Second Reading Speech on Trade Marks (Amendment) Bill by DPM Prof S Jayakumar, 22 Jan 2007

02 MAR 2007

2 Mar 2007 Posted in Parliamentary speeches and responses

  1. Mr Speaker, Sir, I beg to move that the Bill be now read a second time.

  2. The Bill seeks to amend the Trade Marks Act to pave the way for Singapore to ratify the Singapore Treaty on the Law of Trademarks. That Treaty, Sir, is the tangible outcome of the successful diplomatic conference that the World Intellectual Property Organization held in Singapore in March last year. The Treaty further harmonises trademark registration procedures and provides for electronic filing, making it more convenient for businesses to register and manage their trademarks globally.

  3. For applicants filing trademarks in Singapore to gain from the benefits of the Treaty, we need to bring our domestic trademarks regime into full compliance with its provisions, and to ratify the Treaty.

Provision for Multiple-Class System

  1. Our trademarks regime is already largely compliant with the Treaty. For complete compliance, we need to amend the Trade Marks Act to enable IPOS to fully implement a “multiple-class” trademark registration system.
  1. For trademark registration, goods and services are categorised into some 45 classes as defined in the Third Schedule of the Trade Mark Rules. Currently, those wishing to register a trademark with IPOS in more than one class have to submit a separate application for each class. With a multiple-class system, they only need to submit one single application for all the applicable classes. This will make it more convenient for trademark owners and their agents, as they will be able to manage their trademark registrations in appropriate bundles instead of handling each registration individually. For example, only one registration will be necessary for all classes of goods and services claimed for the same trademark. These bundles of registrations can be assigned, renewed or licensed as bundles as well.
  1. To implement a multiple-class system, Clause 3 of the Bill amends Section 17 of the Trade Marks Act to allow the registration of a series of similar trademarks in two or more classes of goods or services. To complement a multiple-class system, Clause 2 introduces a new Section 5A to allow the division of a trademark application into two or more applications. This is because there may be times when an applicant may wish to divide up a multiple-class application into two or more applications. For example, the applicant may wish to register the trademark for those classes that do not face opposition initially, instead of holding the entire multiple-class application back.

Relief Measures for Procedural Oversight

  1. Sir, the Treaty also provides for relief measures to alleviate procedural mistakes by trademark applicants so that they do not lose the rights to the trademarks filed. This is because there may be instances when they miss certain time limits to respond to objections or queries from the Registrar of Trademarks and their trademark applications then become treated as withdrawn. There may also be instances when applicants may need more time to respond to the Registrar. Sir, to comply with the Treaty, Clause 5 amends Section 108 for rules to be made on extending time limits and reinstating withdrawn trademark applications.
  1. For consistency with the other rule-making provisions in the Act, Clause 5 also removes the technical requirement for the Minister to consult IPOS on rule changes since these are inevitably done in consultation with IPOS.

Other Amendments: Registration of Licence of Pending Trademarks

  1. Sir, touching on other amendments, other than aligning our trademarks regime with the provisions of the Treaty, the Bill also seeks to provide businesses with greater flexibility in trademark management. Specifically, Clause 4 amends Section 41 to allow the registration of licences relating to pending trademarks and not just registered trademarks. This is to enable third parties to take note of the licensee’s interest in the trademark. It is useful even if the trademark is pending registration as some trademarks can quickly acquire goodwill and become highly desirable for licensing through franchising. This proposed amendment will enhance our business-friendliness and put Singapore on par with jurisdictions such as the UK and Australia.

Conclusion

  1. To sum up Sir, this Bill will bring about greater convenience to businesses and update our trademarks regime to be on par with international practices. It will also enable Singapore to ratify and participate in the Singapore Treaty on the Law of Trademarks so that applicants filing trademarks in Singapore may benefit when the Treaty comes into operation. Consultations by IPOS indicate that the proposed changes has been welcomed by trademark applicants and supported by trademark agents in Singapore.
  1. Sir, I beg to move.

Last updated on 25 Nov 2012