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Intellectual Property Law 2 - Coggle Diagram
Intellectual Property Law 2
Trade Marks
A Trade Mark is a sign or mark used by a trader in the course of their business or trade to distinguish their goods from those of other traders.
The sign can be 3D, a shape, moving image, sound, smell or taste.
Symbol ® indicates a registered trade mark.
Symbol ™ indicates a trade mark that has not yet been registered but there is a claim to proprietory right. I.e. someone is in the process of registering the mark.
People use trade marks for several reasons:
As product differentiation
For brand recognition
To promote brand loyalty
For advertising or public perception
Signify quality and goodwill
Registration of trade mark:
Trade Mark Act (statute)
Registration with the Intellectual Property Office of Singapore (IPOS) is necessary.
owner of a mark that is not registered may still rely on the common law action in "passing off" for protection.
the owner of the mark should be a trader, manufacturer or retailer.
2 elements for registration:
Distinctive
Capable of distinguishing the goods and services of the owner to other similar goods or services.
Rights exclusive to a trade mark owner:
Use the mark
License the mark
Authorise others to use the trade mark by assigning or selling the rights to them
Take infringement proceedings in relation to the goods or services for which the trade mark is registered
Duration of Trade Mark:
10 years of protection
Renewable for successive periods of 10 years
no limits on the number of renewals, but each renewal requires a fee.
Trade Mark infringement:
A sign identical to a registered trademark or identical goods and services used
A sign identical to a registered trademark on similar goods and services is used and there is a likelihood of confusion
A sign similar to a registered trademark on identical or similar goods and services is used and there is likelihood of confusion
Exceptions: "honest concurrent" use of the 2 marks in the course of trade in SG
Remedies for trade mark infringement:
A Plaintiff may claim
an injunction against the infringer
damages or an account of the profits ($$)
an order to remove the infringing sign
an order to deliver up the infringing copies
Passing Off
Reputation and goodwill of a trader or manufacturer are valuable assets
Sometimes, a trade tries to "pass off" his good or services for those of a well-known trader or manufacturer
By marketing his goods or services to confuse consumers into thinking that it is the same trader or manufacturer
Passing off refers to a situation where someone (Defendant in tort), in the course of trade, misrepresents their goods so that their customers believe those goods are actually goods of another (the Plaintiff).
4 elements of passing off must be proved:
Business goodwill in Singapore attached to the goods/ services
'Goodwill' is the benefit and advantage of good reputation connected to a business
Surveys, sale figures, and the availability of the goods/ services in major shops is used to substantiate the point that there is goodwill
Goodwill is not the same as reputation. It must be attached to a business, while reputation can exist independently of any supporting business.
Misrepresentation leading to confusion
There must have been a misrepresentation by the Defendant to the public, intentional or otherwise, which leads or is likely to lead the public to believe that the goods/ services offered by him are those of the plaintiff.
Must show whether there is confusion or likelihood of confusion to the public, get-up of both parties must be compared.
there is no need to prove that misrepresentation is intentional
Defendant and Plaintiff must be doing business in a similar field of activity
Exception: when the mark of the plaintiff is so popular that it becomes a "household" name, plaintiff may succeed in an action of passing off
Damage
Plaintiff must prove that he suffered or is likely to suffer damages because of the Defendant's misrepresentation
Show lower sales figures or the likelihood of lower sales figures to prove this.
Plaintiff cannot succeed if there is no damage or likelihood of damage.
Remedies for passing off:
Damages
Injunction to restrain Defendant from using their name, trade mark or packaging
Protected by Common Law and does not require registration.
Law of Confidence
Law of Confidence covers obligations not to reveal information which the public does not have access to.
Law of confidence protect:
Trade secrets
Government secrets
Personal information
Artistic and literary information
An action for breach of confidence is actionable per se.
There is no need for the plaintiff to prove that they have suffered any damage because of the breach.
Confidential information is not intellectual property. But the Law of Confidence has been used by lawyers to offer complete protection in conjunction with IP law.
Copyright protects the expression of an idea, law of confidence protects the idea itself.
3 elements of breach of confidence:
Quality of confidence
All information should have this quality of confidence.
Owner must believe that information is confidential and secret and not already in public domain
Information must be capable of being protected
A collection of information, each of which may be in the public domain, can still be regarded as confidential as long as it is private to the person who compiled.
Information received in a relationship of confidence
There must be an element of trust when the discloser gave the information to the recipient
The purpose and nature of the information must be considered
Unauthorised use of information
The receiver of the information either knows or should have known that he does not have the authority or permission to use the information or pass it to a 3rd party.
Remedies for Breach of Confidence
Injunction- to stop or prevent the divulging or use of information
Damages
Account of profits