Case Details
- Citation: [2025] SGIPOS 7
- Court: Intellectual Property Office of Singapore
- Date: 2025-10-29
- Judges: Principal Assistant Registrar Mark Lim Fung Chian
- Plaintiff/Applicant: Taiwan Semiconductor Manufacturing Company Ltd
- Defendant/Respondent: -
- Legal Areas: Trade marks and trade names – Ex Parte Hearing
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2018] SGHC 81, [2022] SGIPOS 8, [2022] SGIPOS 9, [2023] SGIPOS 10, [2023] SGIPOS 1, [2024] SGIPOS 3, [2025] SGHC 51, [2025] SGIPOS 7
- Judgment Length: 30 pages, 8,459 words
Summary
This case involves a trade mark application by Taiwan Semiconductor Manufacturing Company Ltd for the mark "UNLEASH INNOVATION" covering goods and services related to semiconductors, manufacturing, and technology. The Intellectual Property Office of Singapore (IPOS) rejected the application, finding that the mark lacked distinctive character under Section 7(1)(b) of the Trade Marks Act. The applicant appealed the decision, arguing that the mark possessed inherent distinctiveness. After considering the applicant's arguments, the Principal Assistant Registrar ultimately upheld the rejection, finding that the slogan mark was devoid of any distinctive character and therefore not eligible for registration.
What Were the Facts of This Case?
On 13 July 2021, Taiwan Semiconductor Manufacturing Company Ltd ("the Applicant") applied to register the mark "UNLEASH INNOVATION" in Singapore Trade Mark No. 40202116551R ("the Application Mark"). The Application Mark was sought to be registered for goods and services in Classes 9, 40, and 42, including semiconductors, computer memory chips, custom manufacturing of semiconductors, and technology consultation services.
The trade mark examiner ("the Examiner") initially objected to the registration of the Application Mark under Section 7(1)(b) of the Trade Marks Act 1998 ("TMA"), which prohibits the registration of marks that are "devoid of any distinctive character." The Applicant was invited to submit evidence of acquired distinctiveness through use in Singapore for at least five years prior to the application date, but the Applicant declined to do so, arguing that the mark possessed inherent distinctiveness and should be registered without evidence of use.
The Examiner maintained the objection under Section 7(1)(b) TMA, and also introduced a new objection under Section 7(1)(c) TMA, which prohibits the registration of marks that "consist exclusively of signs that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services." The Applicant argued that both objections should be waived.
The matter was then reviewed by a senior trade mark examiner ("the Senior Examiner"), who agreed to waive the objection under Section 7(1)(c) TMA but maintained the objection under Section 7(1)(b) TMA. The Applicant subsequently requested an ex parte hearing to persuade the Intellectual Property Office of Singapore (IPOS) to accept the Application Mark for registration.
What Were the Key Legal Issues?
The key legal issue in this case was whether the Application Mark "UNLEASH INNOVATION" was eligible for registration under Section 7(1)(b) of the Trade Marks Act 1998, which prohibits the registration of marks that are "devoid of any distinctive character."
The Applicant argued that the Application Mark possessed inherent distinctiveness and should be registered without evidence of use. The Examiner and Senior Examiner, however, maintained that the mark lacked the necessary distinctive character to be registered as a trade mark.
How Did the Court Analyse the Issues?
In analyzing the registrability of the Application Mark under Section 7(1)(b) TMA, the Principal Assistant Registrar first discussed the general principles regarding the registration of slogan marks in Singapore.
The Registrar noted that the main purpose of trade mark law is to prevent consumer confusion by ensuring that businesses use unique identifiers to distinguish their goods or services. Accordingly, before a trade mark can be registered, it must possess a certain level of distinctiveness to function as a badge of origin for the goods or services in question.
The Registrar explained that the "critical question" in assessing distinctiveness is whether the average consumer would appreciate the trade mark significance of the mark without being educated that it is used for that purpose. The Registrar further observed that it may be more difficult to establish distinctive character for certain categories of marks, such as advertising slogans, compared to other types of marks.
The Registrar then proceeded to analyze the Applicant's specific arguments in support of the inherent distinctiveness of the Application Mark:
1. The Applicant argued that the Application Mark possesses resonance and originality that induce substantial cognitive effort from average consumers. The Registrar examined this argument in detail, considering factors such as the meaning and connotations of the phrase "UNLEASH INNOVATION" and whether it would be perceived as a distinctive trade mark by the relevant public.
2. The Applicant contended that the distinctive character of the Application Mark is especially pronounced in relation to the services applied for in Class 40 (custom manufacturing of semiconductors). The Registrar assessed this argument, considering the nature of the services and whether the mark would be seen as a badge of origin.
3. The Applicant pointed to the fact that the Application Mark had been registered as a trade mark in several foreign jurisdictions as evidence of its distinctive character. The Registrar analyzed the relevance and weight to be given to these foreign registrations.
4. Finally, the Applicant argued that the Application Mark should be registered because "certain analogous Singapore registrations" had been accepted previously. The Registrar considered this argument and the Applicant's examples of prior registrations.
After a thorough analysis of each of the Applicant's arguments, the Registrar ultimately concluded that the Application Mark was devoid of any distinctive character and therefore not eligible for registration under Section 7(1)(b) TMA.
What Was the Outcome?
The Principal Assistant Registrar rejected the Applicant's trade mark application for "UNLEASH INNOVATION" and maintained the objection under Section 7(1)(b) of the Trade Marks Act 1998. The Registrar found that the Application Mark lacked the necessary distinctive character to function as a trade mark and therefore could not be registered.
Why Does This Case Matter?
This case provides valuable guidance on the registration of slogan marks in Singapore, particularly in the context of Section 7(1)(b) of the Trade Marks Act. The Registrar's analysis and findings offer insights into the factors considered in assessing the distinctiveness of such marks, including the perception of the average consumer, the nature of the goods and services, and the relevance of foreign trade mark registrations.
The decision reinforces the principle that, while slogans can play an important role in advertising and promotion, they are often comprised of ordinary words and phrases that may not inherently function as distinctive trade marks. Absent evidence of acquired distinctiveness through use in the marketplace, such slogan marks may face significant hurdles in obtaining registration.
This case is particularly relevant for businesses and trade mark practitioners in Singapore, as it highlights the challenges in securing trade mark protection for advertising slogans and the need to carefully consider the distinctiveness of such marks before filing an application. The Registrar's reasoning and the precedents cited in the judgment provide a useful framework for evaluating the registrability of slogan marks under Singapore's trade mark laws.
Legislation Referenced
- Trade Marks Act
- Trade Marks Act 1998
Cases Cited
- [2018] SGHC 81
- [2022] SGIPOS 8
- [2022] SGIPOS 9
- [2023] SGIPOS 10
- [2023] SGIPOS 1
- [2024] SGIPOS 3
- [2025] SGHC 51
- [2025] SGIPOS 7
Source Documents
This article analyses [2025] SGIPOS 7 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.