The Intellectual Property Review: Singapore

Forms of intellectual property protection

i Patents

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.

ii Copyright

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.

iii Trademarks

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:

  1. patents:
    • extension of patent term where there is unreasonable delay in the granting of the patent or in getting marketing approval for the patented pharmaceutical product; and
    • restrictions on parallel importation of pharmaceutical products;
  2. trademarks:
    • registration of non-visual marks such as sound and smell marks; and
    • protection of well-known marks; and
  3. copyright:
    • extension of the term of copyright protection; and
    • more stringent enforcement measures against infringement

As part of Singapore's obligations under the European Union–Singapore Free Trade Agreement (EUSFTA), which entered into force on 21 November 2019, Singapore enhanced its border enforcement measures against goods that infringe intellectual property rights, and also established a new framework to register geographical indications in Singapore.

Recent developments

i Patents

Cases

Zyfas Medical Co v Millennium Pharmaceuticals Inc2

The appellant had registered its anti-cancer drug containing the active ingredient bortezomib with the Health Sciences Authority of Singapore (HSA). Under Regulation 23 of the Health Products (Therapeutic Products) Regulations 2016 (HPR), an applicant for registration of a therapeutic product in Singapore is required to declare whether a patent is in force 'in respect of the therapeutic product' and, if so, whether the patent is invalid or will not be infringed by the actions for which registration is sought. When the appellant filed its application for product registration with the HSA, there was no product patent for bortezomib in force in Singapore. The respondent sought a court declaration that the appellant had omitted to disclose 'matter that is material to the application', as the appellant had not filed declarations in relation to three process patents owned by the respondent. At the High Court,3 the appellant conceded that the existence of the respondent's process patents was a 'matter that is material to the application', and the High Court granted the declaration sought by the respondent.

On appeal to the Court of Appeal, the appellant advanced the new argument that a process patent did not fall within Regulation 23 of the HPR. The Court of Appeal held that 'a patent in respect of the therapeutic product' under Regulation 23 included a process patent as (1) the plain text of the regulation suggested that process patents were included since 'patent' is defined in the Patents Act to include process patents, and (2) the inclusion of process patents was consonant with the legislative purpose of Regulation 23, which was to give notice and protection to patent proprietors, and there was no reason why product patents should be accorded more protection than process patents since a therapeutic product could infringe one or the other. In light of the appellant's acceptance that it was 'logically possible' for the bortezomib in the appellant's drug to have been manufactured using the processes in the respondent's process patents, the Court of Appeal concluded that the respondent's three process patents fell within Regulation 23 because 'the active ingredient in that product could have been made using the patented processes'.

ii Copyright

Legislation

On 3 June 2020, the Ministry of Law (MinLaw) and IPOS launched a four-week public consultation to seek feedback on a proposed licensing scheme for Collective Management Organisations (CMOs) in Singapore. Some key areas raised in the proposed licensing scheme include:

  1. setting minimum standards that CMOs must provide to members, including freedom to determine the rights to grant to CMOs and the opportunity to participate in the key decision-making processes of the CMO;
  2. CMOs to set out their distribution policy clearly and provide sufficient information on the source of revenue and calculations made to work out the distribution amount to members;
  3. greater transparency and publication of information such as the portfolio of copyrighted materials managed and administered by a CMO;
  4. requiring CMOs to provide an effective and cost-efficient dispute resolution mechanism, including recourse to mediation; and
  5. a mandatory code of conduct for CMOs.

On 5 February 2021, MinLaw and IPOS launched Part 1 of a two-month public consultation to seek feedback on the draft Copyright Bill, which seeks to repeal and replace the current Copyright Act. Part 1 of the consultation focuses on the main provisions of the draft Bill. Part 2 of the consultation was launched on 22 February 2021 and focuses on the provisions on the regulation of CMOs and Copyright Tribunals.

The draft Bill introduces new rights, exceptions and remedies to better address how copyrighted works are produced and used, including:

  1. a right for creators and performers to be identified whenever their works or performances are used publicly;
  2. default ownership of commissioned photographs, portraits, engravings, sound recordings and films, unless otherwise provided for under contract;
  3. a specific right to use works for the purpose of computational data analysis, including uses relating to text and data mining, data analytics and machine learning;
  4. a new right for educators and students to use online materials for educational purposes, whether for face-to-face sessions or online learning;
  5. expanded rights for certain uses of works by galleries, libraries, archives and museums to facilitate their work, such as for the purposes of an exhibition, and preservation and cataloguing of works; and
  6. new civil and criminal liabilities for commercial dealings in illicit TV set-top boxes.

The new Copyright Act is planned to be passed in the third quarter of 2021, and for the whole Act, with the exception of the provisions on CMOs, to take effect one month thereafter. The provisions on CMOs are intended to commence on a later date that will be announced subsequently, following further consultations on the regulations for the proposed class licensing scheme.

I-Admin (Singapore) Pte Ltd v. Hong Ying Ting and others and another suit4

The appellant commenced a suit against the ex-employees of the respondents for, inter alia, copyright infringement and breach of confidence. Materials relating to the appellant were found in the respondents' possession, and the appellant argued that the respondents' reproduction of the appellant's materials (source codes, databases and technical infrastructure details, plus business development and client-related materials) amounted to copyright infringement, and that the respondents' products and services also infringed the appellant's copyright.

The High Court5 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. However, the High Court did not find that there was any copyright infringement as any similarities between the appellant's products and the respondents' products were due to the functional and statutory requirements of what the relevant products (i.e., payroll reports) should generally contain. The High 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.

During the High Court trial, the appellant's case on copyright infringement was focused on the 'higher-level' claim of use and/or substantial reproduction of its materials and not on the 'lower-level' claim of possession and circulation. On appeal, the appellant sought to advance the lower-level claim; i.e., that the possession and circulation of its materials constituted copyright infringement. The Court of Appeal held that the appellant's lower-level claim was not part of its pleaded case. Both the pleadings and the manner in which the appellant ran its case had prioritised the higher-level claim. Had the lower-level claim been signposted, the trial before the High Court judge would have proceeded quite differently, and it was too late for the appellant to pursue this argument on appeal. The Court of Appeal also agreed with the High Court judge and disallowed the appeal in respect of the claim on the basis of use and/or substantial reproduction.

iii Trademarks

Tuitiongenius Pte Ltd v. (1) Toh Yew Keat6

The first respondent was the former managing director of the appellant. The appellant was a tuition company using the brand 'TuitionGenius'. The first respondent started offering similar services through the company Economics @ Tuitiongenius Pte Ltd while he was still employed with the appellant. The appellant claimed, inter alia, that the respondents, by marketing their services under 'Economics @ TuitionGenius' ('ETG Mark'), were passing off their business as the appellant's.

The High Court7 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.

The Court of Appeal upheld the High Court's dismissal of the claim for passing off, but overturned the High Court's holding that there was no goodwill. The Court of Appeal noted that the High Court appeared to have been concerned not specifically with whether there was goodwill in the appellant's business, but rather with whether the appellant had acquired goodwill in the TuitionGenius mark itself. The Court of Appeal found that there was sufficient evidence of goodwill in the appellant's business, as it has had a business presence in Singapore since April 2009, generated substantial revenue and spent a significant sum on marketing and advertising its tuition business during the same period. However, the TuitionGenius mark was not distinctive of the appellant's business and was therefore not sufficiently associated with the appellant's goodwill to sustain a claim under passing off. The appellant had made a deliberate choice to market its tuition business under the REAL Education Centre mark. Although there were instances where the TuitionGenius mark and the REAL Education Centre mark were featured alongside one another, these alone were insufficient to show that the appellant's enrolled students, its prospective students and/or their parents had identified the TuitionGenius mark as distinctive of the appellant's business. There was no misrepresentation because the appellant had consented to the respondents' use of the ETG Mark to market their business. As for damage, the appellant had not shown any evidence, apart from a bare assertion of dilution, that the respondent had diverted any business from the appellant and there was nothing to suggest that the respondent had only obtained students because of the attractive force or goodwill of the appellant's business.

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:

  1. applicants must indicate the article or non-physical product that the GUI is applied to;
  2. 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
  3. 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) was amended with effect from 15 August 2020 to address issues that have arisen in the course of running the Geographical Indications Registry since its establishment on1 April 2019, and to provide greater clarity for traders and producers. A summary of the changes are as follows.

Clarification of how variants of a GI are to be treated during the application process

The amendments clarify that:

  1. an application for registration can contain more than one variant constituting the same GI;
  2. after an application for registration has been accepted and published for public inspection, third parties who oppose the inspection can choose to oppose the registration of one or more of the variants in the application, instead of all of the variants;
  3. where there is a refusal of registration of a variant, the other variants in the application can be registered if they satisfy the requirements; and
  4. other processes such as application for cancellation of registration or request for qualification of rights to be entered in the register need not be in respect of all the variants.

'Variant' is defined as a variant of the indication constituting a GI, and includes any translation, transliteration or other variation of the indication.

Changes to the process for the entry of a qualification of rights in the register

A request for qualification of rights (QoR) is usually taken up by a third party, to clarify the scope of protection conferred on a registered GI. This is in relation to whether a name or term contained in a GI, or a term that may be a translation of the GI, is available for use by the third party. The GIA now clarifies that a QoR may not be requested if the request seeks a qualification of all the rights to be conferred in respect of a registered GI, to make clear that the QoR regime and the opposition or cancellation regime remain separate and distinct. Applicants seeking to negate the rights conferred under the GIA in respect of a registered GI or variant will not be able to use a QoR request as a substitute for opposition or cancellation proceedings. The post-registration QoR process has been removed.

Introduction of a new application for limitation of scope of rights

The amended GIA provides that any post-registration applications for a limitation as to the scope of rights conferred in respect of a registered GI will not be filed in and heard by the High Court under a new judicial procedure called an application for a limitation of scope of rights in respect of a registered GI to be entered onto the register.

Obtaining protection

i Patents

National application

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. With effect from 1 January 2020, it is no longer possible to obtain a patent in Singapore without substantive local examination by relying on a relevant allowed or granted foreign patent application or the International Preliminary Report on Patentability. This means that a patent applicant will either have to request a local search and local examination report, or request a local examination report based on a relevant foreign search report of the International Search Report.

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. If there are no objections and the applicant follows the specified time limits for actions, a patent can be granted within 12 months of the filing of the application.

PCT application

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 or she files or causes to be filed outside Singapore an application for a patent for that invention. Failure to do so is a criminal offence.

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 the national phase at the 30th month from the date of filing of the application. This is extendable 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 the issuance of the certificate of grant.

ii Trademarks

National application

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.

If the application does not contain any deficiency or face any objection or opposition, it may take about 12 months for a trademark to be registered.

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

National application

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.

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 or she 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 or she 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.

v Infringement

Patent infringement

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:

  1. 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;
  2. 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
  3. 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.

Trademark infringement

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.

Copyright infringement

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 such as sound recordings and films, such as:

  1. to reproduce the work in a material form;
  2. to publish the work if the work is unpublished;
  3. to perform the work in public;
  4. to make an adaptation of the work or to do any of the above in relation to an adaptation;
  5. to communicate the work to the public;
  6. to make a copy of the sound recording or film;
  7. to enter into a commercial rental arrangement in respect of the recording; and
  8. 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:

  1. 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;
  2. falsely attributing the authorship of a work or the identity of the performer of a performance; and
  3. falsely removing or altering the rights management information electronically attached to a work.

Registered design infringement

The registered owner has the exclusive rights to:

  1. make or import, for sale or hire, or for use for the purpose of trade or business:
    • any article in respect of which the design is registered and to which that design, or a design not substantially different from that design, has been applied; or
    • any device for projecting a non-physical product (being a non-physical product in respect of which the design is registered and to which that design, or a design not substantially different from that design, has been applied); and
  2. sell, hire, or offer or expose for sale or hire:
    • any article or non-physical product in respect of which the design is registered and to which that design, or a design not substantially different from that design, has been applied; or
    • any device for projecting a non-physical product mentioned in the previous bullet point.

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.

vi Defences

Patents

Common defences to infringement include that:

  1. it is an act done privately and for non-commercial purposes;
  2. it is an act done for experimental purposes relating to the subject-matter of the invention; and
  3. 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.

Trademarks

Common defences to infringement include that:

  1. 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;
  2. it 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;
  3. 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
  4. the registration of the plaintiff's trademark should be declared invalid (e.g., the registration was obtained by misrepresentation or fraud).

Copyright

Common defences to infringement include that:

  1. copyright does not subsist in the work;
  2. the plaintiff is not the owner of the copyright;
  3. 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;
  4. 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
  5. the acts complained of constitute 'fair dealing' under the CA.

Registered designs

Common defences to infringement include:

  1. acts done for a private non-commercial purpose;
  2. acts done for the purpose of evaluation, analysis, research or teaching; and
  3. 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).

viii Remedies

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 sitting in the General Division of the High Court. For proceedings before a Registrar of the High Court, an appeal may be filed with a judge sitting in the General Division of the High Court in chambers. For proceedings begun in or appealed to the General Division of the High Court, an appeal may be filed with the Appellate Division of the High Court, save that appeals arising from a case relating to the law of patents should be filed to the Court of Appeal. The Court of Appeal may, with leave, hear appeals against decisions of the Appellate Division, if the appeal raises a point of law of public importance. However, such leave will only be granted stringently as parties have already had one round 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 is a neutral, international non-profit organisation that offers alternative dispute resolution options to enable private parties to settle domestic or cross-border IP disputes. The Singapore International Arbitration Centre (SIAC), an independent, non-profit organisation that provides facilities for arbitration, 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.

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.

From May 2020, IPOS started offering a pilot programme, the SG Patent Fast Track, to accelerate grants of patent applications in all technology fields to just six months, compared to a typical period of two years or more. SG Patent Fast Track is the world's fastest application-to-grant process of its kind, and reflects the important role that IP offices play in supporting innovators and their solutions to address global developments in sustainable development. The pilot is planned to end on 29 April 2022.

IPOS has rolled out several new initiatives to help businesses use IP to thrive during the covid-19 pandemic. First, to help enable enterprises to swiftly obtain protection for their IP, IPOS launched SG IP FAST to accelerate the registration processes for trademarks and registered designs. SG IP FAST is an enhancement of SG Patent Fast Track, which accelerates the grant of patent applications. Second, IPOS has launched IPOS GO, the world's first mobile app for trademark applications. Through IPOS GO, enterprises are able to search for similar business names, trademarks, domain names and social media account names, and use its renewal feature to renew trademarks, patents and registered designs. Third, IPOS' Young IP Mediator programme helps aspiring and fresh law graduates build up IP mediation experience, which will in turn help attract more disputes for mediation in Singapore.

Footnotes

1 Stanley Lai SC is a partner and Amanda Soon is a senior associate at Allen & Gledhill LLP.

2 [2020] 2 SLR 1044.

3 [2020] SGHC 28.

4 [2020] SGCA 32.

5 [2019] SGHC 127.

6 [2020] SGCA 103.

7 [2019] SGHC 264.

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