Madrid Protocol

Singapore acceded to the Madrid Protocol on July 31, 2000 (which came into operation on October 31, 2000). It is now possible to file trade mark applications through the Madrid Protocol by designating Singapore in the International Application filed with the WIPO (for a fresh application) or by making Singapore a subsequent designation.

Amendments to the Trade Marks Act - 2000

1. Abolished the Part A and Part B dual register in favor of a single Trade Marks Register.

2. A trade mark will qualify for registration under the new Act if it is "capable of distinguishing."

3. The Act now recognizes "well-known" marks in compliance with the Paris Convention, Article 6bis.

Descriptive Marks - Attempted Enforcement of "COFFEEMIX"

Super Coffeemix Manufacturing Ltd. ("Super") was the registered owner of SUPER & DEVICE COFFEEMIX (with the word SUPER disclaimed) for, amongst other coffee-related products, instant coffee mix. Unico Trading Pte Ltd ("Unico") had a registration for INDOCAFE for coffee products. In the instant case, Super brought an action for trade mark infringement and passing-off against Unico for its use of INDOCAFE mark, which mark also bore the additional word COFFEEMIX. Unico counterclaimed to cancel Super's mark, or to have Super disclaim COFFEEMIX based on the descriptive qualities of the mark. The lower court dismissed all claims. However, the Court of Appeal heard the case, and held:

1. there was no likelihood of confusion as there were clear differences between the designs of the parties' packaging,
2. there was no passing-off as there was insufficient evidence that the public regarded COFFEEMIX as a source-indicator of Super, and in light of the descriptive qualities of COFFEEMIX, and
3. Super's trademark registration be rectified by disclaimer of the descriptive word COFFEEMIX.