Page 28 - วารสารกฎหมาย ศาลอุทธรณ์คดีชํานัญพิเศษ

วารสารกฎหมาย ศาลอุทธรณ์คดีชำานัญพิเศษ

Notably, in Singapore, the Trade Marks Act excludes trademark infringement
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for products that have been distributed in the market “whether in Singapore or outside

Singapore” with the “express or implied consent (conditional or otherwise)” of the
trademark owners in Article 29(1). To avoid strategic assignment of trademarks, the
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imports are also permitted if the Singapore trademark and the foreign mark are owned
by related entities and courts have ruled that the owner of the Singapore trademark
would be deemed to have implicitly consented to the first sale of products abroad. The
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exception to this rule applies when “the condition of the goods has been changed or
impaired after they have been put on the market” or “the use of the registered trade

mark in relation to those goods has caused dilution in an unfair manner of the distinctive
character of the registered trade mark.” In Singapore, courts have maintained
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consistency in admitting the import of genuine products. Similarly, in Vietnam, Article
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125(2)(b) of the Intellectual Property Law provides statutory support for the principle
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of international trademark exhaustion. Remarkably, the provision does not address
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the issue of products of different quality, but states that the following does not constitute

infringement: “circulating, importing, exploiting utilities of products having been
lawfully put on the market, including overseas markets, except for products put on the
overseas markets not by the mark owners or their licensees.”
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In Malaysia, the Trade Marks Act uses more convoluted language, providing

a statutory exception against infringement for the imports of genuine goods, as opposed

31 Singapore Trade Marks Act (Chapter 332, 2005 Revised Edition) (Sing.).
32 Id. at § 29(1).
33 Revlon Inc. v. Cripps & Lee Ltd. [1980] Fleet Street Reports 85 (C.A.).
34 Singapore Trade Marks Act, at § 29; See Ng-Loy Wee Loon, Intellectual Property Law of Singapore,
401- 402 (2d ed., 2014).
35 See Ng-Loy, supra note 34, at 400.
36 Law on Intellectual Property (No. 50/2005/QH11 of 29 November 2005) (Viet.). This law was amended
in 2009 by Law No. 36/2009/QH12, amending and supplementing a Number of Articles of the Law on Intellectual
Property, June 19, 2009 (Viet.). However, the trademark exhaustion provision, Article 125, remained unchanged.
37 Id. at art. 125(2)(b).
38 Id.

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