Singapore – “Virtual Shopping” comes to service marks?

A recent practice amendment by the Intellectual Property Office of the United Kingdom has acknowledged the presence of online virtual shopping malls.

In PAN 01/09, issued on 24 February 2009, the UK IPO announced inter alia that the description ‘virtual shopping malls’ will be accepted by the Registry in the specification of services in Class 35. This revision is largely non-controversial but it may result in significant impact in the virtual environment.

In the Singapore legal environment on trademarks, precedents (be it case law or items to be accepted within the specification of goods/services) from other common-law jurisdictions such as the UK, Hong Kong, Australia and OHIM (European Union Community Trade Mark (CTM)) are of persuasive effect at the Intellectual Property Office of Singapore (IPOS). As such, the amendment proposed in PAN 01/09 will arguably be taken as persuasive value, being from the UK.

With respect to the relevant amendment on virtual shopping, the UK Registry has signaled that the following terms will be acceptable in the Registry:

· The bringing together for the benefit of others, via the internet, of a variety of retailers and [other clearly defined related services] through a virtual shopping mall, enabling customers to conveniently view and purchase goods and make use of and purchase such services by means of telecommunications.

The acceptance of the “virtual shopping centres/malls” may have a bigger impact than intended.

A primary impact is of course the acceptance of online shopping centres/malls. In the era of current information technology era, the internet plays a huge part in disseminating information, and also acts as a form of advertisement and/or marketing at a fraction of the cost in traditional advertising and/or marketing through traditional mediums i.e. television, radio, bill boards etc, which can be exceedingly expensive.

The revision will cover the online portals of traditional shopping centres/malls. As department store owners and high street retailers increasingly have their own websites for virtual shopping a service mark covering such activity will be extremely helpful. In addition the specification would arguably also cover those purely online-based shopping websites such as ®. The specification will therefore now make it easier for online entrepreneurs to protect their services under a single registration without having to rely on filing multiple applications in numerous classes in numerous jurisdictions, which can result in significantly heavy expenses.

A further impact of the revision brings into context the existence of virtual worlds, of which Second Life is a prime example. Regardless of endless justification that such ‘worlds’ are in fact only games, but if playing a game can result in players earning well above the average GDP of some countries, then the observation here is that it should be regulated and marks/brands/names should be protected.

It is in the writer’s opinion that all mark owners should be afforded sole use of their marks in relation to their goods and/or services. The marks being the property of their owners should not be used and exploited for commercial gain by others. This amendment will arguably allow businesses (in terms of the operators of shopping centres/malls or related providers of such services) to also cover their services and protect their names in these “virtual worlds”. To-date, although there are concerns and debates amongst brand owners and academia on the implications of virtual worlds, there has not been any case of brand owners bringing a legal suit against people who infringe their products in the virtual environment. However, should more millionaires appear because of their ‘exploits’ in the virtual world, mark owners may choose to act sooner rather than later.

It also remains to be seen whether IPOS in Singapore will choose to allow such services to be registered, which will therefore extend the protection given to mark owners to virtual reality.