Trade marks are protected under the Trade Marks Act (Cap. 332, 2005 Rev Ed) and 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 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 a non-use challenge after five years from date of completion of registration. 

Singapore also recognises “non-traditional” trade marks, which may be of interest to the fashion industry.  

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

Using the brand Camper as an 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. 

Although the same criteria and standards of distinctiveness apply when registering a shape mark, Singapore case law suggests it is generally difficult to satisfy the inherent registrability threshold, unless there are distinctive elements on the shape mark (e.g. markings). 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 e.g. a sign consisting of the shape of a banana for “bananas”. 
• The shape is necessary to obtain a technical result i.e. the shape is the result of technical considerations. For example, in Societe des Produits Nestle SA and anor v. Petra Foods Limited and anor [2016] SGCA 64, Nestle’s two-finger and four-finger shape marks for chocolate confectionary were found devoid of distinctiveness as each essential feature of the shape mark was necessary to obtain a technical result. 
• The shape gives substantial value to the goods. The purpose is to exclude “aesthetic-type shapes” from registration, i.e. shapes with eye appeal or are purchased primarily because of eye appeal. This ensures the applicant is not unnecessarily conferred a longer monopoly through trade mark protection, thereby extending the life of other rights which legislature has sought to make subject to a limited period (e.g. design rights (discussed further below)).  

Colour marks. Application to register a colour mark must include a clear representation of the colour, together with a clear description of the mark. Colour codes may be used. For example, TM No. T1003719Z, owned by PALOÏSE SAS, includes a description of the mark 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)”.  

Although it is possible to register colours as trade marks, the threshold is quite high and it is generally difficult to satisfy the requirement that the colour or combination of colours, has the necessary distinctive character, unless substantial evidence of use is available to support the mark distinctiveness. The registration of colour marks may also be refused if: 

• the colour or colour combination serves a function, where the colour provides a particular technical result or conveys a generally accepted meaning (e.g. black for solar power collectors (because of heat absorption)); or 
• the colour or colour combination is common to the trade (e.g. terracotta for roof tiles). 

Sound marks. 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 sound. For example in TM No. 40202104134W, by e-commerce platform Lazada Southeast Asia Pte. Ltd., the description of the mark was that it “consists of a sound mark comprising of a reverse cymbal sound of one quarter note for one count followed by three musical notes in the key of C major, (in its master form) namely, the melody notes E, A and G in the form of a quarter note followed by an eighth note, followed by a quarter note […]”. 

Hologram marks. Each view of the hologram must be depicted in the representation so that all material features of the mark are apparent. The only hologram mark successfully registered with IPOS (but has expired due to non-renewal) is TM No. T0108196C by Dukan De Nitya, covering amongst others, clothing items in class 25. 

Although hologram mark registrations are relatively uncommon as they are difficult to represent graphically, it is conceivable that with developments in augmented reality, hologram trade marks will become more prevalent, including in the fashion industry (e.g. Gucci’s involvement in the metaverse).

Movement marks. 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.

“Made in”. A mark consisting exclusively of designations of geographical origin (such as “Made in Singapore”) are not registrable, unless combined with other distinctive elements. Even then, IPOS would likely require qualification on the goods/services claimed to reflect the geographical origin, for example, “clothing, originating from Singapore” in class 25.

However, IPOS will not typically question the veracity of this indication unless it appears from the specifications that the goods are clearly made elsewhere, as there are trading standards governing use of such indications in the marketplace (e.g. garment labelling is governed by The Consumer Protection Regulations).  

Unregistered marks. 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. To succeed in a claim for passing off, the following elements have to be established: 

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

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

Additionally, owners of well-known marks, even if unregistered in Singapore, may bring action against an unauthorised third-parties’ use or registration of an identical or similar mark. However, brand owners will bear the evidentiary burden of proving that its mark is well-known in Singapore, the threshold for which is high. 

It is also worth noting that in keeping up with current trends, it is possible to protect goods/services relating to non-fungible tokens and the metaverse (e.g. Class 9 will also cover downloadable virtual clothing). 

To protect an outward appearance of an article or non-physical product, design protection can be obtained under the Registered Designs Act (Cap. 266, 2005 Rev Ed). Registration affords the owner the right to prevent third-parties from using the registered design or anything substantially similar. Registrable design refers to features of shape, configuration, colours, pattern or ornamentation applied to any article or non-physical product that gives it its appearance. Design protection allows fashion brands to protect designs of clothing, accessories and bags. This includes virtual or projected designs, and Graphical User Interfaces.  

Handmade or artisanal items are registrable, as the Registered Designs Act no longer requires the product to be manufactured by an industrial process. An example of this is CHANEL’s design no. 30202260190Y for watch dials. 

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

IPOS does not conduct substantive examination of design applications. These will be accepted for registration if formalities requirements are satisfied. Registration is also relatively expeditious and can take place within two to four weeks of filing.  

Copyright protects original artistic, literary, musical, 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, 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 can be protected by copyright provided these are original artistic works. 

However, there is no dual protection for copyright and registered designs in Singapore. In other words, it would not be possible to bring a claim for copyright infringement if an artistic work is registered under the Registered Designs Act, or if it has been industrially applied (to more than 50 articles). 

It is therefore highly recommended to seek registration under the Registered Designs Act if it is envisaged that the design will be applied industrially. 

N/A. 

Aside from seeking adequate IP protection, it is crucial that contractual safeguards are put in place at various stages of the product process, especially as digitisation, social media, and multi-channel retailing have presented new and evolving opportunities and challenges. 

Licence agreements  

Where any stage of the manufacturing process is outsourced, there should be adequate contractual safeguards to prevent misuse of owner’s IP.  

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

• IP Licence granted:  
  • identification of IP;  
  • duration of licence;  
  • territory;  
  • permitted purposes and restrictions.  
• Specified manner of use and brand usage guidelines.  
• Adequate provisions to safeguard the IP of the brand owner and ensure ownership remains with the owner.  
• Quality control, for example products and packaging must be of a standard equal to best industry practice and must not be defective. Product safety testing or certification must be undertaken using reputable testing houses.  
• Prohibition against unauthorised sale or distribution of manufactured products.  
• Termination and post-termination obligations (e.g. return or destruction of materials and defective or rejected products which contain owner’s IP). 

Non-disclosure Agreements (NDAs) 

NDAs are useful to keep trade secrets confidential, including, for example, product information revealed to employees during the course of their work or to third-parties (e.g. contractors or investors) during negotiations. 

An NDA would generally contain the following key clauses:  

• Scope of confidential information and exclusions (e.g. information available in public domain excluded).  
• Extent to which duty of confidentiality applies (e.g. this usually extends to a company’s agents, employees, or individuals where disclosures are necessary). 
• Confidentiality term — this may extend beyond NDA duration and typically ranges from one to five years depending on nature of the information disclosed. It will usually be challenging to enforce continuing confidentiality. 

Subcontract agreements with suppliers/in-house manufacturing 

It is common for external manufacturers to sub-delegate a portion of the work to another sub-contractor as part of a larger project. Sub-contractor agreements typically comply with key provisions in the main manufacturing contract by direct reference, or through “flow-down” provisions. This includes:  

• Scope and duration of work, including deadlines to be met, quantity, submission or amendment of orders. 
• Price and payment terms. 
• Minimum level of insurance coverage. 
• Quality control and inspection (e.g. time period to provide notification on defective products). 
• Provisions clearly establishing that sub-contractors are independent contractors and not employees.  

For in-house manufacturing, employees privy to confidential information or proprietary processes should be put under an NDA (see section above). 

Distribution agreement 

A distribution agreement involves a situation where the distributor is accorded the right to purchase goods from the supplier and re-sell them to their customers. A typical agreement addresses the following key issues:

• Term and scope: 
  • duration of appointment;
  • territory; 
  • exclusivity; and
  • products distributed.
• Pricing, payment and supply of products (e.g. order or minimum purchase requirements).
• Restrictions on distributor: 
  • permitted trade channels; 
  • storage of products; and
  • performance goals.
• IP, specifically manner and use of supplier’s IP.
• Termination and post-termination obligations (e.g. return of materials and products).
• Limitation of liability: delivery and passing of risks.
• Advertising and promotion.
• Data privacy obligations.
• Audit and compliance. 

Agency agreement 

Agency agreements, on the other hand, create a relationship between agent and supplier (as the principal), where the agent would be empowered to act on behalf of the supplier within confines of the agreement (e.g. enter into legal contracts with third-parties on behalf of supplier). 

Scope of agent’s authority is contractually agreed between parties. Provision of indemnity and its scope is also contractually agreed. It is not uncommon for the principal to provide the agent with indemnity against reasonable expenses and liabilities, provided the agent has acted with reasonable care within the agreed scope of authority.

Selective distribution online in high-end fashion and trade mark protection

With continued growth in e-commerce, luxury brands are also embracing digital retail. However, to protect brand image, it is common for luxury brands to adopt selective distribution as a strategy, by allowing selected retailers to retail their products online. 

As selective distribution agreements qualify as vertical agreements, they currently enjoy exemption from the anti-competitive provisions of the Competition Act 2004. However, brands should still be cautious, as vertical agreements can be anti-competitive in a hub-and-spoke arrangement or if considered an abuse of dominance.

Co-branding and co-marketing 

Co-branding involves cross-licensing of trade marks from different companies (or celebrities) 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 effective in raising brand awareness, expanding consumer base and market presence, and increasing sales. 

However, if not properly managed and monitored, there may be adverse effects on a brand (e.g. if a co-brand becomes associated with poor quality, or if there is misuse of the brand). 

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

• Licence granted: 
  • identification of IP; 
  • duration of collaboration and licence; 
  • exclusivity to prevent partners from entering into co-branding arrangements with competitors; and
  • territory.
• Quality control: 
  • permitted purpose and restrictions; 
  • manner of use; and
  • approval of advertising materials. 
• Sharing of costs and revenue. 
• Data privacy obligations. 
• Consumer engagement including management of social media and rights and obligations vis-à-vis consumer engagement.
• Ownership of IP in co-branded property (e.g. advertising materials, packaging).
• Indemnities and liability insurance (e.g. if a partner produces defective product to be co-branded).
• Reputational damage: corrective advertising and/or damages for a partner’s reputational damage.
• Termination and post-termination obligations (e.g. return or destruction of materials).

Franchising and alternative sales model agreements

Other more common alternative sale models adopted in Singapore are: 

• Franchising. Choice of franchisee is crucial to ensure maintenance of quality and brand image, as franchisees are provided with some degree of freedom to operate, notwithstanding any restrictions the franchisor may impose.
• Pop-up-stores. This is a short-term option for brands without physical presence or those looking to expand into Singapore. It allows brands to test or gain traction before committing to a permanent storefront. 

Employing fashion models 

When working with fashion models, always clearly delineate the scope of activity (date, time, duration, nature of activity) and use of fashion model’s image. Ensure that an appropriate release form is signed. The services agreement would usually be between the business and modelling agency, and in the case of a freelancer, between the business and freelance model.

If a company engages a photographer, ensure that the services agreement contains appropriate assignments or licences to ensure rights to use, publish and reproduce photographs.

Social media, influencers and brand ambassadors/celebrities

Social media marketing has become increasingly popular, as we see brands taking on a greater appetite for novel ways to reach new demographics. More recently, many brands are keen on leveraging benefits of the metaverse, where we see active collaborations with virtual influencers. 

Agreements with brand ambassadors should clearly outline the ambassador’s role and commitments. Increased interest in the metaverse has also brought about a whole host of other intellectual property ownership and data privacy issues, which the agreement should address. 

Aside from compensation and rights to use the ambassador’s image or name, there should be: 

• adequate safeguards to govern the ambassador’s general conduct during the endorsement term, including consequences of adverse publicity arising from any acts of the ambassador; 
• conditions regarding products provided to the ambassador (e.g. whether these may be resold or given away by ambassador); and 
• approval for content posted by the ambassador — it is common for copyright in such content to be owned by the ambassador unless such rights are contractually transferred to the business.

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

• Disclosures of commercial relationships (e.g. 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 in Singapore. Advertisements (both online and offline) should generally comply with applicable laws 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 ASAS. 

Along with compliance with the applicable laws and guidelines outlined in the previous section: 

• The Personal Data Protection Act 2012 sets out obligations if organisations undertake activities relating to collection, use or disclosure of personal data.  
• Consumers may opt out of receiving marketing messages received on their phones by registering their number with the Do Not Call Registry. 
• The Technical Reference 76 by Enterprise Singapore provides guidelines to e-retailers and e-marketplaces, covering best practices on end-to-end e-commerce processes. 

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

Unregistered rights in physical and online stores may also be protectable via the law of passing off if the requisite elements can be established. It is necessary to show through evidence that the store layout on its own (less any brand names or elements) is a distinctive identifier of the goods/services. 

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

• IP laws (e.g. trade mark infringement or tort of passing off). 
• Consumer protection law (e.g. the Consumer Protection (Fair Trading) Act prohibits “unfair practices” in relation to a consumer transaction).  
• Misrepresentation Act (Cap. 390, 1994 Rev Ed).  
• Economic torts (e.g. interference with business relationships). 

There are currently no regulations specifically addressing sustainability in the fashion industry in Singapore. However, as consumers become more aware of the environmental impacts of their purchasing decisions, it is 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 Global Textile Standard, Oeko-Tex Standard, and Fairtrade International. 

There are no specific import-and-export controls over fashion goods in Singapore, although general rules of seizure apply to IP infringing goods: 

• Seizure on request. Singapore Customs is empowered to seize infringing goods expected to be imported or exported upon request by a rights holder. To initiate such action, a proprietor or licensee of copyright or registered trade mark must 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 to enable Customs to ascertain the time and place of the expected importation. The notice remains valid for 60 days from the day of notice, during which an authorised Customs officer may seize goods believed to fit the description in the notice.  
• Ex officio seizure. Singapore Customs is also empowered to act on its own initiative to examine and seize goods reasonably suspected to be copyright-infringing or counterfeit. Singapore Customs will inform the owner or exclusive licensee of the copyright or registered trade mark as soon as practicable after seizure. 

Can patterns or monograms be protected as a trade mark?  

Yes, while patterns are commonly protected (i) as a registered design; or (ii) under copyright law as an artistic work, it is also possible to obtain protection as a registered trade mark. This may appear particularly attractive, since the protection conferred over a registered trade mark is potentially perpetual (subject to it being renewed every 10 years). However, the challenge in obtaining trade mark protection over a pattern lies with the need for it to be able to function as a badge of origin for the goods or services in question. Oftentimes, pattern marks are descriptive or customary to the trade, or otherwise decorative. Accordingly, it can be more difficult to establish the relevant legal requirements to satisfy the thresholds for registrability. The owner must be able to adduce appropriate evidence to establish acquired distinctiveness.  

How does the Singapore Registry classify non-fungible tokens (NFTs) in an application for registration of a trade mark?  

Based on a 2023 circular issued by the Singapore Registry, the description “NFTs” alone does not adequately describe a good or service, and is therefore not acceptable. It would be necessary to indicate the digital or physical items linked to the NFTs (e.g. sports shoes authenticated by non-fungible tokens would fall within Class 25 and Paintings [pictures] authenticated by non-fungible within Class 16). Downloadable virtual goods, on the other hand, are suited to Class 9 (e.g. downloadable virtual goods, namely, virtual bags for use in online virtual environments).