Journal Name: European Intellectual Property Review

Volume Number: 45

Issue Number: 12

Abstract:

Concepts of “distinctiveness” permeate the foundations of trade marks as a species of intellectual property, threading through the rules and principles governing the subsistence and scope of the legal monopoly enjoyed by trade mark proprietors. A firm grasp of these potentially slippery concepts is required when they are deployed by decision-makers trying to determine whether or not competing marks should be regarded as “similar”, a crucial threshold question that every aggrieved proprietor must satisfy before their trade mark claims can succeed. For close to a decade, the Singapore trade mark system has struggled with the ambiguities of the Court of Appeal’s landmark decision in Staywell, with various
subsequent decisions at the Registry and High Court level reaching divergent positions on whether, and how, the
acquired distinctiveness of a trade mark should be factored into the marks-similarity inquiry. This article attempts to explain how the different conceptual strands of distinctiveness are connected within the legal framework for assessing whether competing trade marks are similar or dissimilar, while evaluating a recent attempt by the High Court to clarify this challenging area of trade mark law.