How to Respond to a Cease and Desist Letter for Trademark Infringement in Singapore
Receiving a Cease and Desist letter alleging trademark infringement or passing off can be alarming, particularly when the sender is a large company demanding that you immediately stop using your business name, logo, product packaging or other branding.
The letter may also require you to disclose your sales, surrender products, remove online listings, sign a written undertaking and pay a substantial amount in compensation or legal costs.
However, receiving a Cease and Desist letter does not automatically mean that trademark infringement or passing off has been established. The letter is not itself a court judgment. It is usually a pre-action demand through which the sender states its legal position and asks the recipient to take certain steps before formal proceedings are considered. Nevertheless, the letter should not be ignored, as an unresolved dispute may escalate into litigation and create additional legal and commercial costs.
Before responding, determine whether the sender actually owns enforceable rights in Singapore, whether your use conflicts with those rights and whether you have any available defences. You should also obtain independent legal advice before admitting liability, making payment or signing an undertaking.
Key Takeaways :
- Do not ignore the response deadline stated in the letter.
- Do not immediately admit liability or agree to the sender’s demands.
- Verify the sender’s trademark registration and the goods or services it covers.
- Consider whether the competing signs and goods or services are genuinely similar.
- Preserve documents showing when and how you adopted and used your branding.
- Obtain legal advice before signing an undertaking or paying compensation.
What Is a Cease and Desist Letter?
A Cease and Desist letter, sometimes described as a letter of demand, is a written demand requiring a person or business to stop an allegedly unlawful activity.
In a trademark dispute, the sender will normally claim that it owns registered or unregistered rights in a particular name, logo, sign, label, slogan, product appearance or other branding element. It may allege that the recipient’s use infringes its registered trademark or amounts to passing off.
The letter may demand that the recipient:
- Immediately stop using the disputed sign.
- Remove the sign from products, packaging and advertisements.
- Take down website pages, marketplace listings and social media content.
- Withdraw infringing goods from sale.
- Disclose sales, revenue, profits, suppliers and customers.
- Deliver up or destroy products and promotional materials.
- Transfer a domain name or social media account.
- Pay damages, profits and legal costs.
- Publish a corrective statement or apology.
- Sign a written undertaking not to repeat the alleged infringement.
These demands are not automatically enforceable merely because they appear in a lawyer’s letter. Their enforceability depends on the sender’s legal rights, the facts of the case and, where proceedings are commenced, the orders ultimately made by the court.
An undertaking should be reviewed particularly carefully. Once signed, it may create contractual obligations that are wider than the relief a court might otherwise grant.
What Should You Do Immediately After Receiving the Letter?
1. Record the deadline
Identify the date by which the sender expects a response. A deadline stated in a private demand letter is not necessarily the same as a court-ordered deadline, but it should still be taken seriously.
Where insufficient time has been provided, your lawyer may request a reasonable extension while the allegations, trademark registrations and relevant evidence are reviewed.
2. Do not make an immediate admission
Avoid sending an emotional or unconsidered response. Statements made in emails, telephone calls, messaging applications or meetings may later be relied upon as evidence.
Do not admit that:
- The marks are confusingly similar.
- You copied the sender’s branding.
- Customers have been confused.
- Your products are infringing.
- The sender is entitled to the amount demanded.
A short acknowledgement of receipt may be appropriate while legal advice is being obtained.
3. Do not sign an undertaking without legal advice
The undertaking may require more than simply stopping the disputed use. It may include obligations to:
- Pay compensation.
- Disclose commercially sensitive information.
- Destroy stock.
- Contact customers or distributors.
- Transfer intellectual property or digital assets.
- Submit to an injunction or other enforcement mechanism.
- Pay a predetermined sum for any future breach.
The wording should therefore be independently assessed and, where appropriate, negotiated.
4. Preserve relevant evidence
Do not delete files, alter records or dispose of disputed goods before receiving advice.
Preserve evidence showing:
- When the sign was created or selected.
- When it was first used in Singapore.
- How the branding developed.
- Where and how it was advertised.
- Who supplied or manufactured the products.
- Whether the sender previously knew about or accepted the use.
- Whether consumers have actually been confused.
5. Verify the sender’s rights
Request or identify:
- The trademark registration number.
- The registered owner.
- The registration date.
- The filing and priority dates.
- The exact representation of the registered mark.
- The goods and services covered.
- Any disclaimers or limitations.
- Whether the registration remains valid.
- Whether the sender is the owner or an authorised licensee.
A trademark registered in another country does not automatically provide registered trademark rights in Singapore. Trademark protection is territorial, although well-known trademarks and passing-off rights may raise additional issues depending on the circumstances.
What Is Trademark Infringement in Singapore?
Registered trademark infringement in Singapore is principally governed by Section 27 of the Trade Marks Act 1998.
In general, a registered trademark owner has the exclusive right to use the mark, and to authorise others to use it, in relation to the goods or services for which it is registered. These rights remain subject to the scope of the registration, any disclaimer or limitation and the exceptions contained in the Act.
Trademark infringement generally arises in the following situations.
1. An identical sign is used for identical goods or services
A person may infringe a registered trademark by using, without the owner’s consent and in the course of trade, a sign that is identical to the registered mark for goods or services identical to those covered by the registration.
For example, using an identical brand name on the same type of product covered by the owner’s registration may fall within this category.
2. An identical sign is used for similar goods or services
Infringement may also occur where an identical sign is used for similar goods or services and the circumstances give rise to a likelihood of confusion.
3. A similar sign is used for identical or similar goods or services
A similar sign may infringe where it is used for identical or similar goods or services and there is a likelihood that the public will be confused.
The confusion may concern the commercial origin of the goods or services. Consumers may, for example, believe that the recipient’s business is owned by, licensed by, affiliated with or otherwise commercially connected to the trademark owner.
Protection for well-known trademarks
The Trade Marks Act also provides additional protection for certain trademarks that are well known in Singapore. In appropriate circumstances, protection may extend beyond the ordinary comparison of identical or similar goods or services.
However, a claim that a trademark is well known, particularly well known to the public at large, must be supported by sufficient evidence. The IPOS Trade Marks Case Guide notes that relatively few marks have crossed the higher “public at large” threshold.
What Is Passing Off?
Trademark infringement protects rights arising from registration. Passing off is a separate common-law action that protects the goodwill associated with a business, including goodwill in branding that may not have been registered as a trademark.
A claimant generally needs to establish three elements.
1. Goodwill
The claimant must show that its business possesses goodwill in Singapore associated with the relevant name, sign, get-up or other distinctive feature.
Goodwill is more than general awareness. It concerns the attractive force that brings customers to the claimant’s business.
A foreign company’s international reputation or online presence does not necessarily establish the required goodwill in Singapore. The Singapore Court of Appeal has observed that the existence of websites and domain names alone would ordinarily be insufficient without evidence connecting the business to the relevant customer base in Singapore.
Relevant evidence may include:
- Singapore sales and revenue.
- Local customers.
- Length and extent of use.
- Advertising expenditure.
- Media coverage.
- Market share.
- Distribution arrangements.
- Consumer recognition.
- Business activities conducted in Singapore.
2. Misrepresentation
The claimant must show that the recipient made a misrepresentation that is likely to lead a substantial portion of the relevant public to believe that the recipient’s goods or services originate from, are connected with or are authorised by the claimant.
The misrepresentation does not always need to be intentional. The issue is normally the effect of the conduct on the relevant public.
Examples may include using:
- An identical or highly similar business name.
- Similar logos and colour arrangements.
- Similar product packaging.
- Similar website layouts or promotional materials.
- Statements suggesting an authorised relationship.
- Branding that creates the appearance of a common commercial source.
3. Damage
The claimant must establish that the misrepresentation caused, or is likely to cause, damage to its goodwill.
It is not always necessary to prove a completed and precisely calculated loss before relief may be sought. Depending on the circumstances, recognised forms of damage may include diverted trade, tarnishment, blurring, loss of distinctiveness or restriction of a natural area of business expansion.
Confusion alone is not necessarily sufficient. The confusion must result in, or be likely to result in, damage to the claimant’s goodwill.
How Is Similarity Between the Marks Assessed?
Do not assume that the marks are legally similar merely because the sender says so.
A proper assessment generally considers the marks from three perspectives.
Visual similarity
This concerns how the marks look.
Relevant features may include:
- Spelling.
- Length.
- Typefaces.
- Logos.
- Images.
- Colours.
- Layout.
- Dominant elements.
- Prefixes and suffixes.
- The overall visual impression.
A small difference does not automatically avoid infringement if the distinctive and dominant components remain similar.
Aural similarity
Aural similarity concerns how the marks sound when spoken.
Marks with different spellings may still be aurally similar. This can be particularly relevant where a brand is commonly recommended verbally or ordered over the telephone.
Conceptual similarity
Conceptual similarity considers the meanings or ideas conveyed by the marks.
Two marks may look or sound different but communicate a similar concept. Conversely, marks sharing a word may create different overall concepts when viewed in their full context.
The IPOS Trade Marks Case Guide confirms the relevance of visual, aural and conceptual comparisons while emphasising that the result depends on the specific marks and factual context.
Key Questions to Consider Before Responding
Does the sender own a valid Singapore trademark?
Check whether the trademark:
- Is registered in Singapore.
- Remains in force.
- Is owned by the party making the demand.
- Covers the sign relied upon.
- Covers the relevant goods or services.
- Is subject to any disclaimer or limitation.
A pending application does not necessarily provide the same remedies as a completed registration.
Is your sign actually similar?
Compare the marks as a whole rather than focusing only on one shared element.
Consider:
- Visual similarity.
- Aural similarity.
- Conceptual similarity.
- The distinctiveness of the common element.
- The importance of the differing elements.
- The overall impression created.
Are the goods or services identical or similar?
Review the actual wording of the registration. A registration for one category does not automatically prevent all businesses in unrelated sectors from using the same or a similar word.
Is confusion genuinely likely?
Consider the relevant average consumer and the circumstances in which the goods or services are normally purchased.
The legal analysis should not be reduced to whether one person noticed a similarity. The question is whether the relevant use creates the required likelihood of confusion among the relevant public.
Does the sender have goodwill in Singapore?
For a passing-off claim, investigate whether the sender has established sufficient goodwill among customers in Singapore.
International recognition may be relevant, but the claimant must still establish the requirements applicable under Singapore law.
Possible Defences to Trademark Infringement
The availability of any defence will depend on the exact facts, evidence and form of use.
Prior continuous use
Section 28 of the Trade Marks Act provides a defence in certain circumstances where a person has continuously used an unregistered mark in the course of trade from a time before the earlier of:
- The registration date of the registered trademark; or
- The date on which the registered owner or its predecessor first used the mark.
Evidence of first use can therefore be critical.
Relevant records may include historical invoices, advertisements, packaging, website archives, purchase orders and dated correspondence.
Honest use of a name or place of business
The Act provides protection for certain uses of a person’s own name, the name of a place of business or the corresponding name of a predecessor in business, provided the use is in accordance with honest practices in industrial or commercial matters.
This is not an automatic defence simply because the disputed sign has been registered as a company or business name.
ACRA business-name registration is separate from trademark registration and does not itself provide exclusive trademark rights.
Descriptive use
A sign may be used to describe characteristics such as:
- Kind.
- Quality.
- Quantity.
- Intended purpose.
- Value.
- Geographical origin.
- Time of production.
- Other characteristics of goods or services.
The use must be honest and genuinely descriptive rather than an attempt to present the sign as a badge of commercial origin.
Use indicating intended purpose
Certain uses explaining the intended purpose of goods or services may be permitted, subject to the requirement of honest commercial practices.
For example, it may sometimes be necessary to refer to another party’s product to explain compatibility or intended use. The manner and prominence of the reference remain important.
Use of another registered trademark
Section 28 also addresses circumstances where the allegedly infringing sign is itself registered as a trademark. This defence is technical and should not be assumed to resolve every dispute, particularly where the later registration may be challenged or invalidated.
Fair comparative advertising and other permitted uses
The Act contains exceptions relating to:
- Fair use in comparative commercial advertising or promotion.
- Non-commercial use.
- News reporting or news commentary.
The context, presentation and fairness of the use will affect whether an exception applies.
Consent or authorisation
There may be no infringement where the trademark owner expressly or impliedly consented to the use.
Relevant evidence may include:
- Licence agreements.
- Distribution agreements.
- Emails.
- Previous approvals.
- Long-standing authorised arrangements.
- The trademark owner’s conduct.
The scope and duration of any authorisation should be checked carefully.
Genuine goods and parallel imports
Under Section 29 of the Trade Marks Act, a registered trademark is generally not infringed by use in relation to goods that have been put on the market in Singapore or elsewhere by the trademark owner or with its express or implied consent. This is commonly referred to as exhaustion of rights.
However, further issues may arise where:
- The goods are counterfeit rather than genuine.
- Their condition has been changed or impaired.
- The packaging has been altered.
- Serial numbers or labels have been removed.
- Warranties differ.
- Advertising falsely suggests that the seller is an authorised dealer.
- The goods were placed on the market without the owner’s consent.
Challenging the registration
Depending on the circumstances, the recipient may consider whether the sender’s trademark is vulnerable to invalidation or revocation.
Possible issues may include:
- Lack of distinctiveness.
- Descriptiveness.
- Conflict with an earlier right.
- Bad faith.
- Non-use.
- The mark becoming a common name in the trade.
- Expiry or cancellation.
- An excessively broad claim unsupported by actual use.
A challenge should only be pursued after reviewing the legal basis, evidence, likely costs and commercial objectives.
Can a Cease and Desist Letter Be a Groundless Threat?
Section 35 of the Trade Marks Act provides remedies in relation to certain groundless threats of trademark infringement proceedings.
Depending on the circumstances and statutory exceptions, an aggrieved party may seek:
- A declaration that the threats are unjustifiable.
- An injunction against the continuation of the threats.
- Damages for losses caused by the threats.
However, the scope of Section 35 is technical. Not every warning or reference to trademark rights constitutes an actionable threat. The Act expressly states that merely notifying another party that a trademark is registered, or that an application has been made, does not by itself constitute a threat. It also provides that an advocate and solicitor is not personally liable under the section for an act performed in a professional capacity on behalf of a client.
The groundless-threats issue should also be kept separate from professional conduct rules concerning criminal proceedings.
Where a lawyer’s client has an unsatisfied civil claim, the Singapore professional conduct rules state that the lawyer must not threaten criminal or disciplinary proceedings against the person merely in connection with that unsatisfied civil claim.
What Remedies May Be Available for Trademark Infringement?
Where infringement is established, the court may grant remedies including the following.
- Injunction: An injunction may prevent the infringer from continuing to use the mark. This can have a substantial commercial impact where the business has invested in its name, packaging, signage, domains and marketing materials.
- Erasure or removal of the offending sign: The court may order the removal or erasure of the disputed sign from goods, materials or articles where appropriate.
- Delivery up or disposal: Infringing goods, packaging, labels and materials may be ordered to be delivered up or disposed of.
- Damages: Damages are intended to compensate the trademark owner for loss caused by the infringement. The amount claimed in a demand letter is not automatically the amount a court would award. The claimant must establish the applicable legal and evidential basis.
- Account of profits: Instead of ordinary damages, the claimant may seek an account of profits, requiring the infringer to surrender profits attributable to the infringement. The calculation is not necessarily equivalent to the recipient’s total revenue.
- Statutory damages for counterfeit trademarks: Statutory damages are not automatically available in every trademark dispute. Section 31(5) specifically provides for an election of statutory damages where the infringement involves the use of a counterfeit trademark in relation to goods or services. The provision includes statutory limits, subject to its terms and proof of actual loss where applicable. Ordinary disputes involving allegedly similar branding should not automatically be treated as counterfeit trademark cases.
- Legal costs: The court may also make an order concerning the costs of the proceedings. The prospect of recovering costs does not necessarily mean that every dollar spent on legal fees will be recovered.
Speak to an Intellectual Property Lawyer in Singapore
At Netto & Magin, our Intellectual Property lawyers can review the Cease and Desist letter, trademark registration, evidence, proposed undertaking and monetary demands before advising you on an appropriate response.
Please contact us for a consultation before making payment, signing an undertaking or providing commercially sensitive information to the sender.
Legal Disclaimer
This article provides general information on Singapore law and does not constitute legal advice. The appropriate response to a Cease and Desist letter depends on the specific facts, documents and legal rights involved. You should obtain advice from a qualified Singapore lawyer before taking or refraining from any action.
Netto & Magin LLC
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