Trade marks are protected under the Trade Marks Act (Cap. 332, 2005 Rev Ed) and the common law of passing off.

To qualify for registration, a trade mark must be distinctive of the claimed goods/services and must not conflict with the prior rights of any third party. A trade mark registration is valid for an initial period of 10 years, and is renewable indefinitely upon payment of fees every 10 years. While there is no positive obligation for a proprietor to prove use of the mark, a registration is vulnerable to non-use challenge after five years from the date of completion of registration procedure. Upon challenge, the proprietor bears the burden of proving that the registered mark has been used in Singapore in relation to the claimed goods/services.

Shape mark. The application to register a shape mark must include perspective or isometric drawings that show clearly all the features of the shape mark, along with a description of the particular features. The description is an integral part of the graphical representation of the shape mark.

For example, in TM No. T1108706I in Class 25 (Footwear) the mark consists of a three-dimensional shape of a shoe with the word "CAMPER" appearing on the inner and outer sole of the shoe as shown in the representation on the notification of international registration.

However, based on recent case law developments, unless there are distinctive elements (e.g. markings) in the shape mark, it is generally quite difficult to satisfy the inherent registrability threshold. In addition to the usual absolute and relative grounds of refusal, a three-dimensional shape mark will be refused registration if any of the following apply:

• The shape results from the nature of the goods – for example, a sign consisting of the shape of a banana for bananas would be a shape which results from the nature of the goods themselves.
• The shape is necessary to obtain a technical result – i.e. the shape is motivated by and is the result of technical considerations.
• The shape gives substantial value to the goods – the purpose is to exclude “aesthetic-type shapes”, i.e. shapes which have eye appeal or are purchased primarily because of the eye appeal, from registration. This ensures that the applicant is not unnecessarily conferred a longer monopoly through the law of trade marks thereby extending the life of other rights which legislature has sought to make subject to limited period, such as design rights (discussed further below).

In Societe des Produits Nestle SA and anor v Petra Foods Limited and anor [2016] SGCA 64, the Singapore Court of Appeal affirmed the High Court’s decision that Nestle’s two-finger and four-finger shape marks were not registrable. It was found that the shape marks were devoid of distinctiveness and were not registrable as each essential feature of the mark was necessary to obtain a technical result.

Colour mark. The application to register a colour mark must include a clear representation of the colour together with a clear description of the mark. Colour codes such as the Pantone code may be used.

For example for TM No. T1003719Z owned by PALOÏSE SAS, the description of the mark was as follows. The mark consists of the colour red (Pantone No. 18.1663TP) applied to the sole of a shoe (the outline of the shoe is not part of the mark but is intended to show the placement of the mark) as shown in the representation on the notification of international registration. 

Although it is possible to register colours per se as trade marks, the threshold is quite high and it is generally difficult to satisfy the requirement that the colour in question, or combination of colours in question, has the necessary distinctive character, unless substantial evidence of use is available to support the distinctiveness of the mark.

The registration of marks comprising colours per se may also be refused if:

• the colour or colour combination serves a function – for example, where the colour provides a particular technical result or conveys a generally accepted meaning; or
• the colour or colour combination is common to the trade.

Where a graphical representation of a mark is in black and white, protection extends to other colour variations and the mark is taken to be used regardless of whether it appears in colour(s) or black and white.

Sound mark. The application to register a sound mark must include a graphical representation (e.g. by way of musical notation) together with a clear description of the mark, including indication where any particular musical instrument is used to produce the sounds.

Movement mark. Movement marks can be represented by still pictures in the correct sequence corresponding to the mark in use, together with a clear description of the mark.

Unregistered rights under the common law of passing off. The common law of passing off protects distinctive identifiers which are in use in the marketplace, even if these have not been registered as trade marks. The elements that have to be established to succeed in a claim for passing off are:

• goodwill in the plaintiff’s business within the jurisdiction;
• misrepresentation by the defendant to the public leading or likely to lead the public to believe that the defendant’s goods or services are those of the plaintiff’s or are economically linked to the plaintiff; and
• damage or a likelihood of damage suffered by the plaintiff.

Passing off is highly fact-specific. All the facts and circumstances need to be considered to assess how they affect the relevant consumer’s perception, and whether the defendant’s actions constitute a “misrepresentation” which is likely to cause a substantial portion of the relevant segment of the public to be misled.

There may be protectable rights in trade marks (whether registered or unregistered), logos (artistic work), product packaging (a distinctive get-up) or the look-and-feel of a website.

To protect the outward appearance of an article, registered design protection can be obtained under the Registered Designs Act (Cap. 266, 2005 Rev Ed). Colours can also be protected provided that they are combined with one other design feature, i.e. shape, configuration, pattern or ornamentation. The Registered Designs Act was recently amended to remove the “industrial process” requirement such that handmade or artisanal items are now registrable. Virtual or projected designs, as well as Graphical User Interfaces, are also registrable.

Design protection is a useful means to protect the design of various products in the fashion industry, such as articles of clothing, clothing accessories, bags, and jewellery. Registration affords the owner the right to stop third parties from using the registered design or anything substantially similar thereto.

To qualify for registration, the design must be new. This means that the design must not have been registered or published anywhere in the world before the date of application of the first filing, save that the Registered Designs Act provides a 12-month grace period for designs disclosed after 30 October 2017.  

The Intellectual Property Office of Singapore does not conduct any substantive examination of design applications. Design applications will be accepted for registration if the formalities requirements are satisfied. Registration is also relatively expeditious and can take place even as soon as within two to four weeks of filing the design with the Intellectual Property Office of Singapore.

Registration is valid for up to 15 years, subject to the payment of renewal fees every five years. 

Copyright protects original artistic, literary, musical, and dramatic works, and a range of other subject matter, and is governed by the Copyright Act (Cap. 63, 2006 Rev Ed). Copyright arises automatically upon creation of the original work, and the work is protected until 70 years after the creator’s death. Registration or recordal is neither required nor possible in Singapore.

In the fashion industry, drawings and sketches can be protected by copyright provided that these are original artistic works.

However, there is no dual protection for both copyright and registered designs in Singapore. As such, there is no copyright infringement where:

• an artistic work is registered under the Registered Designs Act;
• an artistic work has been industrially applied (i.e. the design has been applied to more than 50 articles), even if it has not been registered under the Registered Designs Act; or
• an artistic work has been industrially applied before a third party makes a “useful article” in three dimensions (including a reproduction in two dimensions reasonably required for the making of the useful article), or a “non-physical product”.

(A “useful article” is any article which has an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. A “non-physical product” is anything that does not have a physical form; is produced by the projection of a design on a surface or into a medium (including air); and has an intrinsic utilitarian function that is not merely to portray the appearance of the thing or to convey information.)

It is therefore highly recommended to seek registration under the Registered Designs Act if it is envisaged that the design will be applied industrially, in order to obtain protection under the registered designs regime.

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Aside from seeking adequate intellectual property protection, it is crucial that contractual safeguards are put in place at various stages of the product process – from conceptualisation, development, manufacturing, to advertising, marketing and sales – especially as digitisation, social media, and multi-channel retailing have presented new and evolving opportunities and challenges for businesses.

License agreements and Non-Disclosure Agreements (NDAs). Where any stage of the manufacturing process is outsourced to an external party, there should be adequate contractual safeguards to prevent any misuse of the owner’s intellectual property, including unauthorised re-selling of manufactured products.

A typical manufacturing services agreement or intellectual property licence agreement for this purpose would address the following key issues:

• Terms of the IP licence granted – identification of IP, duration of licence, permitted territory, permitted purposes, any limitations or restrictions.
• Specified manner of use and brand usage guidelines.
• Adequate provisions to safeguard the IP of the brand owner and ensure that ownership remains with the owner.
• Quality control, for example, all products and their packaging must be of a quality and standard equal to best industry practice and must not be defective in terms of workmanship or materials; and any necessary product safety testing or certification is undertaken using reputable testing houses.
• Prohibition against unauthorised sale or distribution of manufactured products.
• Grounds for termination.
• Post-termination or expiry obligations, for example, return or destruction of materials and defective or rejected products which contain the owner’s IP.
• Confidentiality obligations – obligation to maintain confidentiality of information disclosed by owner, existence of the contractual arrangement and any terms therein, and prohibition against any unauthorised use or disclosure of confidential information.
• Governing law.
• Dispute resolution mechanisms.

Distribution agreements. A distribution agreement between a supplier and a distributor accords rights to the distributor to sell the supplier’s goods/services.

A typical distribution agreement should address the following key issues:

• duration of appointment;
• territory;
• exclusivity – i.e. whether the distributor is to be appointed as the sole distributor;
• products and/or services to be distributed;
• permitted trade channels;
• order and supply of products;
• delivery and passing of risk;
• storage of products;
• purchase price of products;
• minimum purchase requirements (if any);
• performance goals (if any);
• advertising and promotion;
• audit and compliance;
• licence to use supplier’s IP – including terms regarding manner of use and brand usage guidelines;
• confidentiality obligations;
• data privacy obligations;
• grounds for termination;
• post-termination or expiry obligations - for example, return or destruction of materials and products; right of supplier to buy remaining inventory back from distributor and/or specified period for distributor to sell remaining inventor;
• governing law; and
• dispute resolution mechanisms.

Co-branding and co-marketing. Co-branding involves the cross-licensing of trade marks from different companies (or from personality or celebrity brands) to brand a (new) product or service offering, and is common in the fashion world. By leveraging on a partner’s consumer demographic and market standing, co-branding can be an effective method to increase brand awareness, expand consumer base and market presence, and increase sales.

However, if not properly managed and monitored, there may be adverse effects on a brand, for example, if a co-brand becomes associated with poor quality, or if there is misuse of the brand which results in dilution or genericism.

A typical co-branding agreement should address the following key issues:

• Duration of the co-branding collaboration – including whether the term is fixed and/or with an option for renewal or re-negotiation subject to the successes or shortcomings of the co-branding initiative.
• Identification of IP to be licensed by and to each party – due diligence checks should be conducted.
• Exclusivity of licence – also consider provisions that prohibit partners from entering into co-branding arrangements with competitors.
• Quality control – include terms regarding manner of use, size and positioning of parties’ respective marks on products and materials, brand usage guidelines, permitted goods/services, permitted trade channels, right to review and approve advertising and promotional materials, right of audit and inspection at routine intervals.
• Ownership of IP in co-branded property (e.g. advertising and promotional materials, packaging).
• Sharing of costs and revenue.
• Data privacy obligations.
• Consumer engagement – consider what types of brand personas and strategies should be used by both parties in respect of the co-branded products/services, management of social media and rights and obligations vis-à-vis consumer engagement.
• Appropriate indemnities and liability insurance – for example, consequences if a partner produces a defective product to be co-branded.
• Reputational damage – include obligation for corrective advertising and/or damages as compensation in the event that a partner experiences reputational damage for any reason.
• Grounds for termination.
• Post-termination or expiry obligations – for example, return or destruction of materials.
• Confidentiality obligations.
• Governing law.
• Dispute resolution mechanisms.

Employing fashion models.  When working with fashion models, always clearly delineate the scope of activity (including date, time, duration, nature of activity or event) and use of the fashion model’s image and ensure that an appropriate release form is signed.

If a company engages a photographer to take photographs, ensure that appropriate assignments or licences are obtained to ensure rights to use, publish and reproduce the photographs.

Social media, influencers and brand ambassadors/celebrities. The agreement with the brand ambassador should clearly outline the role and commitments of the ambassador in relation to the promotion of the brand and products.

Aside from the issues of compensation and rights to use the ambassador’s image or name, it is also important to ensure that there are adequate safeguards in the contract to govern and manage the ambassador’s general conduct during the term of endorsement and outline the consequences of any adverse publicity arising from any acts of the ambassador; any conditions regarding products which are provided to the ambassador (e.g. whether these may be resold or given away by the ambassador); and review or approval required for content to be posted by the ambassador. It is common for copyright in the content posted by the ambassador (e.g. photographs and posts) to be owned by the ambassador – this will mean that any future use by the company of such content, following termination or expiry of the agreement, will require the consent of the ambassador.

Under the Guidelines on Interactive Marketing Communication and Social Media issued by the Advertising Standards Authority of Singapore (ASAS):

• Disclosures of commercial relationships (i.e. where the influencer/ambassador is given an incentive or has an obligation to create social media content for a client) should be prominent and easy to understand.
• Marketing communication must be identified as such and distinguished from editorial or personal opinions. Paid reviews, testimonials and endorsements have to be clearly indicated.

Advertising standards, relevant authorities and advertising practice. There is no agency or self-regulatory organisation specific to the fashion industry. Advertisements should comply with the applicable laws and guidelines in Singapore, including:

• Undesirable Publications Act (Cap. 338, 1998 Rev Ed).
• Consumer Protection (Fair Trading) Act (Cap. 52A, 2009 Rev Ed).
• Consumer Protection (Trade Descriptions and Safety Requirements) Act (Cap. 53, 2013 Rev Ed).
• Singapore Code of Advertising Practice (SCAP) and Guidelines on Interactive Marketing Communication and Social Media administered by the Advertising Standards Authority of Singapore (ASAS). The SCAP sets out ethical best practices in advertising and the ASAS is empowered to request offending marketers to take corrective action and may even impose sanctions (e.g. withdrawal of trading privileges and adverse publicity).

These would apply to both online and offline marketing.

The Advertising Standards Authority of Singapore has issued guidelines for Interactive Marketing Communication & Social Media, as an Appendix to the Singapore Code of Advertising Practice. The guidelines set the standards of ethical conduct to be adopted by marketers, advertising agencies and media involved with advertising and marketing communication using social media. 

Online marketing materials should also comply with applicable laws and guidelines relating to advertisements generally (see previous section).

Physical store layouts could be protected via copyright or registered designs, assuming that they are original or novel. For online stores, it may be relevant to also consider the protection of graphical user interfaces under the registered designs regime.

Traders may also seek protection through the trade marks regime, but this is likely to prove difficult unless substantial evidence of use can be adduced to prove that the store layout on its own without reference to other trade marks or brand names, is sufficiently distinctive to be recognised as a badge of origin.  

Unregistered rights in physical and online stores may also be protectable via the law of passing off if the requisite elements can be established. Most crucially, it will need to be shown through evidence that the store layout on its own (instead of other brand names or elements) is a distinctive identifier of the goods or services in question.

There are no specific regulations on unfair competition in Singapore. Deceptive or wrongful trade practices are governed by the following (non-exhaustive) legal avenues:

• Intellectual property law – e.g. trade mark infringement.
• Consumer protection law – e.g. the Consumer Protection (Fair Trading) Act prohibits “unfair practices” in relation to a consumer transaction. It is an “unfair practice” to:
  • do or say anything, or omit to do or say anything, which as a result might cause a consumer to be reasonably deceived or misled;
  • make a false claim or representation;
  • take advantage of a consumer when you know, or ought reasonably to know, that the consumer is:
    • not in a position to protect his own interests; or
    • not reasonably able to understand the transaction.
• Misrepresentation Act (Cap. 390, 1994 Rev Ed).
• Economic torts (e.g. interference with business relationships).

To address climate change and promote sustainability, the Singapore Green Plan 2030 was launched in early 2021. Referred to as the Green Plan, it is a nationwide movement to advance Singapore’s national agenda on sustainable development; it charts concrete goals and targets for Singapore over the next 10 years, in a move to strengthen Singapore’s commitments under the United Nation’s 2030 Sustainable Development Agenda and Paris Climate Agreement. More information on the Green Plan can be found at https://www.greenplan.gov.sg/.  

There are currently no regulations specifically addressing sustainability in the fashion industry. However, as consumers become more aware of the environmental impacts of their purchasing decisions, it is now critical for brands to incorporate sustainability in their business plan, especially as the industry comes under criticism for its heavy use of plastics in packaging.

Relevant certification for the fashion industry includes the Global Textile Standard (GOTS), Oeko-Tex Standard, and Fairtrade International.

Enhanced IP border enforcement measures under the Intellectual Property (Border Enforcement) Act 2018 (No. 34 of 2018) are to be implemented in three phases. Phases 1 and 2 have been implemented. Phase 3 is expected to come into force within three years of the entry into force of the European Union-Singapore Free Trade Agreement (i.e. by 20 November 2022) and will provide for border enforcement measures in relation to registered designs and geographical indications.

Seizure on request. Singapore Customs is empowered to seize infringing goods that are expected to be imported or exported upon request by a rights holder. In order to initiate such customs action, a proprietor or licensee of copyright or a registered trade mark must first submit written notice in the prescribed form to the Director-General together with the prescribed fee. The notice must contain sufficient information to identify the infringing goods and to enable Customs to ascertain the time and place of the expected importation. The notice remains valid for 60 days commencing on the day on which the notice was given, during which an authorized Customs officer may seize goods he believes to fit the description of the goods described in the notice. An authorized officer may refuse to seize suspected goods unless the applicant has deposited a sum of money or provide some other security to the satisfaction of the Director-General of Customs.

Customs may examine any suspected goods, including those in transit, and may seize:

• goods that are imported into Singapore;
• goods that are to be exported from Singapore; and
• goods that are in transit and consigned to a person with a commercial or physical presence in Singapore.

Customs may only seize goods in transit that are suspected to be copyright-infringing or counterfeit goods in relation to a registered trade mark if they are consigned to a person with a commercial or physical presence in Singapore. The mechanism in section 140B of the Copyright Act and section 82 of the Trade Marks Act for the registered proprietor or his licensee to initiate customs action does not apply to goods in transit.

After seizure, Singapore Customs may also provide a rights holder with the relevant names and contact details that it has obtained. Such information can be extremely valuable for rights holders investigating the movement of infringing goods across multiple territories. In practice, however, Singapore Customs generally only provides such details after payment of a security deposit.

Ex officio seizure. Singapore Customs is also empowered to act on its own initiative to examine and seize goods that an authorized Customs officer reasonably suspects to be copyright-infringing copies or counterfeit trade mark goods. Singapore Customs will inform the owner or exclusive licensee of the copyright or the proprietor or licensee of the registered trade mark as soon as practicable after the seizure. Customs may only seize goods in transit that are suspected to be counterfeit goods in relation to a registered trade mark if they are consigned to a person with a commercial or physical presence in Singapore.

However, unlike some other countries in the region, Singapore does not have an official customs recordal system where brand owners can submit records of their intellectual property rights for customs to monitor.

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