I FORMS OF INTELLECTUAL PROPERTY PROTECTION
The law of patents in Singapore is governed by the Patents Act (Cap. 221) (PA). For an invention to be patentable, it must be new, involve an inventive step and be capable of industrial application. Once granted, the term of a patent is 20 years from the date of filing, subject to the payment of renewal fees.
The law of copyright in Singapore is governed by the Copyright Act (Cap. 63) (CA). There is no system of registration for copyright protection. Copyright protection arises automatically once an author creates and expresses his original work in a tangible form.
The term of protection depends on the type of copyright work concerned. For example, for literary, dramatic, musical and artistic works, the term of copyright protection is 70 years from the end of the year in which the author died. For published editions of literary, dramatic, musical or artistic works (layout), the term is 25 years from the end of the year in which the edition was first published. For sound recordings and films, the term is 70 years from the end of the year in which the sound recording or film was first published.
Trademarks are protected under the Trade Marks Act (Cap. 332) (TMA) and at common law. It is possible to protect non-conventional trademarks such as sound, three-dimensional shape, colour, movement, aspect of packaging and hologram marks. Registration lasts indefinitely as long as it is renewed every 10 years.
Unregistered trademarks are protected under the common law action of passing off.
iv Registered designs
The law of registered designs is governed by the Registered Designs Act (Cap. 266) (RDA). To qualify for registration, a design must be new and must be applied onto an article or non-physical product. A registered design is protected for an initial period of five years from the date of filing the application. Thereafter, the registration may be renewed every five years up to a maximum of 15 years, subject to the payment of renewal fees.
v International treaties
Singapore has acceded to various international IP treaties, including the Agreement on Trade-Related Intellectual Property Rights (TRIPS), the Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literary and Artistic Works, WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty.
After TRIPS, the US–Singapore Free Trade Agreement (USSFTA) is the international document that has made the greatest impact on Singapore's IP laws. The USSFTA came into force in January 2004. Some amendments made to Singapore's IP legislation to comply with the provisions of the USSFTA include:
- extension of patent term where there is unreasonable delay in the grant of the patent or in getting marketing approval for the patented pharmaceutical product; and
- restrictions on parallel importation of pharmaceutical products;
- registration of non-visual marks such as sound and smell marks; and
- protection of well-known marks; and
- extension of the term of copyright protection; and
- more stringent enforcement measures against infringement
Ii RECENT DEVELOPMENTS
In 2017, the PA and Rules were amended and key features of the amendments include the following.
Broadening of grace period
Before the amendments, public disclosures were only disregarded under very narrow circumstances, for instance when the disclosure was in breach of confidence. Public disclosures outside these narrow circumstances would lead to the invention being ineligible for patent protection. The amendments allow any public disclosure originating from the inventor to be disregarded if it occurs within 12 months before the patent application.
Changes to supplementary examination
Currently, patent applicants can submit an examination report issued by a foreign patent office for the same invention and IPOS then conducts a simplified examination that does not cover key patentability requirements. Under this 'foreign route', granted patents may not fully satisfy Singapore's patentability standards.
The foreign route will no longer be available for patent applications filed on or after 1 January 2020. All patent applications must be fully examined by IPOS, which ensures that all granted patents fully satisfy Singapore's patentability criteria.
Sunseap Group Pte Ltd and others v. Sun Electric Pte Ltd2
The respondent patent proprietor alleged that the appellants had infringed eight out of the 12 claims in its patent (the other four claims being the 'unasserted claims'). The appellants contended that all the patent's claims were invalid. The appellants sought a declaration of invalidity and an order that the patent be revoked.
The High Court Assistant Registrar3 held that the validity of the unasserted claims could not be put in issue by way of defence in infringement proceedings pursuant to Section 82(1)(a) PA. However, the Assistant Registrar also held that revocation proceedings could be commenced in the High Court by way of counterclaim. The respondent patent proprietor appealed against this second finding.
The High Court held that4 it did not have original jurisdiction over an application to revoke a patent. Accordingly, the High Court allowed the respondent patent proprietor's appeal and ordered that the defence and counterclaim be amended so as to remove any references to revocation.
On appeal, the Court of Appeal disagreed with the High Court's decision and held that in cases involving applications for revocation by way of counterclaim in infringement proceedings, the High Court has original jurisdiction but only the validity of the asserted claims for infringement may be put in issue as part of the counterclaim for invalidity. In cases involving applications for revocation brought independently of infringement proceedings, the Court of Appeal held that the Registrar of Patents, not the High Court, has exclusive jurisdiction over this category of cases.
Lee Tat Cheng v. Maka GPS Technologies Pte Ltd5
The appellant was the proprietor of a patent for an in-vehicle camera, and alleged that the respondent had infringed the patent by offering three models of in-vehicle cameras for sale. The respondent claimed that the appellant had made groundless threats of infringement proceedings.
The High Court held that6 the respondent, being the recipient of two cease-and-desist letters from the appellant demanding fees and damages, was a 'person aggrieved by the threats' as set out in Section 77(1) PA. Pursuant to Section 77(2) PA, the appellant's threats of infringement proceedings were not justified as the respondent's acts did not constitute an infringement of the patent. Therefore, a grant of relief for the respondent under Section 77 PA for the appellant's threats had to be considered. The High Court took the view that under Section 77 PA, it did not have discretion as to whether to award relief. Once a claimant had established all the requisite elements under Section 77(1) PA, and the threats were shown to be unjustified, the claimant would be entitled to be granted a form of relief.
The Court of Appeal disagreed with the High Court's decision and held that the grant of relief under Section 77 PA is not mandatory even if a claim for groundless threats had been made out. The grant of relief remains at the discretion of the court. The claimant bears the onus of satisfying the court that he or she is 'aggrieved' by the defendant's threats before he or she will be entitled to relief. A claimant would not be able to satisfy the court that he or she is 'aggrieved' if he or she is unable to satisfy the court that the circumstances are such that it would be appropriate to grant him or her at least one of the forms of relief set out in Section 77(3) PA. If there is no evidence that the claimant has suffered any loss as a result of the defendant's threats; or no evidence that it is appropriate for the court to intervene by granting a declaration (to the effect that the threats are unjustified) or an injunction (to restrain the defendant from continuing the threats), then the claimant cannot, in the first place, be said to have been 'aggrieved' by the defendant's threats even though they were found to be groundless.
Rohm and Haas Electronic Materials CMP Holdings, Inc (formerly known as Rodel Holdings, Inc) v. NexPlanar Corp and another7
The patent in this suit was a pad used to polish the surface of semiconductor wafers. The plaintiff sued the defendants for patent infringement, and the defendants alleged, inter alia, that the patent was invalid because it was not novel as it was anticipated by the prior use and sale of the plaintiff's pads to Intel Corporation before the patent's priority date. The plaintiff argued that the prior sale and disposal of the pads to Intel were made under obligations of confidentiality (both expressed and implied).
In considering the question of whether Intel owed the plaintiff an express obligation of confidence, the High Court held that it was unable to recognise the existence of any express confidentiality undertaking or agreement providing for an obligation of confidence, on the basis of the available evidence. While the plaintiff claimed that three non-disclosure agreements existed with Intel, they were only able to produce a copy of one of them, which post-dated most of the sales of the pads and also did not refer to the pads that had already been sold.
However, the High Court found that Intel owed an implied obligation of confidence as information of a commercial or industrial value was given on a business-like basis with a common object and project in mind. A reasonable person standing in Intel's shoes would have realised that the information was given in confidence, considering that the pads given to Intel were experimental and stored in secure research facilities. Further, presentations about the pads were only made at a conference that was expressly stated to be 'confidential'. The plaintiff also distributed a brochure before the priority date of the patent, but the brochure contained only broad and general information about the pads. It was therefore held that these prior disclosures were not enabling.
On 17 January 2019, the Ministry of Law (MinLaw) and IPOS issued the Singapore Copyright Review Report (Report), which outlines proposed changes to the CA with the aim of updating Singapore's copyright regime to better support creators and the use and enjoyment of creative works in the digital age.
Key proposed changes to the CA include the following.
New civil and criminal liability provisions relating to streaming of audio-visual content
Civil and criminal liability will be imposed on people who wilfully make, import for sale, commercially distribute or sell a product (which can be a hardware device or a software application) that can be used to access audio-visual content from an unauthorised source. Additionally, it must be designed or made primarily for providing access to such content; advertised as providing access to such content; or sold as providing access to such content, where the retailer sells a generic device with the understanding that 'add-on' services such as the provision of website links, instructions or installation of subscription services will subsequently be provided.
Civil and criminal liability will also be imposed on service providers who do not sell devices, but instead, for a fee, either sell software, or otherwise enable devices to access content from unauthorised sources (e.g., on devices that a consumer already owns, installing and setting up applications that enable access to content from such sources).
Attributing creators whenever their works are used
A new right of attribution will be imposed for authors of literary, dramatic, musical and artistic works in relation to those works and adaptations of them, and for performers for performances. The right, which will be personal to the author or performer (and not transferable), will not apply to specified works and performances, for example a computer program or a work created in the course of employment. The right will last for the duration of copyright or protection period of a performance (as the case may be). Defences and exceptions to the right of attribution have also been proposed.
Granting creators default ownership of certain commissioned works
Default ownership of commissioned photographs, portraits, engravings, sound recordings and cinematograph films will be with the creator instead of the commissioning party.
For the general employment situation, employers will continue to have default copyright ownership of literary, dramatic, musical and artistic works. Moreover, employers will have default ownership of the rights in other subject matter (such as sound recordings and cinematograph films) created by employees. The current default ownership rules would be retained for journalist–employees.
Facilitating uses of works for text and data mining
Copying of copyrighted materials will be allowed for the purpose of data analysis. Additional safeguards and conditions will have to be met for the exception to apply, for example the user must have lawful access to the works that are copied and the user cannot distribute the works to those without lawful access to the works.
Strengthening the general fair use exception
The CA currently provides for an open-ended fair use exception, which permits uses of copyrighted works without permission from the copyright owner, as long as the courts deem the specific use as being fair. The CA lists five non-exhaustive factors to take into account when determining whether a particular use is fair or not: (1) the purpose and character of the use, including whether the use is commercial in nature or for non-profit educational purposes; (2) the nature of the creative work; (3) the amount of the creative work that has been copied, or whether the part that is copied is substantial to the whole of the creative work; (4) the effect of the use on the potential market for, or value of, the creative work; and (5) the possibility of obtaining the creative work within a reasonable time at an ordinary commercial price.
The amendments will remove the fifth factor because it may not be relevant in all cases, will describe the open-ended exception as fair use, and will clarify how the fair use exception operates vis-à-vis the other exceptions, including the specific fair dealing exceptions.
Facilitating educational uses by non-profit schools
A new purpose-based exception for educational uses will apply to any online work that is accessible without the need for payment at the time of access. The use of the online work must be in the course of any activity that has an educational purpose (such as giving or receiving instruction) and limited to reproducing, adapting or communicating it. The persons who can avail themselves of the exception will be limited to students, teachers and government officers who perform curriculum or content development functions.
Protecting certain exceptions from being restricted by contracts
A contractual term which attempts to override an exception will not be allowed if it is unreasonable. The current list of exceptions that cannot be restricted by contracts will be expanded to include exceptions for reproduction for purposes of judicial proceedings or professional advice, exceptions relating to galleries, libraries, archives and museums, and the new exception for data analysis.
Enhancing collective rights management
A new class licensing scheme for collective rights management organisations will be administered by IPOS. Any entity that carries out collective licensing activities in Singapore will be automatically subject to and have to comply with all licence conditions.
Setting an expiry date for the protection of unpublished works
The amendments will limit the duration of copyright protection for unpublished works. The draft legislative bill has not yet been made available to the public for comments.
Disney Enterprises, Inc and others v. M1 Ltd and others8
The plaintiffs were the copyright owners of numerous films. The defendants were network service providers. The plaintiffs applied for blocking orders pursuant to Section 193DDA CA, which would require the defendants to block their subscribers' access to online locations that infringe or facilitate the infringement of copyright. The online locations were websites that were accessible via fully qualified domain names (FQDNs). Two types of orders were sought: (1) an order requiring the defendants to disable their subscribers' access to the FQDNs listed in the schedule to the application that provided access to 53 websites (the main injunction); and (2) an order requiring the defendants, upon notification from the plaintiffs, to block additional FQDNs not listed in the schedule that were subsequently discovered to provide access to the same 53 websites (the dynamic injunction).
The High Court granted the application. The court had jurisdiction to grant the dynamic injunction as Section 193DDA was worded broadly and did not expressly preclude the granting of a dynamic injunction. The acts that the defendants were required to undertake pursuant to the dynamic injunction were reasonable since the defendants were not required to block additional websites that had not been included in the main injunction and only required the defendants to block new means of access to the same websites. The dynamic injunction was necessary to ensure that the main injunction operated effectively owing to the ease and speed at which circumventive measures could be taken by website operators to evade the main injunction. Under the dynamic injunction, the plaintiffs would have to provide evidence that the new FQDNs to be blocked provided access to the same websites that were the subject of the main injunction, and the defendants would not be required to block the new FQDNs if the grounds for disabling access provided by the plaintiffs were insufficient.
Nanofilm Technologies International Pte Ltd v. Semivac International Pte Ltd and others9
The first defendant was a business that was similar to the plaintiff's business. The second defendant was an employee of the plaintiff and was subject to an employment contract, under which he was not to disclose any confidential information relating to the plaintiff or to engage himself in any business other than the plaintiff's, and an agreement of invention assignment and confidentiality, which provided that any work created by him that related to the plaintiff's business would belong to the plaintiff. The plaintiff discovered a set of slides bearing the first defendant's name, which contained several alleged reproductions of the plaintiff's copyrighted works. The plaintiff also discovered that the second defendant had created technical drawings, some of which were based off the plaintiff's technical drawings. The plaintiff sued for copyright infringement in relation to the slides and the drawings.
The High Court held that the rightful copyright owner of the slides and drawings was the plaintiff, under Sections 130(1B), 30(5), and 30(6) CA. Whether a work was created by an employee in pursuance of the terms of his employment was a question of fact. The mere fact that the employee used the employer's equipment to create the work did not mean that the work was created in pursuance of the terms of his employment. The Court held that the drawings were made in the course of the second defendant's employment with the plaintiff, as he was a manager of a high position in the plaintiff company and was given special access to the plaintiff's database of technical drawings. In any event, even if the drawings were not made in the course of the second defendant's employment with the plaintiff, the plaintiff was still entitled to the copyright in the drawings as a consequence of the agreement.
The Court found that the copyright in the slides had been infringed as they were reproduced by the first defendant in a nearly identical manner, and the additional elements or points of graphic detailing in the slides did not make a difference to copyright infringement. The question was whether a substantial part of a copyrighted work had been reproduced, not whether the part taken formed a substantial part of the infringing reproduction. Copyright infringement was also found in all but two of the drawings (which lacked originality and were not protected by copyright) as there was evidence of at least two-dimensional reproduction of the drawings in Singapore for quotation purposes. The first defendant failed to invoke the useful article defence under Section 70(1) CA as it could not show that the drawings had been industrially applied by the making of more than 50 reproductions in three-dimensions.
Burberry Ltd v. Megastar Shipping Pte Ltd and another appeal10
The respondent was a freight forwarder company providing transhipment services in Singapore. An Indonesian company hired the respondent to arrange for the transhipment of two sealed containers originating from China to Batam. During the transhipment process, Singapore Customs found and seized more than 15,000 counterfeit goods. The appellant trademark proprietors commenced proceedings against the respondent for trademark infringement under Section 27 TMA.
The High Court in this case (sub nom Louis Vuitton Malletier v. Megastar Shipping Pte Ltd (PT Alvenindo Sukses Ekspress, third party) and other suits11) was of the view that for the purposes of the TMA, the importer or exporter of the goods was either the shipper in China or the ultimate consignee of the cargo in Batam. The mere fact that the respondent was named as the consignee in documents did not mean that it was an importer or exporter for the purposes of the TMA, and the respondent was not liable for trademark infringement.
The Court of Appeal agreed with the High Court decision and dismissed the appeal. Mere intention to export is insufficient to find liability under Section 27 TMA, although where there are accompanying actions that are clearly directed at fulfilling the intention to export or where there is clear evidence that export would definitely take place (for instance, the alleged exporter is under a contractual obligation to do so), a trademark proprietor could apply for an injunction against the alleged exporter. The evidence must be clear that the export is imminent or would definitely take place. To establish liability, the alleged importer or exporter must have intended to do the act constituting the infringing use with knowledge or reason to believe that there was a sign present on the goods in issue. On the facts of the case, there was no evidence that the respondent knew or had reason to believe that there were signs on the goods in issue. Thus, the respondent did not 'use' the signs and was therefore not liable for infringement of the trademarks.
Courts (Singapore) Pte Ltd v. Big Box Corporation Pte Ltd12
Big Box Corporation Pte Ltd (the proprietor) is the proprietor of the registered trademark 'BIG BOX' in class 35. Courts (Singapore) Pte Ltd (the applicant) opened a retail warehouse store and placed newspaper advertisements that described the store as 'COURTS BIG BOX MEGASTORE'. The proprietor sent the applicant a cease-and-desist letter, alleging infringement of the trademark. The applicant filed for a declaration of invalidity, but the Trade Marks Registry refused the application. The applicant appealed against the Registry's decision.
The High Court dismissed the appeal. The grounds of invalidation were focused on the assertion that the term BIG BOX should be available for use in Singapore in relation to retail establishments, because BIG BOX generally referred to a physically large retail establishment, usually part of a chain. The High Court agreed that the trademark lacked distinctiveness, as the applicant's argument relied on dictionary definitions of BIG BOX from American and North American sources instead of Singaporean ones, and was not sufficient to establish that some traders and consumers in Singapore would have understood or been aware of the definitions alleged and relied on by the applicant at the application date. Further, the 'relevant public' in Singapore was not solely comprised of a few large multinational retail chains, but included retailers, warehouse businesses in general, and the average consumer in Singapore. The applicant had failed to establish, on a balance of probabilities, that the words BIG BOX were customary in the current language or in established practices of the trade as at the application date. Hence, the trademark was not descriptive and was inherently distinctive as an indication of trade origin at the application date.
iv Registered designs
Amendments to the RDA
The RDA was amended in 2017. The amendments are not a significant overhaul of Singapore's registered designs regime, but enhance the existing registered designs regime to better support Singapore's economic and design initiatives. The key changes include the following.
Broader scope of design protection
The new definition of 'design' includes virtual or projected designs, the design of artisanal or handcrafted items and colours as a design feature. The new definition is flexible enough to permit dynamic designs to be registered as it does not restrict the features of shape, configuration, colours, pattern or ornament that are applied to only static features.
Designer of a design will be the owner by default
The designer is the owner by default instead of the person who commissioned the designer to create the design, but both designer and commissioner are free to contract otherwise.
Broadening and lengthening of grace period provision
The grace period within which designers must file a design application after first disclosure of their design has been lengthened from six months to 12 months.
Allowing filing of multiple designs within a single application
Subject to certain conditions, multiple designs may be filed in the same design application, and every such application will be treated as if a separate application had been filed for the registration of each of those designs.
Facilitating the correction of non-compliance of formal requirements in application
An applicant who fails to comply with certain formal requirements in relation to an earlier application for registration of a design may correct the non-compliance by filing one or more new applications. Each of the subsequent applications will be treated as filed on the date of filing of the earlier application if certain requirements are satisfied.
Graphical user interfaces
IPOS has issued a Practice Direction, which came into effect on 20 June 2018, for the registration of graphical user interfaces (GUIs) as designs. The Practice Direction states that applicants can seek the registration of GUIs as designs under the RDA, according to the following guidelines:
- Applicants must indicate the article or non-physical product that the GUI is applied to.
- Applicants must file a dynamic GUI as a series of static representations of the design, where each representation shows a freeze-frame of the GUI in action.
- Each application should contain a sufficient number of different views to completely disclose the appearance of the claimed design. A total of up to 40 different views of the same GUI may be filed as representations of the design which protection is being sought for, although the Registry may, on written request, allow for more than 40 views to be filed.
v Geographical indications
The Geographical Indications Act 2014 (GIA) will come into operation on 1 April 2019, except for the following sections:
- Sections 4(6) to (9) (application to any use of a registered geographical indication which identifies any agricultural product or foodstuff (other than a wine or a spirit) belonging to a category of goods listed in the Schedule, in relation to any goods which are of the same category but which did not originate in the place indicated by the registered geographical indication);
- Section 15 (certain uses of registered geographical indications excepted);
- Section 16 (exceptions for prior users of registered geographical indications and trademarks);
- Sections 55 to 74 (assistance by border authorities);
- Section 75 (registration to be prima facie evidence); and
- Section 76 (certificate of validity of contested registration).
The GIA seeks to repeal and re-enact with amendments the Geographical Indications Act (Cap 117B, 1999 Rev Ed):
- to provide statutory protection for producers and traders of goods identified by geographical indications, at standards not lower than those set out in TRIPS;
- to introduce certain other measures relating to geographical indications which Singapore will be required to implement under the proposed Free Trade Agreement between the European Union and the Republic of Singapore (EUSFTA); and
- to make related amendments to the Intellectual Property Office of Singapore Act and the Trade Marks Act.
III OBTAINING PROTECTION
The national application should be filed with IPOS. It is possible to file a provisional application, where claims are not required to be furnished at the time of filing. However, the claims should be furnished generally within 12 months to complete the application as failure to do so would result in the application being treated as abandoned. The application will be published in the Patents Journal 18 months after the declared priority date or the date of filing.
Once the formal filing requirements have been met, the applicant may proceed to the search and examination process. There are three options for the search and examination:
- All-local approach. An applicant may request to undergo either a search-then-examination process or a combined search-and-examination process.
- All-foreign approach. The applicant furnishes the final search and examination results of a corresponding or corresponding international application.
- Combination approach. The applicant files an examination request relying on the search results of a corresponding or corresponding international application.
After completion of the search and examination process, the applicant may request issuance of the certificate of grant.
The time for processing a patent application typically ranges from two to four years, depending on factors such as complexity of the invention, amendments to the application, and the search and the examination processes.
An applicant, who is a resident or national of Singapore, may file an international application under the PCT directly with IPOS or the International Bureau (IB) at WIPO. Any person resident in Singapore is required to obtain written authorisation from the Registrar of Patents for an invention, before he files or causes to be filed outside Singapore an application for a patent for that invention. Failure to do so is a criminal office.
During the international phase, the application will be assessed and an international preliminary report on patentability will be issued indicating whether the invention meets the patentability criteria. The application will enter national phase at the 30th month from the date of filing of the application. This is extendible for up to 18 months, subject to the payment of extension fees. Upon receiving the request for national phase entry, if all national phase requirements are complied with, IPOS will issue a date of filing notification and the application may proceed to the search and examination process. After completion of the search and examination process, the applicant may then request for issuance of the certificate of grant.
A national application is filed with IPOS. If no objections to the application are raised, the application will be published in the online Trade Marks Journal. Within two months of the date of publication, any interested party who wishes to oppose its registration may initiate opposition proceedings at IPOS. If there is no opposition, or if the outcome of the opposition hearing is in favour of the trademark applicant, a certificate of registration will be issued.
For applications that do not face any objections, the total processing time from the filing date to registration of the mark is about nine months.
Madrid Protocol application
To file an international application in Singapore, the applicant must be a resident or national of Singapore, or have a real and effective industrial or commercial establishment in Singapore. The trademark will need to be applied for or registered in Singapore before the international application is filed, and the goods or services in the international application must be covered by the Singapore mark.
If the international application conforms to the applicable requirements, the IB will publish the mark in the Gazette. The IB will also notify IPOS of the designation, and IPOS will then examine the application, similar to a national application.
iii Registered designs
A national application is filed with IPOS. If all formalities are met, the design will be registered and published in the Designs Journal upon registration. Applicants may request to defer the publication of the design for up to 18 months from the date of filing of the application.
Generally it takes about four months from the date of filing the application to the successful registration of a design, assuming there are no deficiencies that must be corrected.
Hague System application
An international application may be filed with IPOS or directly with the IB. If the formal requirements are met, the IB will publish the relevant details and a reproduction of the design in the International Designs Bulletin. Upon publication of the Bulletin, IPOS will identify the international registrations in which Singapore has been designated in order to examine them. Any refusal of protection will be notified to the IB within six months from the date of publication. If no refusal is notified within the six months limit, the international registration will enjoy protection in Singapore.
IV ENFORCEMENT OF RIGHTS
All courts in Singapore have jurisdiction to adjudicate infringements of copyright and passing off. Whether the proceedings are to be commenced in the state courts or the High Court will depend on the value of the claim as well as the stipulation of statute. Civil suits under the RDA and TMA are to be commenced in the High Court. Patent infringement proceedings are to be brought before the High Court. The PA provides that the court or the Registrar may make a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent in proceedings between the person doing or proposing to do the act and the proprietor of the patent, and a declaration made by the Registrar shall have the same effect as a declaration made in court.
The state courts have jurisdiction to hear and determine criminal offences for infringement under the CA and TMA. There are no criminal offences for infringement under the RDA or PA.
i Requirements for jurisdiction and venue
In a cross-border dispute, for the Singapore court to exercise its jurisdiction over a matter, there must be a legal connection between the case or the defendant and Singapore, or the Singapore court must be satisfied that it is the most appropriate forum for the dispute.
The Singapore court has jurisdiction over a defendant who is served with originating process when he is present in Singapore, or when he has agreed to submit to the jurisdiction of Singapore in an agreement with the plaintiff and has also agreed to a means for service within Singapore and the service is effected accordingly. The Singapore court also has jurisdiction if in the course of legal proceedings, the defendant takes a step that unequivocally demonstrates that he has accepted the court's jurisdiction; the defendant in this case has submitted to the jurisdiction of the court.
ii Obtaining relevant evidence of infringement and discovery
The court may order any party to a cause or matter to give discovery by making and serving on any other party a list of the documents that are or have been in his or her possession, custody or power, unless the court is satisfied that discovery is not necessary, or not necessary at that stage of the cause or matter. The documents that a party to a cause or matter may be ordered to discover are the documents on which the party relies or will rely; and the documents that could adversely affect his or her own case, adversely affect the other party's case or support the other party's case.
Pre-action discovery is available but permitted only in limited circumstances (i.e., when the potential plaintiff does not have sufficient facts to commence proceedings). Other methods of obtaining evidence from an adverse party or from third parties include pre-action interrogatories.
iii Trial decision-maker
Singapore has established a specialist IP court within the High Court with four designated IP judges, each with substantial expertise and experience in handling IP cases. However, IP cases that involve broader commercial disputes may still be heard by other non-specialist judges.
iv Structure of the trial
Infringement proceedings are started with the prospective plaintiff filing a writ of summons and serving the endorsed writ on the defendant. The plaintiff will also have to file its statement of claim. The defendant will then have to file its defence, and any counterclaim against the plaintiff. Thereafter, the process for discovery and exchange of affidavit evidence will follow. When that is completed, parties and the courts may then set a trial date, where the matter will be substantively presented by the parties and examined in court.
In patent litigation proceedings, it is common for experts to be appointed by the court or called by parties to report on any question of fact or opinion where specialised skill or knowledge is required, particularly in assessing issues that must be read through the eyes of 'a person skilled in the art'; for example disputes over novelty, inventive step and enabling disclosure. In trademark infringement and passing off cases, expert evidence adduced often takes the form of a survey and it has become almost standard practice to have such surveys conducted. In copyright infringement cases, it is not permissible to adduce expert evidence on whether the defendant's work is a copy of a substantial part of the plaintiff's, as that is a question for the court. However, in copyright cases involving software, expert testimony on the similarities and differences can be helpful in establishing objective similarity between the defendant's work and a substantial part of the plaintiff's work.
The registered owner has the exclusive right to prevent any person from doing any of the following things in Singapore in relation to a patented invention:
- if the invention is a product, making, disposing of, offering to dispose of, using or importing the product or keeping the product whether for disposal or otherwise;
- if the invention is a process, using the process or offering it for use in Singapore when the person knows, or it is obvious to a reasonable person in the circumstances, that its use without the owner's consent would be an infringement of the patent; and
- if the invention is a process, disposing of, offering to dispose of, using or importing any product obtained directly by means of the process or keeping the product whether for disposal or otherwise.
Whether these rights have been infringed depends on a comparison of the alleged infringing product or process with the patent claims.
The registered proprietor has the exclusive right to use the trademark in relation to the goods or services for which the trademark is registered. Infringement occurs when there is unauthorised use in the course of trade of an identical or similar mark in relation to identical or similar goods or services, where such use is likely to confuse the public.
Where the registered trademark is well known in Singapore, the scope of protection is wider. It is infringement when the unauthorised use is made in relation to goods or services which are not similar to those for which the well known trademark is registered, where such use is likely to confuse the public. A registered trademark is deemed to be well known in Singapore if it is well known to a relevant sector of the public in Singapore. Where the registered trademark is well known to the public at large in Singapore, its proprietor is entitled to restrain by injunction any use in relation to identical, similar or dissimilar goods or services that would cause dilution in an unfair manner, or take unfair advantage, of the distinctive character of the mark, regardless of whether there is any likelihood of confusion.
The copyright owner has the exclusive right to do, or to authorise others to do, certain acts in relation to a work, or subject matter like sound recordings and films, such as:
- to reproduce the work in a material form;
- to publish the work if the work is unpublished;
- to perform the work in public;
- to make an adaptation of the work or to do any of the above in relation to an adaptation;
- to communicate the work to the public;
- to make a copy of the sound recording or film;
- to enter into a commercial rental arrangement in respect of the recording; and
- to cause the film, insofar as it consists of visual images, to be seen in public.
Infringement occurs where a person does any of the above acts without the copyright owner's consent. The owner's rights are also infringed by acts such as:
- importing, selling, offering for sale and exhibiting in public of any article where the infringer knows, or ought reasonably to know, that the article was made without the copyright owner's consent;
- falsely attributing the authorship of a work or the identity of the performer of a performance; and
- falsely removing or altering the rights management information electronically attached to a work.
Registered design infringement
The registered owner has the exclusive rights to make or import for the purposes of trade articles, in respect of which his design is registered, which embody the registered design (or one that is substantially the same). Infringement when a person does any of the above exclusive rights without authorisation. There can also be infringement in respect of certain preparatory acts, such as making something that enables the infringing article to be made.
Common defences to infringement include that:
- it is an act done privately and for non-commercial purposes;
- it is an act done for experimental purposes relating to the subject-matter of the invention; and
- it is an act that consists of the extemporaneous preparation of a medicine for a person in accordance with a medical or dental prescription or consists of dealing with such medicine in permitted acts that do not constitute infringement.
A key part to any defence against a claim of patent infringement is the defendant's right to challenge the validity of the patent being asserted. The validity of a patent may be challenged by, inter alia, asserting that the invention had been disclosed to the public by any party through commercial sale and use, display at trade fairs and conventions, or by publication of the details of the invention provided such acts took place prior to the filing date of the patent application.
Common defences to infringement include that:
- the defendant's mark is not identical or similar to the plaintiff's trademark or is used on goods or services that are not similar to the goods or services for which the plaintiff's trademark is registered;
- it is an act that does not amount to infringement, on one or more of the following grounds:
- it is the use by the defendant of his or her name or the name of his or her place of business if such use is in accordance with honest practices;
- the use is descriptive of the characteristics or intended purpose of the goods or services;
- the use first began before the earlier of the registration of the mark or the first use by the registered owner of the mark and has been continuously used since then;
- it is the use of the defendant's registered mark;
- the use constitutes fair use in comparative commercial advertising or promotion; or
- the use is in relation to parallel imports.
- the registration of the plaintiff's trademark should be revoked on certain grounds (e.g., the mark has not been used in relation to the goods or services for which it has been registered for a continuous period of five years or that in consequence of inactivity it has become the common name in the trade for the product or service for which it is registered); or
- the registration of the plaintiff's trademark should be declared invalid (e.g., the registration was obtained by misrepresentation or fraud).
Common defences to infringement include that:
- copyright does not subsist in the work;
- the plaintiff is not the owner of the copyright;
- the defendant has not infringed any copyright either because the defendant's work is not sufficiently similar to the plaintiff's, or because he has not in fact copied the plaintiff's work, or because he had a licence (express or implied) to do the acts complained of;
- in the case of alleged infringement by dealing in infringing copies, the defendant did not know or had no reason to believe that the articles dealt in were infringing copies (this, however, only goes to the defendant's liability for damages); and
- the acts complained of constitute 'fair dealing' under the CA.
Common defences to infringement include:
- acts done for a private non-commercial purpose;
- acts done for the purpose of evaluation, analysis, research or teaching; and
- acts done in relation to genuine articles, that is, those marketed in and outside of Singapore, by the registered owner or with his or her consent (conditional or otherwise).
vii Time to first-level decision
The trial for infringement actions is likely to be concluded within 18 months of the date the action is commenced (filing of the writ of summons).
The range of remedies that the court can order in infringement proceedings includes an injunction, either damages or an account of profits, an order for delivery up or disposal of infringing articles, statutory damages or declaration as to a party's rights. Interim remedies are also available, such as interim injunctions, interim detention or preservation of property and interim payments.
ix Appellate review
For proceedings before the Registrar, an appeal may be filed with a judge of the High Court. For proceedings before a Registrar of the High Court, an appeal may be filed with a judge of the High Court in chambers. For proceedings begun in or appealed to the High Court, an appeal may be filed with the Court of Appeal.
x Alternatives to litigation
Mediation and arbitration are common methods of alternative dispute resolution. The WIPO Arbitration and Mediation Centre has an office in Singapore and it is a neutral, international and non-profit organisation that offers alternative dispute resolution options to enable private parties to efficiently settle their domestic or cross-border IP disputes. The Singapore International Arbitration Centre (SIAC) is an independent, not-for-profit organisation that provides facilities for arbitration, and has a specialised IP Panel of arbitrators to hear IP disputes. The SIAC Rules are efficient, cost-effective and flexible, and incorporate features from civil and common law legal systems.
V TRENDS AND OUTLOOK
The government continues to take active steps to establish Singapore as an IP hub both regionally and globally. Below are some of the recent developments within the past year.
In April 2018, IPOS launched the FinTech Fast Track Initiative to provide expedited patent application-to-grant process for financial technology (fintech) inventions, to support the growth of Singapore's fintech sector and help businesses bring their fintech innovations to the market more rapidly. Under this initiative, fintech patents can be expected to be granted in as little as six months, compared to at least two years for normal applications. The first patent to be granted under the FinTech Fast Track Initiative was in December 2018 and took only seven months from application to grant. The initiative will continue until April 2020.
In September 2018, IP ValueLab, IPOS's enterprise engagement arm, signed a memorandum of understanding (MOU) with the Sino-Singapore Guangzhou Knowledge City Administrative Committee and Sino-Singapore Guangzhou Knowledge City Investment and Development Co Ltd to set up the International Intellectual Property Innovation Service Centre in the Sino-Singapore Guangzhou Knowledge City. The MOU will closely link the innovation ecosystems of both countries to support the translation of ideas and IP into products and services for the region and globally. The centre will provide a platform to connect IP expertise within the government and private sectors from both countries, tap into Singapore's experience in building IP skills to set up an IP college in Guangzhou, and enable China's enterprises to gain access to ASEAN and other key overseas markets through Singapore.
The Intellectual Property (Border Enforcement) Act 2018 was enacted to amend the CA, TMA, RDA and GIA to enhance the border enforcement measures for IP rights and to implement Singapore's obligations under the proposed Free Trade Agreement between the European Union and the Republic of Singapore (EUSFTA) concerning those measures. The Act partially came into force on 10 October 2018 to amend the CA and TMA in relation to new powers for Singapore Customs to obtain and provide information relating to seized goods. The Intellectual Property (Border Enforcement) Bill was passed in Parliament on 9 July 2018 and the changes were slated to come into force in three phases.
Upon passing of the Bill (Phase 1): new powers in the CA and TMA for Singapore Customs to obtain and provide information relating to seized goods will be implemented.
Upon entry into force of the EUSFTA (Phase 2): enhanced border enforcement measures in the CA and TMA, and the standardised terms and provisions relating to border enforcement in the CA and TMA, will be implemented.
Within three years of entry into force of the EUSFTA (Phase 3): Enhanced border enforcement measures in the RDA, new powers in the GIA and RDA for Singapore Customs to obtain and provide information relating to the seized goods and the standardised terms and provisions relating to border enforcement in the GIA and RDA will be implemented.
1 Stanley Lai SC is a partner and Amanda Soon is a senior associate at Allen & Gledhill LLP.
2  SGCA 4.
3 Sun Electric Pte Ltd v. Sunseap Group Pte Ltd and others  SGHCR 6.
4 Sun Electric Pte Ltd v. Sunseap Group Pte Ltd and others  SGHC 232.
5  SGCA 18.
6 Lee Tat Cheng v. Maka GPS Technologies Pte Ltd  SGHC 48.
7  5 SLR 180.
8  5 SLR 1318.
9  5 SLR 956.
10  SGCA.
11  SGHC 305.
12  5 SLR 312.