Trade Mark Infringement Letter: How a Singapore Company Should Respond

General information only, not legal advice. Need a lawyer for this? We can introduce you to one. See below.

Raffles Corporate Services works with a panel of experienced Singapore law firms who offer cost-effective and efficient legal service and advice. This article is general information only and is not legal advice.

Your company has been trading under its brand for a year or two. Then a letter arrives: another business says your name or logo infringes its registered trade mark and demands that you stop using it, destroy stock, hand over profits and sign an undertaking within 14 days. Sometimes the letter also names the managing director personally.

These letters are often written to sound final, but the legal position is rarely that simple. Under the Trade Marks Act 1998, infringement depends on precise questions about the marks, the goods or services and the likelihood of confusion. The registration itself may be open to challenge, and there are statutory defences. On the other side, a company that ignores a well-founded claim can face an injunction, damages and costs, and its directors can sometimes be pursued personally.

This article explains how infringement is assessed in Singapore, the defences and counter-attacks available to a company, when a director can be personally liable, and how the board should manage the response.

First, check what the claimant actually owns

An infringement claim under section 27 of the Trade Marks Act 1998 can only be based on a registered trade mark, and only for the goods or services in the registration. Before anything else, search the register on the IPOS website to confirm:

• that the mark is registered in Singapore, not just abroad or merely applied for;
• the exact form of the mark (words, logo or both);
• the classes and specification of goods or services; and
• the date of registration, which matters for the prior use defence and for revocation for non-use.

If the claimant only has an unregistered mark, it cannot sue for trade mark infringement but may still claim in passing off, which requires it to prove goodwill, misrepresentation and damage.

How infringement is assessed

Section 27 sets out three types of infringement. In each case the use must be without the proprietor’s consent and in the course of trade.

Section 27(4) lists what counts as “use”, including applying the sign to goods or packaging, offering goods or services under it, importing or exporting goods under it, using it on invoices, business letters and other commercial documents, and using it in advertising.

The step-by-step approach

For section 27(2), the courts follow the approach set out by the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2013] SGCA 65 (“Staywell“). The court asks, in order:

1. Are the marks similar? The comparison is mark for mark, looking at visual, aural and conceptual similarity as guides rather than a checklist. Distinctiveness is part of this inquiry.
2. Are the goods or services identical or similar?
3. Only if both thresholds are met: is there a likelihood of confusion on the part of the public, assessed in the round?

The first two elements are assessed individually before the third. If the marks are not similar, the claim under section 27(2) fails without the court needing to consider confusion.

A company case: descriptive words

In All India Supermart Pte Ltd v Indian Supermarket Pte Ltd [2021] SGHC 293 (“All India Supermart“), the owner of the registered mark “ALL INDIA SUPERMART” sued a rival grocer using “INDIAN SUPERMARKET”, and also sued the rival’s sole director personally. The High Court found the marks not similar: they shared no common words, the memorable element of the claimant’s mark was “ALL INDIA”, and because the mark was descriptive and only weakly distinctive, a low degree of difference was enough. The infringement and passing off claims were dismissed, and so was the claim against the director. The case illustrates that a business which chooses a descriptive name has a narrower monopoly than it may assume.

Defences available to the company

Section 28 provides that certain acts do not infringe, including:

• use of the company’s own name or the name of its place of business, if in accordance with honest practices in industrial or commercial matters (s 28(1)(a));
• use of a sign to indicate the kind, quality, intended purpose, value, geographical origin or other characteristic of goods or services, on the same honest practices condition (s 28(1)(b));
• continuous prior use of an unregistered mark from a date before the claimant’s registration or first use, whichever is earlier (s 28(2));
• use of another registered trade mark for the goods or services for which that mark is registered (s 28(3)); and
• fair use in comparative advertising, non-commercial use, and news reporting or commentary (s 28(4)).

The prior use defence is often decisive for established SMEs. Evidence such as early invoices, signage photographs, website archives and marketing material bearing the brand should be gathered immediately.

Counter-attacks: revocation, invalidity and groundless threats

Revocation for non-use

Under section 22(1), a registration may be revoked if the mark has not been put to genuine use in Singapore for the registered goods or services within five years after the registration procedure was completed, or if such use has been suspended for an uninterrupted period of five years, without proper reasons. Claimants who registered broad specifications but trade in a narrow field are vulnerable to partial revocation.

Invalidity

A registration can also be challenged as invalid under section 23 on the grounds set out in the Act, for example where the mark should not have been registered in the first place. In All India Supermart, an invalidation application was brought alongside the suit, although it failed on the facts.

Groundless threats

Section 35 allows a person aggrieved by threats of infringement proceedings to seek a declaration that the threats are unjustifiable, an injunction and damages. The threat-maker escapes liability only if it shows that the acts complained of infringe, and even then the threatened party can still succeed by showing the registration is invalid or liable to be revoked in a relevant respect. Threats about applying the mark to goods, importing such goods, or supplying services under the mark are excluded, a mere notification that a mark is registered is not a threat, and solicitors acting for clients are protected. Our article on groundless threats under section 35 explains this remedy in more detail.

What the claimant can obtain if infringement is proved

Under section 31(2), the court may grant an injunction, damages, an account of profits, and, in counterfeit cases, statutory damages. Damages and an account of profits are generally alternatives, although the court may order an account of profits not already reflected in damages (s 31(3) and (4)).

Where the infringement involves the use of a counterfeit trade mark, the claimant may elect statutory damages under section 31(5)(c) of up to $100,000 for each type of goods or service, and up to $1 million in aggregate unless it proves actual loss above that. Section 31(6) requires the court to consider the flagrancy of the infringement, the claimant’s loss, the defendant’s benefit and the need for deterrence. For an example of how the Court of Appeal approaches these awards, see our note on Louis Vuitton Malletier v Ng Hoe Seng.

Can the director be personally liable?

The company is the infringer when it trades under the sign. A director may also be sued as a joint tortfeasor if the director procured, authorised, directed, caused or assisted the company’s infringing acts. In All India Supermart, the court accepted that the director, who chose the name and design and made the key decisions, would have been responsible on that basis had the company been liable. The claim against him failed only because the company itself had not infringed.

For directors, this means that a letter naming them personally should be taken seriously, and that board decisions on whether to continue using a challenged brand should be properly considered and recorded. Our broader guide on when a Singapore director pays personally covers other exposures.

Responding to the letter

• Diarise the deadline, but do not let it force a hasty admission. A short holding reply is common while the position is assessed.
• Do not sign an undertaking, consent to destruction of stock or agree to pay damages until the registration, the comparison of marks and the defences have been reviewed.
• Preserve documents showing when and how the company first used its brand.
• Check whether your own brand is registered and, if not, consider whether to apply. A company’s own registration may give it a defence under section 28(3) for the registered goods or services.
• Consider commercial options: coexistence agreements, a rebrand on a timetable, or a licence. Our guide to responding to a lawyer’s letter of demand sets out general principles that also apply here.

What the company should do

• Board minutes. Table the letter at a board meeting or circulate it for a written resolution. Minute the decision on whether to suspend, continue or modify use of the brand, the advice obtained, and who is authorised to correspond on the company’s behalf.
• Ownership of the brand. Confirm whether the company or a founder personally owns any existing trade mark registration. If a founder owns it, document the company’s licence; see our article on founder-owned trade marks.
• Registers and ACRA. If the outcome is a rebrand that includes the company name, a change of name requires a special resolution and a Bizfile filing with ACRA, followed by updates to the company’s letterhead, website, invoices, bank and contracts.
• Accounts. Discuss with the company’s accountant whether a provision or contingent liability disclosure is needed in the financial statements while the dispute is unresolved, and record legal and rebranding costs correctly.
• Insurance. Check whether any policy covers intellectual property claims and notify the insurer within the policy’s time limits.

Frequently asked questions

Our company name was approved by ACRA. Does that protect us?

Not on its own. ACRA’s name approval concerns the register of entity names, while trade mark rights are governed by the Trade Marks Act 1998. Using your own company name may fall within the defence in section 28(1)(a), but only if that use is in accordance with honest practices in industrial or commercial matters.

The claimant registered its mark after we started using ours. Are we safe?

You may have a defence under section 28(2) if you, or your predecessor in title, have continuously used your mark in the course of trade for the same goods or services from a time before the claimant’s registration or first use, whichever is earlier. Continuous use, and evidence of it, are essential.

Can we be sued for infringement if the claimant only registered its mark overseas?

Section 27 protects trade marks registered in Singapore. A foreign registration alone does not found an infringement claim here, although the claimant may have other claims such as passing off, and special rules apply to marks that are well known in Singapore.

Is the letter itself unlawful if the claim is weak?

It may be. Section 35 gives an aggrieved person relief against groundless threats of infringement proceedings, subject to the exclusions in the section. A mere notification that a mark is registered does not count as a threat.

Will the director have to pay personally?

Only if the company is liable and the director personally procured, authorised, directed or assisted the infringing acts. In All India Supermart, the director’s active involvement would have sufficed, but the claim failed because the company did not infringe.

Need a lawyer?

This article is general information about Singapore law for companies, directors and shareholders. It is not legal advice, and it does not take account of your circumstances. Raffles Corporate Services Pte Ltd is a corporate service provider, not a law practice, and does not give legal advice.

If your company has received a trade mark infringement letter or is planning to challenge a competitor’s registration, we can introduce you to an experienced Singapore law firm that handles trade mark infringement, passing off and IPOS revocation or invalidation proceedings. Tell us briefly what has happened and we will connect you.

Email: [email protected]
WhatsApp: +65 8501 7133 or +65 9018 0072

We can also take care of the corporate side for you: board and shareholder resolutions, register updates and ACRA filings.

Conclusion

A trade mark infringement letter is a serious matter, but it is the start of an analysis rather than the end of one. The claimant’s registration, the similarity of the marks and the goods, the company’s own history of use and the statutory defences all need to be checked before the company commits to anything. Directors who were involved in choosing the brand should make sure the board’s response is considered and recorded. Boards facing other personal exposure, such as dividends paid while a claim is pending, may also find our article on unlawful dividends useful. For resolutions, name changes and ACRA filings, contact Raffles Corporate Services.

The Editorial Team, Raffles Corporate Services