goods sold in Singapore. This has been compounded by the related problem of touting caused by the sale of such counterfeit goods. Parliament has already acted in June 1989 to enhance the penalties for touting. That alone, however, is not enough. It is also necessary to provide more severe penalties for the sale of counterfeit goods to protect the rights of owners of these goods who have invested heavily in research, design, pro- duction and marketing. The proposed new penalties are consistent with those in other related Acts, such as the Copyright Act, Consumers Protection (Trade Descriptions and Safety Requirements) Act.

On the second aspect, the existing Trade Marks Act does not provide for the registration of marks used for distinguishing services offered in the course of trade or business. Many establishments in Singapore offer services in their trade or business and they use distinguishing marks for that purpose. These are useful business assets and the proprietors should have a right to their exclusive use. The present trend world-wide, including the United Kingdom, is to provide for legal protection of service marks. The introduction of service marks would benefit Singapore entrepreneurs as such marks enhancing the identity of business operations are the foundation on which market reputation and recognition stand.

I should add, however, that these provisions on service marks will only be brought into operation after the Registry of Trade Marks has made the necessary administrative preparations to deal with the huge initial surge of applications which can be expected, as was the experience in the United Kingdom and Australian Registries. For example, when service mark registration was introduced in Australia, applications for such marks were 50% more than the normal trade mark registration applications.

The Bill also modifies the requirements for the registration of trade marks under Part B of the Trade Marks register. Presently, a trade mark for consideration under Part B must have been in Singapore for not less than two years prior to the date of application and be capable of distinguishing the applicant's goods. The criteria for determining distinctiveness are less onerous than those for the main part. This provision was copied from the old United Kingdom Trade Marks Act of 1919. However, this requirement was omitted from the subsequent United Kingdom Trade Marks Act because of the unnecessary delay caused by the requirement as to use. This condition precedent of two years bona fide use of the mark in Singapore will be deleted to expedite registration in Part B of the Act.

Sir, currently the Act provides that where any mark has been registered in Part B of the United Kingdom Register, the proprietor of the mark may apply to have it registered in Part B of our Register provided that there are no conflicting marks on record. It is proposed that reference to Part B of the United Kingdom Register be deleted.

My Ministry has consulted the Law Society on these amendments and several of their suggestions have been taken into account.

Sir, I beg to move.

Question proposed.

Dr Arthur Beng Kian Lam (Fengshan): Mr Speaker, Sir, the GPC for Law and Home Affairs supports the Bill. The amendments in the Trade Marks (Amendment) Bill 1990 are timely. Firstly, it would promote Singapore's international trade and further enhance our international standing; and secondly, it would provide protection for local entrepreneurs.

Service Marks Registration.

Services are an important contributor to our economy. In 1988, services contributed about 60% or $28 billion to the local gross domestic product. Marks used to identify such services are plentiful. These marks are used by establishments to distinguish their services from others. The name, the face-type and colour of the signage, and the logo represent the quality of the service being marketed. The new provisions will be most beneficial to Singapore entrepreneurs as the protection of such rights is extremely important both as a source of revenue and a remedy against unfair competition. Now, beauty salons, credit card companies, software houses and banks can register their logos, names or marks at the Registry.

Modification of registration of trade marks under Part B of the Trade Marks Register.

The proposed amendment will make the criteria for determining distinctiveness less onerous. The condition precedent of two years bona fide use of the mark in Singapore will be deleted to expedite registration in Part B of the Trade Marks register. We welcome this amendment.

Increased penalties for trade mark infringement and sale of counterfeit products.

The proposed amendments provide for more severe penalties under the Act. The proposed penalties are consistent with the other related Acts, ie, the Copyright Act and the Consumers Protection (Trade Descriptions and Safety Requirements) Act. These amendments would provide greater confidence for entrepreneurs who have invested heavily in research, design and marketing of such goods and services.

Sir, I would like to raise two issues for the Minister's clarification. Firstly, why retail service marks should be introduced. Retail service marks should be introduced because these are services which are not "pure services" for which payment is specifically made, but are ancillary to sale of goods, eg. the provision of trolleys and wide aisles between goods to assist movement across the stores. This will provide for a more aesthetic and convenient environment and may even be good for the handicapped cases who are in wheelchairs. If we do not provide for the registration of retail service marks, there may be a gap in the law. In providing for retail service mark registration, we may have establishments providing more efficient services and at less costs for the public. This may even encourage businesses to provide services such as child-minding facilities. The end result may be a more enlightened and more sensitive service to clients.

Secondly, why reference to the UK Register should be retained and to extend this recognition to a schedule of countries with established trade or service mark registration systems? As the Minister has mentioned, our new registry would have a heavy workload in the initial period. Would it not be good to try and establish some form of reciprocal relationship with these established bodies, if not for the long term, then for an interim, say, three to five years? This proposal would expedite and simplify the process of registration of such trade marks in Singapore.

Prof. Jayakumar: Sir, I thank the Chairman of the GPC for Law and Home Affairs for his support.

He has raised two points. One is why the Bill has not provided for the registration of retail service marks. Sir, for trade marks or service marks, protection can be said to be more or less perpetual in duration, and it serves the dual purpose of protecting the goodwill of traders and establishments as well as preventing consumer confusion. Therefore, it is necessary to have a clear, specific definition of retail service marks. Part of the problem on the question of retail service marks is that it is very difficult to have a clear and specific definition of a retail service mark. I consider the definitions which have been suggested to my Ministry to be too wide for our purposes and will pose problems. The definitions which have been suggested, for example, may in fact cover more than what is intended, such as services other than retail services, petrol kiosks providing cleaning of windscreens, checking and topping of engine oil, battery water, also the sale of provisions like optical shops selling spectacles and so on. I am not per se against the idea of considering the registration of retail service marks. But before we embark on such legislation, we need to see whether the problems that can arise from imprecise definition can be avoided. I should also add that some of the established jurisdictions on trade marks and service marks by the United Kingdom and the United States do not extend protection to retail service marks. But let me assure the Chairman of the GPC that if and when other established jurisdictions do venture into legislating for retail service marks, I will be prepared to review the matter. For the moment, I think extending our legislation to service marks is already a step forward and perhaps we should have some experience in that area first.

The second point raised was with regard to the reasons for the deletion of reference to Part B of the UK Register. In response, let me say that, first, at the moment there is no reciprocal recognition of such rights where the United Kingdom is concerned. Secondly, it is also not the practice in most of the other jurisdictions, to the best of my knowledge. Thirdly, it might unduly hamper the discretion of our own Trade Marks Registry in adopting suitable criteria for registration. Finally, it will not enable us in Singapore to develop our own system of registration. Of course, these considerations will also apply to the registration of service marks.

I hope I have answered the two queries by the Chairman of the GPC.

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.

[Mr Speaker in the Chair]

Clause 1 -

The Chairman: The citation year will be changed to "1991". This will be done.

Clause 1 ordered to stand part of the Bill.

Clauses 2 to 43 inclusive ordered to stand part of the Bill.

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