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.
Millennium Pharmaceuticals, Inc v. Drug Houses of Australia Pte Ltd2
The respondent had registered its anti-cancer drug with the Health Sciences Authority of Singapore (HSA), under the Therapeutic Products Regulations (TPR). Regulation 23 of the TPR required the respondent to declare if any patent was in force in respect of its drug. Although the appellant had two process patents in force in respect of the manufacture of the drug, the respondent did not make the declaration as it took the position that its drug did not infringe the appellant's patents. Because the declaration was not made, the respondent was not required to serve the appellant notice of its application, and the appellant was unable to commence proceedings to restrain registration of the respondent's drug.
The appellant applied for an interim injunction against the respondent in the High Court.3 The High Court did not grant the injunction as it held that the TPR did not allow a patent proprietor to apply for cancellation based on prospective infringing acts, namely, the anticipated sale and importation of the respondent's drug.
The Court of Appeal allowed the appeal in part. The Court held that it was the respondent's obligation to make the declaration under the TPR and it was for the HSA to determine whether to notify the patent proprietor. The respondent's failure to make the declaration meant that the appellant did not get the opportunity to defend its patents, and the respondent could not argue that the appellant was using the post-registration cancellation procedure in the TPR as a 'backdoor' to defend its patents, after the window for it to commence proceedings to restrain registration of the respondent's drug had closed, as it was the respondent's actions that had resulted in the appellant being unable to commence proceedings in time.
The Court also found that where an act permitted by the product registration would infringe a patent, regardless of whether that act had been committed yet, Regulation 24(1)(a)(i) of the TPR applied to allow the HSA to cancel registration of the product. The appellant's allegation that manufacture, import and sale of the respondent's product would infringe its patents raised a reasonable cause of action for prospective infringement under Regulation 24(1)(a)(i) of the TPR. However, the Court declined to grant the interim injunction as the appellant had failed to demonstrate why damages would not be an adequate remedy.
Singapore Shipping Association and Association of Singapore Marine Industries v. Hitachi, Ltd and Mitsubishi Shipbuilding Co., Ltd4
This dispute arose from an application to revoke a Singapore patent, jointly owned by Hitachi, Ltd and Mitsubishi Shipbuilding Co., Ltd (the proprietors). In response to the revocation application, the proprietors applied to make post-grant amendments to the patent specifications. The opponents objected to the amendment application on the basis of the proprietors' failure to disclose, undue delay and unfair advantage.
The Registrar first considered whether the proprietors had fully disclosed all relevant matters leading to the application to amend the patent specifications. The patent family had faced invalidation trials in Japan and foreign examiners' objections in China and Korea. The Registrar held that where the file histories of foreign patent prosecutions of the patent family were publicly available, it would suffice for the proprietors to provide a brief summary of the prosecution and details of the patent family such that an interested third party could retrieve the full reports. Where patent agents' advice regarding the proposed amendments was protected by privilege, the proprietors were under no obligation to waive the said privilege and an adverse inference could not be drawn against such decision. The Registrar found that the proprietors had put forward the facts relevant to the reasons for the proposed amendments.
The Registrar then considered what would constitute undue delay in amending the patent specifications. In relation to pre-grant amendments, the Registrar considered that it would generally be unreasonable for the proprietors to amend their granted patent in Singapore in view of pre-grant examination objections elsewhere, unless those resulted in an allowable claim set. Given that the corresponding application in India was still pending when the proprietors sought to amend the specification in Singapore, they could not be faulted for not seeking these amendments earlier once they knew of the need to amend the patent application in India.
In relation to post-grant invalidation proceedings against the same patent family in Japan, the Registrar concluded that it was reasonable for the proprietors to await the outcome of the Japan trials and attendant amendment applications before taking out an application in Singapore to make similar amendments. However, there was a delay of almost 11 months following the conclusion of the final Japan trial before the proprietors made the amendment application. The Registrar found that the delay was not justified, particularly because the proprietors were attempting to monetise the patent in its unamended state in the relevant period.
In relation to unfair advantage, the Registrar took the view that in their discussions with potential licensees, the proprietors should, at the very least, have pointed out that some amendment to the Singapore patent was likely to be necessary. Instead, the proprietors continued to base their discussions around the unamended patent. The attempts to commercialise the patent in its unamended state, despite adverse foreign rulings on the original patent's validity, constituted an attempt to obtain an unfair advantage from the unamended patent.
The Registrar refused the proposed amendments, in view of the unreasonable delay in applying for the amendment, compounded by the behaviour of the proprietors in their discussions with potential licensees.
Sunseap Group Pte Ltd and others v. Sun Electric Pte Ltd5
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 Registrar6 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 that7 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.
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 that 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.
I-Admin (Singapore) Pte Ltd v. Hong Ying Ting and others and another suit8
The plaintiff commenced a suit against the ex-employees of the defendants for, inter alia, copyright infringement and breach of confidence. Materials relating to the plaintiff were found in the defendants' possession, and the plaintiff argued that the defendants' reproduction of the plaintiff's materials (source codes, databases and technical infrastructure details, plus business development and client-related materials) amounted to copyright infringement, and that the defendants' products and services also infringed the plaintiff's copyright. The defendants had acted in breach of their duty of confidentiality to the plaintiff by reproducing its confidential material and using its source codes and databases to generate the defendants' payroll reports.
The High Court held that copyright subsisted in the plaintiff's materials. Although specific human authors could not be identified, the Court was satisfied that the materials had human authors, namely, the plaintiff's employees.
In considering whether the plaintiff's materials were original, the High Court clarified that this threshold was a low one. A work was original as long as it was independently created by a human author and possessed some minimal degree of creativity. The Court was satisfied that the plaintiff's independent work in creating the source codes satisfied this threshold, the plaintiff's databases were original compilations of facts, and the business development materials required business skill to be conducive to clients' data input. However, the Court did not find that there was any copyright infringement as any similarities between the plaintiff's products and the defendants' products were due to the functional and statutory requirements of what the relevant products (i.e., payroll reports) should generally contain. The Court considered the overall architecture and design of the software, including the programming language used and the logic of the source codes, and found that there were significant structural differences between the products.
The claims for breach of confidence were unsuccessful. The High Court found that the plaintiff's source codes, systems, database structures and client materials were confidential, but only to the extent that the information in question was not found in the public domain and was original. The defendants owed obligations of confidence to the plaintiff, but there was no use of the plaintiff's confidential information in the relevant sense. Mere copying did not amount to actual use for the purposes of making out the breach of confidence claim. The plaintiff was not able to show that the defendants had used the plaintiff's material to generate material that was used in the course of the defendants' business.
Burberry Ltd v. Megastar Shipping Pte Ltd and another appeal9
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 suits10) 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.
Scotch Whisky Association v. Isetan Mitsukoshi Ltd11
This was an appeal to the High Court arising from the Registry's decision12 to dismiss the appellant's opposition to the respondent's application for the trademark 'Isetan Tartan' in Class 33 for 'all alcoholic beverages except beer; sake'. The appellant argued that tartan was an iconic symbol of Scotland and would be misleading as to geographical origin if used on whisky that did not originate from Scotland. In the alternative, the appellant argued that 'tartan' was a geographical indication used in relation to whisky.
The Court allowed the appeal against the Registrar's decision. In assessing the deceptiveness of the mark with reference to the goods or services applied for and in the context of the relevant trade (i.e., whether the mark was deceptive to consumers in Singapore who drank and purchased whisky), the Court was satisfied on the evidence that tartan was an iconic symbol of Scotland and that Singaporean consumers recognised tartan as such. The association between tartan and Scotland was sufficiently strong that the use of the mark on non-Scottish whisky products would be deceptive as to the product's geographical origin. The Court did not consider that the word 'Isetan' in front of the word 'Tartan' would evoke Japan (as the origin of the Isetan department store chain) in place of Scotland. The average consumer would not think that all of Isetan's varied products were produced in Japan. Hence, the non-Scotch whisky bottles sold in Isetan would cause the public to be deceived into thinking that the whisky originated from Scotland.
However, the Court was of the opinion that if the mark were used on an alcoholic beverage that was not whisky, it would not be sufficiently deceptive because Scotland was globally renowned for its whisky and the deceptiveness of the 'Isetan Tartan' mark had been enhanced because it was applied to whisky products.
The High Court declined to find that 'Isetan Tartan' contained a geographical indication, as a geographical indication was limited to matters that were geographical locations or places. An iconic symbol like tartan did not refer to a physical place and thus fell outside the scope of a geographical indication. The Court found no merit in the appellant's alternative submission that use of a geographical indication extended to use of marks that evoked a geographical indication.
Tuitiongenius Pte Ltd v. (1) Toh Yew Keat and (2) Economics @ Tuitiongenius Pte Ltd13
The first defendant was the former managing director of the plaintiff. The plaintiff was a tuition company using the brand 'TuitionGenius'. The first defendant started offering similar services through the company Economics @ Tuitiongenius Pte Ltd while he was still employed with the plaintiff. The plaintiff made claims against the defendants for, inter alia, passing off.
The High Court held that the claim for passing off was not made out as the plaintiff had failed to prove that it had acquired goodwill in the TuitionGenius mark. The plaintiff's tuition centres operated under the brand name 'REAL Education' and not 'Tuitiongenius'. Internal documents where the TuitionGenius mark was printed prominently did not show promotion of the TuitionGenius mark. Marketing advertisements where the TuitionGenius mark was used, but in a less prominent manner than the Real Education Centre mark, did not suffice to show promotion of the TuitionGenius mark so as to generate goodwill. Although the TuitionGenius mark constituted part of the plaintiff company's name, that did not necessarily mean that the TuitionGenius mark had been used as a mark to promote the plaintiff's services.
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; and
- 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 that 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) partially commenced on 1 April 2019 to establish a system of registration for geographical indications as part of Singapore's commitments under the European Union–Singapore Free Trade Agreement (EUSFTA). Further provisions of the GIA came into force on 21 November 2019, relating to the following:
- 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);
- Section 75 (registration to be prima facie evidence); and
- Section 76 (certificate of validity of contested registration).
Part IV of the GIA, which provides that owners of all registered geographical indications are to have access to improved border enforcement measures, has yet to come into force and is expected to be effective on a later date within three years of the entry into force of EUSFTA.14
In February 2020, the Geographical Indications (Amendment) Bill was passed to make technical amendments to the GIA to address issues that have arisen since the GI Registry was set up. The changes under the Bill are due to be implemented during the first half of 2020. The Bill seeks to amend the GIA for the following purposes:
- to provide that a qualification of the rights conferred under the GIA in respect of a registered GI may only be requested before a GI is registered and may not be made if the qualification of rights would render the registration of a name contained in a GI, or a term which may be a possible translation of a GI, nugatory;
- to provide that, after a GI is registered, a person may apply to the High Court for an order that a limitation of the scope of any of the rights conferred under the GIA in respect of a registered GI be entered in the register; and
- to clarify that the grounds for refusal of registration apply in respect of a variant, and that a variant that falls within any of the applicable grounds for refusal of registration may be cancelled.
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, that embody the registered design (or one that is substantially the same). Infringement occurs when a person carries out 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.
Under the Accelerated Initiative for Artificial Intelligence, which took effect from April 2019, IPOS will accelerate grants of artificial intelligence (AI) related patents to six months, compared to a typical period of at least two years. This supports Singapore's shift to a digital economy, and innovative enterprises that need to bring their AI products to global markets faster. Under the initiative, IPOS granted Alibaba Group Holdings Limited (Alibaba Group) an AI patent in just three months.
To advance Singapore's position as a leading hub for alternative dispute resolution in the region, IPOS introduced the Enhanced Mediation Promotion Scheme (EMPS) on 1 April 2019 to help fund parties' mediation costs of up to S$10,000 per mediation case where the subject matter is limited to IP rights in Singapore, and up to S$12,000 per mediation case if foreign IP rights are also involved. The EMPS helps parties cover the fees charged by the mediation service provider, the mediator's fees and mediation-related lawyer/agent fees. Alternative dispute resolution is becoming increasingly popular among businesses and individuals looking to resolve their disputes more effectively and satisfactorily. Compared to litigation, mediation offers a more cost-effective and swifter option to resolving IP disputes globally and further helps maintain relationships between the parties. In November 2019, IPOS announced its first successful multi-jurisdictional IP mediation under the EMPS. The dispute was between an American company and a Thai businessman, and both involved Singapore and foreign IP rights. Both parties flew to Singapore for the mediation. The mediation was conducted through the World Intellectual Property Organization Arbitration and Mediation Center, which has its only overseas office in Singapore.
In August 2019, IPOS launched the world's first mobile app for trademark registration. The app, IPOS Go, enables businesses and entrepreneurs to file their applications for Singapore trademarks directly with IPOS via their mobile devices. Filing a trademark on the app can be completed in less than 10 minutes, and filing costs are also significantly reduced as applicants are able to file their applications directly with IPOS.
In February 2020, IPOS partnered with Singapore Exchange (SGX) to launch the Intangible Disclosure Evaluation and Audit Scheme (IDEAS) programme exclusively for SGX-listed companies and companies preparing for a listing on SGX. IDEAS aims to (1) raise awareness of the value of intangible assets (IA) and encourage companies to undergo IA evaluations, by enabling companies to identify important IA information that is a key driver to their businesses, and (2) make recommendations on disclosing such information to communicate business value to the market. This will help investors better appreciate the value of IA and support companies in capital raising.
1 Stanley Lai SC is a partner and Amanda Soon is a senior associate at Allen & Gledhill LLP.
2  SGCA 31.
3  SGHC 149.
4  SGIPOS 5.
5  SGCA 4.
6 Sun Electric Pte Ltd v. Sunseap Group Pte Ltd and others  SGHCR 6.
7 Sun Electric Pte Ltd v. Sunseap Group Pte Ltd and others  SGHC 232.
8  SGHC 127.
9  SGCA 1.
10  SGHC 305.
11  SGHC 200.
12 Scotch Whisky Association v. Isetan Mitsukoshi Ltd  SGIPOS 4.
13  SGHC 264.
14 EUSFTA entered into force on 21 November 2019.