Singapore: Safeguarding trademarks on online platforms and the risk of groundless threats

In recent years, online marketplaces and social media platforms have seen an increased prevalence of counterfeiting, brand impersonation, and misuse of intellectual property (IP). While online platforms are developing increasingly sophisticated methods to suppress these practices, brand owners must continue to take proactive steps to protect their IP, particularly on platforms with considerable reach. However, a pertinent concern for brand owners seeking to enforce their rights online is whether such measures could amount to groundless threats of trademark infringement.

The cause of action for groundless threats of trademark infringement in Singapore is set out in Section 35(1) of the Trade Marks Act 1998 (TMA). It provides that where a party threatens another with proceedings for infringement of a registered trademark, an aggrieved party may bring an action for relief under Section 35(2) of the TMA, which encompasses:

• A declaration that the threats are unjustifiable;

• An injunction; or

• Damages for losses sustained.

The test for what amounts to a ‘threat’ is whether a reasonable person, with knowledge of all the relevant circumstances at the time the correspondence was made, would construe it as a threat (Triple D Trading Pte Ltd v Fanco Fan Marketing Pte Ltd, Singapore High Court, 2022). A threat can be implied, implicit, or veiled. This inquiry is therefore highly fact sensitive.

Significantly, Singapore courts have also emphasised that relief pursuant to a claim for groundless threats of infringement is ‘discretionary’ (Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading), Singapore Court of Appeal, 2016). Hence, even if the alleged infringer succeeds in proving its claim, it must still adduce evidence of loss that is not trivial or negligible if it is seeking damages.

The contours of an actionable groundless threat are further complicated when applied to online platforms. In this regard, the English case of The NOCO Company v Shenzhen Carku Technology Co. Ltd (Court of Appeal, Civil Division, 2023) (NOCO) is instructive. While NOCO concerned allegations of patent infringement, its approach to what constitutes a threat on online platforms provides useful guidance in assessing groundless threats of infringement under the TMA.

In NOCO, the appellant, a lithium-ion battery manufacturer, made complaints via Amazon’s Infringement Form alleging that the respondent’s product listings infringed its patent and sought their removal. The High Court of England and Wales held that the appellant’s patent was invalid for obviousness, and the appellant’s communications with Amazon therefore amounted to unjustified threats of patent infringement.

The Court of Appeal subsequently concluded that the express allegation of patent infringement, alongside the request to remove the listings, was “an implicit (or veiled) threat that if the request is not complied with infringement will be pursued through the courts”. It thus upheld the finding of unjustified threats of infringement.

In Singapore, the recent case of The Beauty Nation Pte Ltd v Herbs Health Ben Cao Kang Mu Pte Ltd and another (Singapore High Court, 2026) (Beauty Nation) demonstrates the importance of another aspect in a claim for groundless threats: proving loss where the threat has impacted the recipient’s online presence.

In Beauty Nation, the defendant retailers claimed the plaintiff’s demand letter asserting infringement of the plaintiff’s IP rights caused them to remove their product listings on Lazada, and sought damages for their losses in online revenue.

Although the High Court found no infringement and that the threats were actionable, relief to the defendants was denied. The court held that the defendants failed to establish that any loss arose from the letter, as the allegedly infringing products were successfully sold via one defendant’s physical store. The defendants had therefore “realise[d] the economic benefit” of the stock.

NOCO and Beauty Nation shed light on two pressing considerations facing brand owners when safeguarding their trademarks on online platforms today: what amounts to a groundless threat, and when does it produce discernible loss?

Although Singapore courts have not considered NOCO, UK cases have been cited favourably given similarities between the respective IP regimes and the common underlying rationale of groundless threats. Accordingly, a report containing an express allegation of infringement of a registered trademark in Singapore, coupled with a request to remove the allegedly infringing material, as in NOCO, may in context amount to a groundless threat under the TMA.

Brand owners should therefore carefully assess the reporting mechanism before lodging a report. Additionally, the following are some practical tips brand owners should take note of when enforcing their rights online.

As a first step, brand owners should ensure that the trademark they are relying on is valid and registered at the time of alleged infringement, which is a requirement to bring a claim of trademark infringement. Significantly, brand owners should note that even where infringement is found, the infringer may still obtain relief if the registered trademark is found to be “invalid or liable to be revoked in a relevant aspect” (Section 35(4), TMA). Brand owners should therefore ensure that their trademark rights are subsisting and enforceable.

To minimise legal exposure, brand owners should independently collect and retain evidence of infringement, including screenshots or copies of the infringing material, details of the alleged infringer, and the report as filed. If an infringement action is brought and succeeds, any counterclaim for groundless threats falls away.

Brand owners should also be aware that an action for groundless threats may be brought even in the absence of infringement proceedings (Dr Babor GmbH & Co KG v Sante De Beaute Pte Ltd, Singapore High Court, 2018). In such a case, the brand owner must prove that the relevant acts constitute infringement under the TMA. Cogent evidence of infringement would be critical in establishing a successful defence to the claim.

Finally, even though relief for groundless threats is discretionary, the potential for non-trivial or non-negligible loss is heightened on online platforms. Where many online product listings are taken down or a profile with a significant record of sales is removed because of the report, there are likely good grounds to argue for damages if a claim for groundless threats is made out. Brand owners should hence carefully consider losses that may be occasioned before filing the report.

The reporting mechanism on online platforms is meant to provide brand owners with an easy and accessible way to report infringement. However, the prospect of a claim for groundless threats looming over a brand owner can deter their use and the lawful enforcement of IP rights, which is undesirable amid a climate of increasing rights violations online. It is thus crucial that brand owners understand and protect themselves from such claims, so as not to be discouraged from enforcing their rights in online spaces when appropriate.