Groundless Threats of IP Infringement in Singapore: How a Company Can Fight Back Under Section 35

A cease and desist letter lands in the inbox of a Singapore company’s director, alleging trade mark infringement and threatening a High Court writ within seven days unless the company stops selling its product immediately. For many small and medium-sized businesses, the instinct is to comply at once, even when the underlying claim is weak or made simply to intimidate a smaller competitor out of the market.

What many directors do not realise is that Singapore law gives the recipient of such a letter its own cause of action. Under section 35 of the Trade Marks Act 1998 (and the equivalent provisions in the Patents Act 1994 and the Registered Designs Act 2000), a company that has been threatened with infringement proceedings without proper justification can go to court itself, seeking a declaration that the threats are unjustifiable, an injunction to stop them, and damages for any loss caused.

This article explains how the groundless threats action works, who can bring it, the practical steps involved, and what a 2022 High Court decision involving two Singapore fan manufacturers reveals about how the court actually applies the test.

What a Groundless Threats Application Is

A groundless threats action is a claim brought not by the intellectual property (IP) rights owner, but by the party who has been threatened with infringement proceedings. It flips the usual dynamic of IP enforcement: instead of the rights holder suing an alleged infringer, the alleged infringer sues the rights holder for making threats that turn out to be unjustified.

The remedy exists because IP owners, particularly larger or better-resourced companies, can otherwise use the mere threat of costly litigation as a commercial weapon. A supplier, distributor, or smaller competitor may simply stop selling a product or cancel an order rather than risk a lawsuit, even where the underlying claim would never succeed at trial. Singapore’s courts have recognised this as a form of “bullying” that the provisions are designed to check, while still allowing genuine rights holders to protect themselves.

The action is available across the three main registered IP rights in Singapore: trade marks, patents, and registered designs. A company can typically apply for this remedy where it, or its products, have been the subject of a threat to sue for infringement of a registered trade mark, patent, or design, and that threat was not properly justified.

Legal Basis: Section 35 of the Trade Marks Act (and Its Sister Provisions)

The primary legal basis for a trade mark groundless threats claim is section 35 of the Trade Marks Act 1998, titled “Remedy for groundless threats of infringement proceedings”. In summary, section 35(1) provides that where a person threatens another with proceedings for infringement of a registered trade mark, other than threats relating to:

• the application of the mark to goods or to packaging or labelling material;
• the importation of goods to which the mark has been applied; or
• the supply of services under the mark,

any aggrieved person may bring proceedings for relief. Section 35(2) sets out the relief available: a declaration that the threats are unjustifiable, an injunction against the continuance of the threats, and damages for any loss sustained because of them. Under section 35(3) and (4) (as amended with effect from 1 April 2022), the claimant is entitled to relief unless the party making the threats can show that the threatened acts actually do (or would) infringe the registered mark, and even then, the claimant can still succeed by showing the registration itself is invalid or liable to be revoked.

The Patents Act 1994 contains a parallel provision at section 77, and the Registered Designs Act 2000 contains an equivalent at section 44, both similarly titled “Remedy for groundless threats of infringement proceedings”. The underlying policy and general structure of all three provisions is broadly the same, although each is naturally anchored to its own registered right.

The Three-Limb Test

Singapore’s courts apply a three-limb test to determine whether a groundless threats claim succeeds, most clearly set out in Dr Babor GmbH & Co KG and another v Sante De Beaute Pte Ltd [2018] 5 SLR 928:

1. the defendant made a threat to sue for infringement;
2. the threat did not relate solely to acts excluded under the statute (such as mere application of the mark to goods); and
3. the claimant was an “aggrieved person” within the meaning of the section.

The third limb is often the most difficult to satisfy in practice, as the 2022 High Court decision discussed below illustrates.

Who Can Apply

The statute uses the phrase “any aggrieved person”. This is not limited to the direct recipient of a threatening letter. It can include manufacturers, importers, distributors, retailers, or any other party in the supply chain who has been threatened, or whose commercial activities have been disrupted by threats made to third parties such as their customers or suppliers.

Crucially, being threatened is not, by itself, enough. Following the Court of Appeal’s guidance in Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2018] 1 SLR 856 (decided under the equivalent patent provision), relief for groundless threats is ultimately discretionary. A claimant will not be regarded as “aggrieved” unless it can show either that it has suffered actual loss as a result of the threats, or that it is otherwise appropriate for the court to intervene, for example by way of a declaration or an injunction, even if no financial loss has yet been proven.

This means a company needs more than an angry letter from a competitor’s lawyers. It needs a real commercial consequence, such as cancelled orders or lost customers, that flows specifically from the threat itself, not from separate factors such as pricing or market conditions.

The 2022 Fan Manufacturers Case: How the Test Plays Out

The mechanics of the groundless threats action, and the practical difficulty of the third limb, are well illustrated in Triple D Trading Pte Ltd v Fanco Fan Marketing Pte Ltd [2022] SGHC 226, a General Division of the High Court decision involving two Singapore companies in the fan retail business.

Triple D, the registered proprietor of the “COFAN” trade mark, sued Fanco for infringement after Fanco launched a competing line of fans under the mark “CO-FAN”. Fanco counterclaimed on two grounds: first, that Triple D’s COFAN registration was invalid because it had been applied for in bad faith (the mark being a mere reversal of the syllables of Fanco’s own long-standing “FANCO” mark, registered by a former Fanco employee who had gone on to found Triple D); and second, that two letters sent by Triple D’s lawyers in April 2021 amounted to groundless threats of infringement under section 35 of the Trade Marks Act.

The court found that Triple D had indeed registered the COFAN mark in bad faith, given the close nexus between the parties and striking similarities in packaging and marketing that emerged after the dispute began. Triple D’s infringement claim accordingly failed entirely.

On the groundless threats counterclaim, the outcome was more nuanced, and shows why all three limbs of the test matter. The first two limbs were satisfied: the April 2021 letters did contain threats, and those threats went beyond the excluded acts under section 35(1)(a) to (c), because they also referred to Fanco’s marketing and online advertising of the CO-FAN mark. But on the third limb, Fanco could not show it was an “aggrieved person”. The distributors who gave evidence testified that they cancelled orders because of pricing concerns, not the threat of legal action, so no causal loss could be established, and since Triple D’s own infringement claim had already failed, there was no ongoing need for an injunction or declaration. The counterclaim was accordingly dismissed, even though the threats were found to have been made and to have exceeded the statutory carve-outs.

The case is a useful reminder that a company weighing up whether to bring this kind of claim needs solid, well-documented evidence connecting the threat itself, as opposed to broader market or pricing pressures, to any loss it has suffered.

Step-by-Step Process

A typical groundless threats claim in the General Division of the High Court, whether brought as a standalone action or as a counterclaim in response to an infringement suit, generally follows this sequence:

1. Preserve the evidence. Keep the original threatening letter or communication exactly as received, along with evidence of its commercial impact.
2. Obtain an opinion on infringement and validity. Because a genuine infringement defeats the claim, assess with IP counsel whether the conduct complained of truly infringes, and whether the registration itself is vulnerable.
3. Engage a Singapore Advocate and Solicitor. Given the fact-sensitive, three-limb test, this is not a claim to attempt without qualified representation.
4. File the originating claim (or defence and counterclaim). Where infringement proceedings are already on foot, the claim is usually raised as a counterclaim. Otherwise, it is filed as a standalone originating claim under the Rules of Court 2021.
5. Exchange affidavits of evidence-in-chief. Both sides file sworn evidence on the making of the threat and, for the claimant, proof of loss or the need for relief.
6. Attend case management and, if unresolved, trial. Many disputes settle once the evidence is clear; otherwise the court hears witnesses and submissions on all three limbs.
7. Judgment. The court decides whether the threats were made, fall outside the excluded acts, and whether the claimant is genuinely aggrieved.

Documents Required

Timeline and Costs

These figures are indicative only and will vary with the complexity of the dispute and whether the claim is a standalone action or a counterclaim in an existing infringement suit.

What Happens After the Order

Where a company succeeds in a groundless threats claim, the court may grant any combination of the following: a declaration that the threats were unjustifiable, an injunction restraining the rights holder from continuing to make the threats, and an award of damages (or an inquiry as to damages, to be quantified separately) for losses proven to flow from the threats.

Where the underlying registration is also found to be invalid, as happened in the fan manufacturers’ case, the Registrar of Trade Marks, Patents, or Designs at the Intellectual Property Office of Singapore will be notified so the register can be corrected. Where the claim fails, as also happened in that case on the third limb, the claimant bears the risk of an adverse costs order, which is one reason careful evidence-gathering before filing is so important.

Costs typically follow the outcome on each limb, and the court has discretion to apportion them where a party succeeds on some issues but fails on others, as occurred in the 2022 decision.

Frequently Asked Questions

Can a company bring a groundless threats claim even if it has not yet been sued?

Yes. The right to bring a claim under section 35 of the Trade Marks Act arises once a threat has been made, regardless of whether formal infringement proceedings have actually been filed. A company does not need to wait to be sued; it can act as soon as it receives an unjustified threat.

Does every cease and desist letter count as a “threat” under the Act?

Not automatically. The court assesses the letter objectively, from the perspective of a reasonable recipient with knowledge of the surrounding circumstances. A letter that merely notifies the recipient that a mark is registered, without asserting an intention to sue, will generally not amount to a threat.

What if the threats turn out to be justified?

If the party making the threats can show that the acts complained of genuinely infringe (or would infringe) the registered right, the claim will normally fail, unless the claimant can separately show that the registration itself is invalid or liable to be revoked.

Is this remedy available for patents and registered designs too, not just trade marks?

Yes. Section 77 of the Patents Act 1994 and section 44 of the Registered Designs Act 2000 contain equivalent groundless threats provisions, each tailored to the relevant registered right.

What is the biggest practical obstacle to succeeding in this kind of claim?

In practice, it is usually the third limb of the test, proving that the claimant is an “aggrieved person”. Courts require solid evidence tying any loss directly to the threat itself, rather than to broader commercial factors such as pricing, competition, or unrelated business decisions.

Can the parties settle a groundless threats dispute out of court?

Yes, and many do. Because litigation costs on both sides can be significant relative to the commercial stakes, particularly for SMEs, a negotiated withdrawal of the threat, sometimes coupled with a co-existence or licensing arrangement, is often a pragmatic outcome.

Need Help With This Matter?

If your company is facing this situation, Raffles Corporate Services can assist with the groundwork, ACRA filings, compliance documentation, and coordinating with experienced Singapore law firms. For matters requiring court proceedings, we work with a panel of experienced Singapore law firms who offer cost-effective and efficient legal service and advice.

Email: [email protected]
Call, SMS or WhatsApp: +65 8501 7133

This article is for general information only and does not constitute legal advice. For advice specific to your situation, please consult a qualified Singapore Advocate and Solicitor.

By the Editorial Team, Raffles Corporate Services

Further reading: Passing Off in Singapore: Protecting Your Business Name and Brand | Breach of Confidence in Singapore | Louis Vuitton Malletier v Ng Hoe Seng | Copyright Protection for Singapore Businesses | Anton Piller Orders in Singapore Company Cases

External resources: Trade Marks Act 1998 (Singapore Statutes Online) | Courts of Singapore | Intellectual Property Office of Singapore (IPOS)