TRADE MARKS BILL

Order for Second Reading read.

The Minister of State for Law (Assoc. Prof. Ho Peng Kee): Mr Speaker, Sir, I beg to move, "That the Bill be now read a Second time."

When the Minister for Law moved the Copyright (Amendment) Bill in February this year, he informed the House that an inter-ministry Committee has been reviewing our legislation on intellectual property rights to give effect to our obligations under the World Trade Organisation's Agreement on Trade-Related Aspects of Intellectual Property or the TRIPS Agreement, for short. The Committee's work has resulted in amendments to the Copyright Act and Patents Act.

This Bill is another product of the Committee's review. It will replace the existing Trade Marks Act. Besides amending the law to comply with the TRIPS Agreement, the Bill also modernises and simplifies our trade marks law in line with international trends. Our trade marks legislation is some 50 years old (1938). Some of its provisions on the registration of trade marks are unnecessarily complicated and onerous, thus impeding the efficiency of the Registry of Trade Marks. A number of provisions are also outdated and do not conform to current international trends. This Bill addresses these shortcomings. Furthermore, the Bill will enable Singapore to accede to the Protocol Relating to the International Registration of Marks or the Madrid Protocol. In the process of drafting the Bill, we have taken into account the views of academics from the Faculty of Law, National University of Singapore, and consultants from World Intellectual Property Organisation or WIPO, as well as views of the industry. TRIPS related provisions

Sir, let me turn first to the provisions inserted to comply with the TRIPS Agreement. These relate to:

(a) definition of trade mark;

(b) well-known trade marks;

(c) collective marks;

(d) civil measures;

(e) border enforcement; and

(f) geographical indications.

In the Bill, a trade mark is defined along the lines of the TRIPS Agreement. Basically, a trade mark must be visually perceptible and capable of distinguishing the goods or services of the proprietor. Three-dimensional marks are now registrable.

As regards well-known trade marks, the Bill allows the proprietor of an earlier trade mark which is entitled to protection under the Paris Convention or the TRIPS Agreement as a well-known trade mark to oppose the registration of an identical or similar trade mark. Further, the proprietor of a well-known trade mark is entitled to restrain by injunction the use of an identical or similar trademark in relation to identical or similar goods or services where the use is likely to cause confusion.

Currently, well-known trade marks are protected under the common law tort of passing off. If they consist of an invented word or words, they can also be registered as defensive marks in respect of goods under the existing Trade Marks Act. A defensive mark is essentially a well-known trade mark that is registered for goods other than those in which the proprietor trades, where a connection in the course of trade between those goods and the proprietor is likely to be inferred.

A new feature of the Bill is the registration of collective marks. This is required by the TRIPS Agreement. A collective mark is held by an association and used by its members. It is a mark distinguishing the goods or services of members of the association from those dealt with or provided by persons who are not members.

Currently, there is no registration of collective marks in the existing Trade Marks Act. Instead, an association which does not use its logo as a trade mark registers it as a trade mark and then registers its members as permitted users of the trade mark. The registration of collective marks by associations under the Bill will enable their members to use the marks without having to go through the process of registering themselves as permitted users with the Registry of Trade Marks.

Sir, the Bill also expressly sets out the civil and administrative remedies available to a proprietor of a registered trade mark. These include injunctions, damages, account of profits, removal of the offending sign and the delivery up and forfeiture or destruction of infringing goods, material or articles.

Another important aspect of the Bill pertains to border enforcement measures to prevent infringing intellectual property materials from entering Singapore. The Bill's provisions on these measures are similar to those in the copyright area with adaptation to suit the trade mark field. In line with international trends, the Bill designates the Customs and Excise Department to handle border enforcement.

Modernisation and Simplification in accordance with International Trends

Sir, I turn now to the provisions which seek to modernise and simplify our trade marks law in accordance with international trends. Some of the more important changes are:

First, abolishing the distinction between Parts A and B of the Register of Trade Marks. Trade Marks are presently registered in Part A or Part B of the register. Almost all applications filed with the Registry of Trade Marks are for registration in Part A. If the Registrar decides that the trade marks do not qualify for Part A registration, he may propose to register them in Part B. A trade mark registered in Part A must satisfy a higher level of distinctiveness than a Part B trade mark and thus has greater protection. For example, the validity of a trade mark is presumed to be conclusive after 7 years under the Trade Marks Act.

Nevertheless, the differences for the proprietor between registration in Part A or Part B do not justify the considerable amount of time spent by examiners and applicants in determining which Part a trade mark is registrable under. The Bill accordingly provides for a unified register. This will thus simplify examination, resulting in savings in administration costs and also costs to applicants.

Second, providing for less stringent criteria for registration of trade marks. This will make it easier for proprietors to obtain registration. The test for registrability will generally be similar to that for a Part B registration under the present Trade Marks Act, that is, a mark must be capable of distinguishing the goods or services of its proprietor.

Third, simplifying and expediting the examination process by removing the Registrar's power to impose disclaimers. Under the present Trade Marks Act, the Registrar may, as a condition of registration, require the applicant to disclaim rights to non-distinctive features of a trade mark. The effect of a disclaimer is that the proprietor of the registered trade mark cannot claim any rights under the Act in respect of the parts of the mark to which the disclaimer relates. Therefore, no action for infringement shall lie in respect of the use or imitation of the disclaimed elements.

In the Bill, the Registrar will have no power to impose disclaimers. But there is a provision for disclaimers to be entered in the register by the applicants voluntarily. The applicants may wish to do this at the application stage to forestall possible opposition to the registration of their trade marks. Disclaimers may also be entered by the applicants as a result of opposition proceedings.

Fourth, abolishing Association of Trade Marks. The Bill abolishes the practice of associating identical or similar trade marks in respect of the same or similar goods or services belonging to the same proprietor. Under the existing Trade Marks Act, associated trade marks must be assigned together, to prevent the public from being misled as to the source of the goods or services. The abolition of the association of trade marks in the Bill is premised on the fact that trade mark proprietors are most attuned to market conditions and are the best persons to ensure that an assignment of their trade marks does not lead to confusion or deception on the part of the public.

Fifth, registering marks relating to Ancillary Services. At the second reading of the Trade Marks Bill in 1991, the Minister for Law informed the House that the issue of registration of retail service marks would be reviewed. We have studied the international trend which acknowledges that ancillary services such as retail services have attributes which deserve recognition. The Bill accordingly makes provision for the registration of marks in relation to ancillary services performed for the benefit of someone else other than the proprietor. Therefore, marks such as SOGO and METRO are now registrable in respect of retail services.

The Madrid Protocol

Finally, Sir, the Bill will enable Singapore to accede to the Madrid Protocol. The Madrid Protocol which came into operation on 1st April 1996 is administered by the World Intellectual Property Organisation or WIPO. Essentially, accession to the Protocol would enable trade marks registered in Singapore to be protected internationally. As at 1st October 1998, 35 countries including the United Kingdom, France, Germany, Switzerland and China were parties to the Protocol.

Mr Speaker, Sir, this Bill will be an important addition to our legislation on intellectual property rights which have seen significant advancements in recent years.

Sir, I beg to move.

Question proposed.

Dr Toh See Kiat (Aljunied): Mr Speaker, Sir, thank you for your indulgence. I support the Bill and I just want to raise a small point for the Minister to consider.

The Bill, as it stands right now, does not deal with e-mail addresses and domain names. I believe with Singapore's move into e-commerce and greater use of the Internet for competitive purposes, there will be an opportunity given to scoundrels and crooks who would register things as they have done in other countries like [email protected] and these are things which make use of well-known trade marks or even registered trade marks for purposes which include blackmailing the actual trade mark owner to pay off this particular person. So I would just like the Minister to consider adding this perhaps to the future amendment to the law.

Assoc. Prof. Ho Peng Kee: I thank the Member for his suggestion. We can certainly consider it as we see how the law works out.

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. - [Assoc. Prof. Ho Peng Kee].

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