chapter  29
11 Pages

Exclusive licensee’s rights in Singapore

Contractual and not proprietary against owners of marks
WithSue-Ann Li

In the absence of local judicial pronouncements in relation to the nature of a trademark license and the rights of a licensee vis-a-vis third parties, the Decision comes as a timely clarification in this area of law. The Court of Appeal in an earlier decision had ruled that the appellants were beneficial owners of the mark in question. The respondent’s basis for its use of the mark is as an assignee of an exclusive license agreement entered into between the registered owner of the mark and another party. The Court of Appeal held that section 40 Trade Mark Act (TMA) is the appropriate provision since they have earlier held in CA 172 that the Singapore Marks were held on trust by Nine Squares on behalf of the Partnership. The Respondent nevertheless argued that the statutory framework of the TMA supports the finding that “an exclusive licence of a registered trade mark confers a proprietary interest in that trade mark.”