Trade mark protection for merchandise

With top music artists including Coldplay, Ed Sheeran, Taylor Swift and Bruno Mars holding performances in Singapore this year, it is beyond doubt that the tourism industry has experienced growth in several aspects. As for music artists, revenue is generated not only from concert ticket purchases but associated merchandise as well. Naturally, concert merchandise will comprise names, logos, artworks and/or other elements belonging to the music artists, and it is important to ensure that these elements are protected with exclusive rights to use the same. Some music artists have taken steps to protect their trade mark rights even for concert merchandise. For example, in Singapore, the trade mark “Taylor Swift” is registered in classes 3, 9, 25 and 41, and there is a pending trade mark application for “Taylor Swift Era Tours” in multiple classes, covering a wide range of concert merchandise including clothing, bags, stationery, jewelleries, posters and decorations. 

Merchandising is not only relevant to the music industry but is important to businesses in other industries as well. Corporate merchandise serves as a vital marketing tool for businesses to establish brand recognition and awareness, build customer loyalty and boost sales. Hence, it is important that businesses extend the same trade mark protection to corporate merchandise. There are instances where large corporations discover that merchandise bearing their names and/or logos is being sold or offered to the public by third parties without their consent. Whilst actions may be taken against third parties based on other grounds such as passing off/unfair competition, having trade mark protection for corporate merchandise makes it more straightforward for businesses in taking such action.

Having said that, there remains a need to avoid filing trade marks for unnecessarily broad ranges of merchandise, especially if some types of merchandise will not be offered in the first place. Additionally, in some instances, the use of a registered trade mark on merchandise to promote the business may not be considered “use” of the registered trade mark. Over-protection may risk actions by third parties targeted at revoking trade mark registrations which are not being used in trade. 

In Singapore, a trade mark registration may be revoked if there has not been any genuine use of the trade mark for some/all of its protected goods and/or services for a stipulated period of time and there is no proper reason for the lack of use. It is therefore encouraged to seek professional advice in determining whether existing protection to your trade mark rights is sufficient and ideally encompasses the goods and/or services of interest including merchandise, where necessary.