Note: Singapore has a relatively high level of intellectual-property rule of law among ASEAN countries. Studying its cases is useful for Chinese lawyers handling foreign-related matters. This article selects four representative trademark disputes and examines the reasoning of IPOS, the High Court and the Court of Appeal to identify the protection tendencies reflected in Singapore practice.
01 Overview of trademark protection in Singapore
Although economic globalisation has faced challenges, the global flow of knowledge and technological innovation continues. This requires countries to keep improving intellectual-property legislation and enforcement. As an active participant in globalisation, China needs foreign-related lawyers to understand different legal systems and cultures, not merely the procedural routes for resolving disputes, but also the underlying legal reasoning rooted in country-specific research. This enables them to serve cross-border dispute resolution, arbitration, mediation and settlement more effectively and to contribute to international commercial dialogue.
China and ASEAN have been each other’s largest trading partners for several consecutive years since 2020, and the Regional Comprehensive Economic Partnership (RCEP) is now fully effective. In the 2023 Global Innovation Index published by the World Intellectual Property Organization (WIPO), Singapore ranked fifth among global innovation centres. WIPO has also established in Singapore its only dispute-resolution office outside Geneva.
Intellectual property is distinctive among civil rights. Compared with traditional civil rights, it is characterised by later emergence, administrative authorisation and territoriality. National laws are similar in practice: marks must be visually clear, rights boundaries are defined, and registration and priority rules are broadly consistent, although definitions, time limits and certain prerequisites differ. Because trademarks identify the source of goods and services and build brand recognition and loyalty, trademark disputes are among the most common IP disputes in cross-border trade. This article therefore uses trademark infringement as a lens through which to study Singapore’s protection approach.
The first two cases—Subway v Subway Niche and Nutella v Nutello—appear among the five leading judgments highlighted on the Singapore Courts website and have been cited in many later decisions. The latter two are more recent registration disputes and continue the protection tendency seen in the earlier cases after 2012.
Under section 5(2)(e) of Singapore’s Trade Marks Act 1998 (2020 Revised Edition), an applicant must be using the mark, using it with consent, or have a bona fide intention to use it. Registration is therefore premised on actual or intended use in good faith, which differs from China’s first-to-file principle.
02 Analysis of representative cases
Case timeline
- 1987 — Subway Niche began operating
- 1989 — US Subway registered its trademark in Singapore
- 2007 — Sarika launched the “Nutello” drink
- 2010 — Sarika stopped selling “Nutello”
- 2021 — Green Radar applied to register its mark
- 2024 — ByteDance v Dole Technology concluded
Case 1: Subway v Subway Niche
In this High Court case, US sandwich company Subway sued the local Peranakan snack chain Subway Niche for trademark infringement, arguing that the similarity of the marks and sandwiches would confuse the public. The High Court found that, although the marks were visually similar, there was no compelling evidence of actual confusion damaging Subway. The judge also noted that Subway Niche began operating in 1987, while Subway registered its mark in Singapore only in 1989.
Subway’s mark was:
Subway alleged that the local chain’s mark was infringing:
The central factual issue was when the defendant began selling sandwiches under SUBWAY NICHE. The defendant and two witnesses maintained in affidavits and cross-examination that sales had continued since 1987.
The judge considered three questions:
- Whether there was infringement under section 27(2)(b) of the Trade Marks Act, where similar marks are used for identical or similar goods or services;
- Whether there was infringement under section 27(3), concerning a registered mark well known in Singapore, read with section 55 on well-known marks; and
- Whether the defendant was liable for passing off.
On the first question, the judge accepted at paragraph 41 that the two SUBWAY marks were similar, but held at paragraph 56 that Subway’s evidence did not support the conclusion that consumers would be confused. The alleged confusion was therefore only a possibility or inference.
On the second question, applying the principle protecting prior use under section 28(2), the judge accepted evidence that Subway’s Singapore registration dated from 25 May 1989, while the defendant had sold sandwiches and snacks before that date and continued to do so. The defendant’s use of SUBWAY NICHE therefore did not indicate a connection with Subway’s goods and was unlikely to cause confusion.
On damages and goodwill, the judge held that even on a generous assessment Subway could not obtain protection. When Subway Niche was already using its mark, Subway had no actual business or customers in Singapore. The alleged lost licensing opportunity, lost income and passing off were not established.
The claim for trademark infringement and passing off was dismissed, with costs awarded against the claimant.
Case 2: Nutella v Nutello
Sarika Connoisseur Cafe, the operator of TCC coffee shops, launched a “Nutello” coffee drink containing Nutella spread. Ferrero, the manufacturer of Nutella, sued for trademark infringement. The High Court found that use of “Nutello” was likely to confuse the public and that Sarika’s mark would weaken the distinctiveness of Nutella, particularly because Ferrero also sold a Nutella-based milkshake. The Court of Appeal upheld the decision.
Sarika is a Singapore company engaged in food and beverage retail and wholesale coffee, tea and cocoa. Ferrero is an Italian company producing and selling confectionery, including Nutella chocolate-hazelnut spread sold in Singapore supermarkets and other retailers. Sarika launched the hot coffee “Nutello” in a small glass on 1 August 2007. After Ferrero sent a cease-and-desist letter in 2009, Sarika stopped selling it in July 2010.
The High Court held:
- Under section 27(2)(b), Sarika infringed Ferrero’s word mark because the similarity of the mark and goods was likely to confuse the relevant public;
- Under sections 55(2) and 55(3)(a), Nutella was well known both to the relevant public and the general public in Singapore. Sarika infringed and diluted the well-known mark under section 55(3)(b)(i), and its promotion and sale of Nutello also amounted to passing off. The court granted an injunction.
Sarika appealed. The Court of Appeal rejected the appeal, addressing the following points.
- “Nutello” and “Nutella” were visually and phonetically similar. Although the High Court had erred in its conceptual analysis, the marks were similar when the relevant goods—chocolate and related drinks in Class 30—were considered. There was a likelihood of confusion among the relevant public, and Ferrero’s infringement claim succeeded.
- The Court of Appeal confirmed that Nutella was well known under section 55(2). Under section 55(3)(a), the likelihood of confusion damaged Ferrero’s goodwill even though Sarika argued that Ferrero’s sales had continued to grow. Under section 55(3)(b)(i), infringement and dilution could arise from the same conduct and were not mutually exclusive. Sarika was required to compensate Ferrero.
The appeal was dismissed in full.
Case 3: Google v Green Radar
Google LLC opposed an application by Green Radar (Singapore) Pte Ltd. The opposition was decided by an IPOS registrar on 8 February 2024. Green Radar, a Singapore company distributing IT security products and providing IT security services, applied to register the following mark on 29 April 2021:
Google filed its opposition on 9 November 2021, relying on the following mark:
IP adjudicator Cheng Pei Feng began by asking how far the protection of a technology giant’s mark should extend when it objects to a similar mark used by another operator. After considering visual, aural and conceptual similarity, the registrar concluded that the marks were slightly more similar than dissimilar overall. However, the services were not similar, there was no likelihood of confusion and the famous mark would not be diluted. The “well known in Singapore” standard required recognition by a substantial part of the public, drawing also on the Nutella case.
Google’s grounds of opposition therefore failed and Green Radar’s mark proceeded to registration.
Case 4: ByteDance v Dole Technology
ByteDance Ltd opposed Dole Technology Pte Ltd’s application in IPOS proceedings concluded on 11 June 2024. Dole Technology, a Singapore company, provides voice services through internet protocols and develops interactive digital-media software. Its applied-for mark was:
ByteDance, a multinational internet-technology holding company founded in 2012, operates Douyin, TikTok and other content platforms. It opposed the application using its word mark:
and its figurative mark:
The legal bases were sections 8(2)(b), 8(4)(b)(i), 8(4)(b)(ii) and 8(7)(a) of the Trade Marks Act 1998 (2020 Revised Edition). The registrar found the applied-for mark and ByteDance’s word mark visually and conceptually different and only weakly similar aurally. The two figurative marks were also materially different in all three respects. Because ordinary consumers would not be confused, ByteDance would suffer no damage and the opposition failed.
The registrar also assessed evidence of downloads and influence in Singapore. Although ByteDance was “well known in Singapore”, it was not “well known to the public at large in Singapore”. After reviewing all pleadings, evidence and submissions, the registrar held that none of the grounds succeeded and the applied-for mark could be registered.
03 Summary of the features of trademark protection
The four cases offer a window into Singapore’s judicial approach:
- The reasoning in legal decisions is rich, while the underlying logic remains stable. Statutes, precedents, academic writing, practical experience and a judge’s own assessment may all be cited. At its core, the approach reflects support for local small and medium-sized enterprises while protecting the legitimate interests of large multinational businesses in a resource-constrained economy open to global trade.
- The review process is relatively consistent. Whether a mark infringes or should be refused, courts and IPOS generally ask whether it is visually, aurally or conceptually similar, whether confusion is likely, and whether it is well known in Singapore. As of 11 June 2024, the marks recognised as well known by Singapore courts or IPOS included Seiko, Clinique, Nutella, Intel, Gucci and Gmail.
- The system supports free competition. In the four disputes involving objections by large companies, three decisions supported the small business or individual, although for different reasons. Large companies may have market power and receive a higher level of trademark protection, but cannot use that position alone to obtain additional commercial opportunities. This encourages the growth of smaller enterprises and fairer competition.
- Consistency of decisions. Similar facts received similar outcomes at different times, demonstrating stability and predictability. Commercial actors can more accurately anticipate the legal consequences of their conduct, which supports economic stability.
Procedural fairness and careful legal reasoning explain why Singapore’s trademark decisions display these tendencies: they balance industrial policy with national development strategy.
First, Singapore has a strong policy tradition of supporting SMEs. After the Asian financial crisis, the government developed a series of SME policies led by the Ministry of Trade and Industry and supported by agencies such as the Economic Development Board and the Standards, Productivity and Innovation Board. The SME21 ten-year plan launched in 2000 sought to expand SMEs in retail and e-commerce. Since 2017, the Infocomm Media Development Authority has promoted the SMEs Go Digital Programme. SMEs employ around two-thirds of the workforce and contribute nearly half of GDP, so they naturally receive stable policy support.
Second, Singapore is not protectionist or hostile to large multinationals. In his National Day Rally speech on 8 August 2024, Prime Minister Lawrence Wong noted that multinational companies including Pfizer, Hyundai, GlobalFoundries and Maersk had established new facilities in Singapore. An outward-looking economy remains the mainstream.
Some researchers consider Singapore’s digital-industry competitiveness not yet fully matched by its advanced digital infrastructure and innovative capacity. Singapore will therefore continue to need deep cooperation with large technology and internet companies. The Google–Green Radar and ByteDance–Dole cases show that although IPOS supported the smaller companies’ registrations, it did so because the registrations had not caused actual free-riding or business harm to the international companies. By contrast, Sarika was not supported because its conduct in fact damaged Ferrero’s legitimate interests. The result is a delicate compromise between large and small enterprises.
04 Implications for foreign-related lawyers and companies expanding overseas
In Singapore trademark disputes, the core principle is “use first”. The analysis should then address similarity, likelihood of confusion and whether the mark is well known in Singapore, while identifying the boundary at which legitimate interests are actually harmed. That is where a party can build its strongest case.
References
[1] Singapore Trade Marks Act 1998 (2020 Revised Edition)
[2] Singapore Supreme Court of Judicature (Intellectual Property) Rules 2022
[3] Guo Jianjun, “The Development of Singapore’s Outward-Oriented Economy Since Independence: A Globalisation and Regionalisation Perspective” (Yunnan University, 2012)
[4] Huang Xinghua, “An Analysis of Singapore Government SME Policy Since the Southeast Asian Financial Crisis”, Southeast Asian Review, 2013(04): 46–51
[5] Zhang Lei, “Singapore Research and Development Report 2023”, Southeast Asian Review, 2024(03): 19–27
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- For advice on trademark protection and registration in Singapore, please contact a professional adviser at Zhongxin Legal News.
- Lawyer Li Chengyu, practising certificate no. 14501202011172802; telephone: 13977109086
— Review | To be confirmed by the backend team
This article is for information only and does not constitute formal legal advice.
This article is general information and not legal advice. Specific matters require assessment by appropriately qualified professionals.