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Registered a trademark? What to do if you spot a similar sign
Registered a trademark? What if you see another sign resembling your trademark being used by another business? Read on to find out if you have a potential infringement claim and what you can do as a trademark owner.
The provisions of Section 27(1) and (2) of the Trade Marks Act 1998 are reproduced below for ease of reference:
27.—(1) A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, the person uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
(2) A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, the person uses in the course of trade a sign where because — (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public.
In an infringement action, your registered trademark is referred to as a registered “Mark,” while that of the other party is referred to as an “Infringing Sign.” The goods sold by the alleged infringer will be referred to in our discussion here as “Infringing Goods.” Here, we will focus on the two common actions under the Trade Marks Act (“TMA”), namely s 27(1) and s 27(2) TMA. Singapore Courts currently apply a step-by-step framework to determine infringement under these sections.
The Threshold Requirement: “Trade Mark Use”
Before the Court will even apply the step-by-step test below, it must be satisfied that a threshold requirement is met: the alleged infringer must be using the sign as a trade mark. As recently clarified by the Singapore Court of Appeal in 2025, this means the sign must be used as a “badge of origin” to denote the source of the goods or services. If the sign is used purely descriptively (for example, simply describing a geographical location in an internet advertisement), it does not constitute trade mark use, and the infringement claim will fail at the first hurdle.
Trade Marks Act | Requirement 1 | Requirement 2 | Requirement 3 |
S 27(1) | Identical Infringing Sign | Identical goods and/or services | The alleged infringer uses the Sign in the course of trade. |
S 27(2)(a) | Identical Infringing Sign | Similar goods and/or services | Members of the public are likely to be confused because of the similarity. |
S 27(2)(b) | Similar Infringing Sign | Identical/similar goods and/or services | Members of the public are likely to be confused because of the similarity. |
Requirement 1: Identicality and Similarity of the Infringing Sign
As long as there are differences between the Mark and the Infringing Sign, the Mark and the Infringing Sign are not considered identical. For example, “Nutella” and “Nutello” are not identical but similar.
To assess similarity, the Court will undertake a “mark for mark” comparison of their visual, aural, and conceptual similarities. There is no need to prove all three similarities to succeed in an infringement claim.[1]
Visual Similarity The Mark and the Infringing Sign are not analysed side-by-side or in minute detail. Instead, the Court looks at the overall impressions created by the Mark and the Infringing Sign on the “imperfect recollection” of the average consumer. In other words, the Court is concerned with what an average consumer with imperfect memory will recall when recollecting the Mark.
In the Hai Tong case[2], the registered Mark was “Lady Rose” and the Infringing Sign was “Rose Lady”. They were held by the Singapore Court of Appeal to be visually similar because the length, number of words, and letters used were identical. The Court clarified that the reversed order of the words and different fonts did not negate the visual similarity.
Aural Similarity A quantitative evaluation is undertaken to ascertain the number of syllables and the syntax of the Mark and the Infringing Sign. Returning to our earlier example, there were three syllables in both “Nutello” and “Nutella”[1]. Having regard to the customers’ imperfect recollection and careless pronunciation, the Court held that it was plausible for a consumer to regard “Nutello” and “Nutella” as being aurally the same.
Conceptual Similarity Conceptual similarity involves assessing the notions and ideas that inspire the Mark and Infringing Sign. In the Festina Lotus case[3], the High Court held that there was conceptual similarity between the Mark and the Infringing Sign because both utilized a crown device that indicated a similar sense of class and status.
Requirement 2: Identicality and Similarity of Goods and Services
The comparison to be made is not between the Infringing Goods and the actual goods sold by the owner of the Mark, but between the Infringing Goods and the products in respect of which the Mark is registered for.
The Court will take a multi-factorial and sensible approach, considering factors such as whether end-users and market research companies will classify the goods and/or services as being in the same sectors. Taking the sale of cigarettes as an example, even if the cigarettes are meant to be marketed to different segments of the consumer market, that would not render the goods dissimilar.
Requirement 3: Likelihood of Confusion
It has been clarified by the Courts that the mere fact that the Mark is similar to the Infringing Sign, and the goods/services are similar, does not automatically give rise to the finding that there would be a likelihood of confusion.
To show a likelihood of confusion, it must be shown that a substantial number of actual or potential purchasers or distributors will be confused by the Infringing Sign and be led to believe that the goods come from the same or related sources.[4]
The Court will put itself into the shoes of the “ordinary, sensible member of the public” to look at all the circumstances including:
Steps taken by the alleged infringer to differentiate their goods from those of the registered trademark proprietor are also highly relevant.
The discussion above is provided for general reference only and is not meant to be relied on by any individual as legal advice. If you are a registered proprietor of any trademark and have some concerns relating to trademarks, please consult us for a specific discussion tailored to your needs and circumstances. We would be happy to see how we can assist further.
Footnotes:
[1] Ferrero SPA v Sarika Connoisseur Café Pte Ltd [2011] SGHC 176; Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2012] SGCA 56.
[2] Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] SGCA 26.
[3] Festina Lotus SA v Romanson Co Ltd [2010] SGHC 200.
[4] The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] SGCA 14.
[5] Nation Fittings (M) Sdn Bhd v Oystertec Plc [2005] SGHC 225.
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