IP PROTECTION IN SINGAPORE – RECENT DEVELOPMENTS IN A MATURING LEGAL LANDSCAPE

Introduction

Singapore is one of the most popular places in Asia for the commercialization of ideas and innovations, particularly in such fields as biomedical sciences and the creative and research industries. One of the greatest pull factors for global businesses to Singapore is the nation’s robust intellectual property (IP) protection and legal infrastructure. In fact, since 2002, Singapore has been ranked top in Asia for IP protection by the World Economic Forum (WEF), the Institute for Management Development (IMD) and the Political Economic Risk Consultancy (PERC). Singapore also emerged top in Asia for IP competitiveness in the Global IP Index conducted by law firm Taylor Wessing LLP with the support of Managing Intellectual Property in 2008.

In addition, Singapore continually aims to add value across the spectrum of IP activities from creation to protection to exploitation and has also set up specialized bodies, for example, the IP Academy to broaden local knowledge and capabilities in IP protection. Singapore is also a hub for international IP protection and is a signatory to various major IP conventions and treaties for example, Patent Cooperation Treaty (PCT), Paris Convention, Berne Convention, Madrid Protocol, Budapest Treaty, Agreement on Trade-related aspects of IP rights (TRIPS), and the World Intellectual Property Organisation.

To complement the comprehensive regulatory and legislative regime, which accords with international TRIPS standards, the Singapore Courts have confidently taken unprecedented but sensible steps in tackling new technologies, interpreting applicable IP laws and enforcing IP rights. This article aims to highlight some noteworthy developments in IP jurisprudence against the legal backdrop in Singapore. The article will deal with the general legal regime before going into the recent developments for the different types of IP rights respectively.

Patents

The patent protection regime in Singapore has rapidly evolved and is constantly being updated as Singapore strives to build its global reputation as a biomedical and research hub. The Singapore Courts have also deftly handled the developments in technology and patentable subject matter when dealing with patent infringement suits.

In Singapore, inventions are protected under the Patents Act (Cap 221, 2005 Rev Ed) (“PA”).  Registration is necessary, and can be obtained by filing an application with the Registry of Patents within the Intellectual Property Office of Singapore (“IPOS”) or via an international application filed in accordance with the PCT.

A patent owner who files for registration in Singapore within a year from the date of an application for registration made in a country which subscribes to the Paris Convention or the World Trade Organisation (WTO) claim a right of priority. Importantly, the date of the application, which is the date to assess whether an invention is new, shall be the date of application in that country.

Patents can be obtained for an invention which is a product or a process, as long as the invention is new, involves an inventive step and is capable of industrial application. As in other IP jurisdictions, an invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body is not patentable as it is not taken to be capable of industrial application.  Inventions which encourage offensive, immoral or anti-social behavior are also not patentable in Singapore.

Singapore adopts a “first to file” patent system, unlike in the US. The maximum duration for the rights conferred by registration is 20 years from the filing date. During this period, the registered patent owner enjoys an exclusive right to the invention.

A patent owner can take legal action against the infringing party, and seek to obtain an injunction to stop the infringing action, damages for the loss suffered or profits gained by the infringing party from the infringement, and/or a declaration that the patent is valid and infringed. The declaration is important for future infringement cases and indemnity costs.

The Singapore patent regime gives an exclusive licensee of a patent the same right as the patent owner to take legal action against an infringing party.  The licence should be registered within 6 months after execution failing which the exclusive licensee may be deprived of its remedies for damages or account of profits as a result.  The exclusive licensee should also be added as a co-plaintiff for a claim in damages by a patent owner.

As mentioned above, against the comprehensive backdrop of patent protection laws, the Singapore Courts have taken a robust and effective approach to new technologies and legal conundrums in patent law. One of the landmark cases is Genelabs Diagnostics Pte Ltd v Institut Pasteur [2001] 1 SLR 121 (“Genelabs case”). The Genelabs case is Singapore’s first biomedical patent infringement case, concerning a patent for the human immunodeficiency virus type 2 (HIV-2 Virus). The Singapore Court of Appeal addressed issues of patent infringement, novelty and obviousness and had to deal with 67 pieces of prior art alleged by the defendants.

Another notable case would be FE Global Electronics Pte Ltd and Others v Trek Technology (Singapore) Pte Ltd [2006] 1 SLR 874, also decided by the Singapore Court of Appeal in 2005 (“Trek case”).  This case concerns the invention of a universal serial bus (USB) flash memory device for computer data storage which directly connects to the computer.  The device underlying the invention is the ubiquitous external data storage device which the patent owners coined as “Thumbdrive”, and which has become very successful worldwide. In the Trek case, the Court of Appeal had to deal with 46 pieces of prior art alleged by the defendants before reaching their decision that the patent was novel and valid.

A related application by the defendants in the Trek case, namely Re Platts-Mills Mark Fortescue [2005] SGCA 57, in which the defendants applied for permission to have their case argued by a UK Queen’s Counsel is also noteworthy. In this related application, the Singapore Court of Appeal denied the defendants’ application and in so doing, showed confidence in the Singapore bar. The Singapore Court of Appeal further opined that standards had increased over recent years and that local litigators were competent to address complex patent infringement issues.

Further and more recently, the Singapore courts had to deal with a business method patent for automatically determining a preferred currency in a credit card transaction in the case of First Currency Choice Pte Ltd v Main-Line Corporate Holdings Limited and Another Appeal [2007] SGCA 50 (“Main-Line case”). This was a ground breaking case as it was dealing with the controversial business method patent which is still not recognized in some jurisdictions. This case is important to show the progressive attitude of the Patents Registry in allowing claims for business method as well as the Singapore Courts’ healthy attitude towards dealing with unique patents.

In the Main-Line case, the Court also considered the specific issue of the nature and applicability of the plea of “innocent infringement” which was raised by the defendants. The Court held that the plea of “innocent infringement” was not a “defence” in a strict sense of the word but is an extenuating consideration in terms of the remedy that can be granted.

In the Main-Line case, the plaintiff argued that publication of the patent application was enough to put the defendant on notice and thus remove the plea of “innocent infringement”. The Court did not agree as the defendant was not in software industry and there was no evidence adduced at the trial that the defendant should reasonably have known that the Singapore patent application was pending. Accordingly, the Court held that it would be unreasonable to hold that the mere publication of the Singapore patent application should be deemed to put the defendant on notice of potential patent infringement. However, the Court also noted that the defendant had also been informed via email by the plaintiffs of the existence of the European patent and the pending Singapore patent application. As a result, the Court held that the plea of innocent infringement was not available to the defendants from the date of the email.

The Main-Line case gives fair warning to businesses to do their proper due diligence and ensure that proper warranties and indemnities are in place when dealing with technology transfers or sharing. Furthermore, businesses should be aware of the limits of the plea of “innocent infringement”; while the innocent lack of knowledge of the patent may not remove liability for infringement, it may go towards alleviating the consequences for the defendant.

Copyright

The relevant legislation governing copyright in Singapore is the Copyright Act (Cap 63, 2006 Rev Ed) (“CA”).

Copyright protection arises in an original work upon creation.  The requirements for copyright protection are that there need be originality and that skill and labour are expended.  Generally, the duration of copyright protection is for the lifespan of the copyright owner add 70 years.

The types of works protected under copyright protection include literary, musical and artistic works, and sound recordings, films and broadcasts. There is no system or requirement for registration for copyright in Singapore. A copyright work created by a Singapore citizen or resident is protected in many countries overseas by virtue of international agreements, namely TRIPs and the Berne Convention.

There is an infringement of copyright when a substantial part of the skill and labour of the author has been copied. As with patents, the Singapore copyright regime gives an exclusive licensee of a copyright the same right as the copyright owner to take legal action against an infringing party.

Exceptions to copyright infringement includes usage for fair dealing in relation to works, fair dealing for purpose of criticism or review and fair dealing for purpose of reporting current events or news.

A successful copyright owner can obtain an injunction, an account of profits or damages, and an order for delivery or disposal of the infringing materials. The owner can also elect for an award of statutory damages in lieu of an account of profits or damages, for up to a maximum of SGD$200,000 unless the owner can prove that his loss exceeds such amount.

It should be noted that infringement of copyright can also be the subject of criminal proceedings in Singapore. The infringer may be fined and/or even jailed. The availability of criminal proceedings also means that the useful tools are at the copyright owner’s disposal to nip the infringement in the bud. For example, search warrants may be obtained more quickly and more easily and this will help copyright owners flush out the infringers more efficiently.

An interesting case which involved copyright infringement issues is the recent case of Odex Pte Ltd v Pacific Internet Ltd [2008] SGHC 35 (“Odex case”). In the Odex case, the plaintiff, a Singapore anime (a popular form of Japanese animation) distributor brought an application for pre-action discovery against the defendant, a major internet service provider (ISP), so as to obtain details of the identities of online copyright infringers who had allegedly downloaded anime movies.

In the court of first instance, the learned Deputy Registrar denied the plaintiff’s request for the information because the plaintiff did not have the proper legal standing to demand such information; the plaintiff was neither the copyright owner nor the exclusive licensee of the copyright subsisting in some of the anime movies. With respect to the anime movies of which the plaintiff was an exclusive licensee, the Court found that the evidence presented by the plaintiff was insufficient to establish an extremely strong prima facie case to warrant an order against the ISP to hand over the confidential information.

The plaintiff lodged an appeal to the High Court and also asked for 6 Japanese anime studios to be joined as co-plaintiffs. The appellate judge dismissed the plaintiff’s appeal but ordered for discovery of the subscribers’ identities to the anime studios which had successfully joined the action as co-plaintiffs and were thus, the rightful parties to the copyright infringement claim. In coming to his decision, the Honourable appellate judge disagreed with the high standard of proof set down by the learned Deputy Registrar and found that there was sufficient and cogent evidence to show prima facie the infringing acts and it was in the interests of justice for discovery to be ordered.

The effect of the Odex decision is clear. Online users illegally downloading copyrighted materials can no longer hide behind the right of privacy as their defence against copyright infringement. The Singapore courts have given a robust but balanced decision. By ensuring that only the proper party, i.e. the CR owners, would be able to have access to the confidential information. Further, the High Court was satisfied that there was credible proof of infringing activity first. In their decision, the Singapore Courts have given due respect to the significance of IP protection while not entirely trampling on the right to privacy.

Another recent and noteworthy decision on copyright infringement in Singapore is the Virtual Map (Singapore) v Singapore Land Authority [2008] SGHC 42 (“Virtual Map case”). This case was novel in Singapore as the claim was initiated by a government authority, the Singapore Land Authority (“SLA”). The Virtual Map case is also important to be kept in mind by businesses that intend to take licences of copyrighted material or are licensees of copyrighted data.

The SLA provides land survey services, information services and publishes the Singapore Street Directory. The defendants, Virtual Map (“VM”), develop and publish location-based software and systems, including online maps. The SLA had entered into several licence agreements with VM to licence the use of SLA’s street directory data and address point data in vector format in the production of VM’s maps. After the termination of the licence agreements, VM continued to sell online maps that appeared to be substantial reproductions of the licensed data. SLA sued VM for copyright infringement and successfully obtained an injunction against VM. VM appealed but their appeal was dismissed.

The copyrighted material was unique in the Virtual Map case as it contained numerous “fingerprints” such as non-existent buildings and roads, which were deliberately inserted into the licensed data and unique depictions of object shapes. VM’s maps, which were allegedly independently created using Global Positioning System (GPS) data and high resolution satellite imagery contained all these “fingerprints” and VM did not have any satisfactory explanation for the same. The Court also noted that while many of the details on the current VM maps may have come from satellite images, the task of mapping from satellite could not have been accomplished without the “skeleton” or the “backbone” of the licensed data.

Another notable point is that VM had actually earlier emerged successful as the plaintiff in a separate copyright dispute with a third party, in which the High Court of Singapore had found that VM enjoyed copyright in its maps and the defendant in that case had infringed the same. The Courts in the Virtual Map case was aware of the earlier decision but took into account the fact that VM’s rights in the maps were still subject to SLA’s copyright and thus, they could still be in breach thereof.

The decision of the Virtual Map case must be bourne in mind by licensees working on additions or improvements on licensed data upon the termination of their licences.

Trade Marks

There is a system of registration for trade marks in Singapore under the Trademarks Register.  Protection of such registered trade marks in Singapore is thus provided for under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”).  Otherwise, protection comes under the common law action of passing-off, discussed further below.

It should be noted however, that in accordance with international standards, the trademark system in Singapore provides for special statutory protection for foreign protection of unregistered trade marks which are well known in Singapore. The foreign proprietor would be entitled to obtain an injunction to prevent dilution of the distinctive well known mark in Singapore.

Generally, however, if the trademark is properly registered, the period of protection under the TMA is for 10 years which is renewable for further periods of 10 years. It is important for trademark owners to ensure that there is genuine use of the trademark in the course of trade in Singapore. This is because non-use for an uninterrupted period of 5 years without proper reason could open the trademark registration to revocation and once this ground is proved, there is no discretion to maintain the trade mark on the register.

A successful litigant for trademark infringement can obtain an injunction, an account of profits or damages, and an order for delivery or disposal of the infringing materials. The trademark owner may also obtain statutory damages of up to S$1 million unless he can prove his damages exceed that amount. As with copyright, trademark infringement could also be subject of criminal proceedings resulting in conviction and/or a fine for the infringer.

Exceptions to trademark infringement include situations where it is fair use in comparative advertising or promotion, or for non-commercial purposes, or for the purpose of news reporting or news commentary.

Passing-off

The common law action of passing-off is also well established in Singapore.  The principle is that nobody has any right to represent his goods as the goods of somebody else.  The plaintiff will have to show that he has the requisite level of goodwill in Singapore in respect of the mark such that a member of the public in Singapore will, upon seeing a substantially similar mark, be confused and associate such goods bearing the similar mark to be that of the plaintiffs’ goods. The plaintiff will be able to obtain damages, legal costs and an injunction against the offender in a successful passing-off action.

Generally, the Singapore courts have taken a very commercial approach to finding whether elements of the action have been satisfied. In determining whether there is goodwill, the courts have accepted pre-trading activities, such as pre-launch publicity, as evidence of goodwill. In determining if a colour scheme or the get up of a product has become distinctive of only one party’s business, the courts have found evidence such as sales volumes achieved under the trademark, advertisements and other publicity materials using the trademarks in Singapore as relevant.

Registered designs

In Singapore’s fast-paced knowledge and technological culture, the attractive design of a product is important to stand out from a host of products with the same or similar functionality. Singapore, like Australia and Britain, has a sui generis system of law which protects such designs which have been applied industrially. The governing statute is the Registered Designs Act (Cap 266, 2005 Rev Ed) (hereafter “RDA”). The RDA was enacted in 2000 and has already been revised twice, a sign of Singapore’s commitment to providing a comprehensive IP protection regime.

Registered design rights have been sometimes seen as “poor cousin” to copyright as the length of duration of the registered design right is for a maximum of 15 years as compared to the duration of copyright protection for the author’s life plus 70 years. There may be some overlap between copyright and registered design right, but the rights are not cumulative. For designs to be applied industrially, there will only be protection under the RDA and poor cousin or not, steps should be taken to register the design under the RDA or risk having no protection at all.

Registration can be done by filing an application with the Registry of Designs within IPOS or via an application filed in accordance with the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”), designating Singapore as a country where protection is sought. It should be noted however that that there are non-signatories to the Hague Agreement, such as US, Malaysia and China, which could be very important markets and it would be necessary for design owners to protect their designs separately in those countries.

To qualify for registration, a design must not have been registered in Singapore or elsewhere, or published anywhere in the world before the date of application of the first filing such as to throw the design into the public domain. If disclosure of a design was made during business negotiations such that both parties are bound by confidentiality obligations, the novelty of the design is not affected. Also, the design must not be different only in immaterial details or features from other common designs found in that industry. In addition, the registered design has to be applied to an article by an industrial process, such that more than fifty copies of the article have been or are intended to be produced for sale or hire.

Some examples of registrable designs in Singapore include the shape and configuration of an electrical meter box ; the shape of a chair and the shape of an orchid applied to ornamental pieces for use as brooches and pendants . An example of an unregistrable design is the shape and configuration of an electrical isolator where the features depended entirely on industry standards.

A registered design owner successful in litigation can obtain an injunction, an account of profits or damages, and an order for delivery or disposal of the infringing materials.

Parallel imports

Generally, the laws in Singapore, like those around the world, allow parallel imports into Singapore.

For example, section 29(1) of the TMA states that a registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market, whether in Singapore or outside Singapore, under that trade mark by the proprietor of the registered trade mark or with his express or implied consent (conditional or otherwise).  The caveat to section 29(1) is however that the condition of the goods should not be changed or impaired after they have been put on the market and that the use of the registered trade mark in relation to those goods had not caused dilution in an unfair manner of the distinctive character of the registered trade mark.

Section 66(2)(g) of the PA, section 30(7) of the RDA and section 25, 32, 33, 40A, 104, 105 and 116A of the CA also seem to welcome parallel imports and there are commercial reasons for favouring parallel imports, namely, that it may bring down the costs of consumables.

A recent case in point is Hawley & Hazel Chemical Co (S) Pte Ltd v Szu Ming Trading Pte Ltd [2008] SGHC 13 (“Darlie case”) and it bears mentioning as it may herald an important development in the law regarding parallel imports in Singapore which businesses should be aware of.

In the Darlie case, the plaintiffs applied for summary judgment on its claim for goods sold and delivered to the defendant. The application was dismissed and the plaintiff appealed. The judge allowed the appeal and awarded the plaintiff final judgment in the sum of over S$6 million with interest. The defendant has appealed, the result of which has not been reported at the date of article.

The brief facts of the Darlie case are as follows. The plaintiff is the manufacturer of toothbrushes and the Darlie brand of toothpaste (collectively known as the “Products”). The defendants were the distributors of the Products in Singapore for over 35 years when its distributorship was terminated by the plaintiff. It should be noted that there was no written distributorship agreement between the parties.

While Darlie toothpaste was the best selling brand in Singapore up to 1984 (it was known as “Darkie” then), the defendant deposed that the sales declined thereafter and the brand faced increasing competition from 1995 onwards due to a surge in parallel imports from Thailand and Hong Kong, which were being sold in Singapore for up to 40% less than the defendants’ prices.
The defendants argued that there was a triable issue of law that the plaintiff had a legal obligation to, but did not stop the parallel imports of the products.

The Honourable Judge held that there was “no legal and/or contractual obligation on the plaintiff’s part to stop parallel imports of the product into Singapore.” The Honourable Judge noted, amongst other things, that the plaintiff “could not guarantee that dribs and drabs of parallel imports would not slip through as loose cargo”.

This case raised the novel issue in Singapore of whether a manufacturer was obliged to stop parallel imports from entering a market where a sole distributor had been appointed. The Singapore High Court has taken a business-oriented position and the final pronouncement by the Court of Appeal is pending. Suffice to say that if the position as enunciated by the High Court is upheld, it would be prudent for distributors to carefully look or re-look at their distributorship agreements to ensure their rights as sole distributors are protected.

Confidential information and trade secrets

The law of confidentiality is important when dealing with certain types of information that cannot fall squarely into the other forms of IP protection. The extent and duration of protection via trade secrets are somewhat self-regulatory and the protection over confidential information and secrets is as good and will last as long as it can be kept secret by the owner.

In Singapore, the courts will generally uphold contracts which clearly impose confidentiality obligations on the parties. If there is no contract, confidentiality can be protected by implication of law if such information meets the necessary requirements of confidentiality. The confidential information must have the necessary quality of confidence about it, must have been imparted in circumstances importing an obligation of confidence and there must have been an unauthorised use of the information to the detriment of the party communicating it. The remedies available to the owner of the confidential information include an injunction, an account of profits or damages, and an order for delivery or for the disposal of the materials containing the confidential information.

An interesting development in case law on breach of confidence is found in the Singapore Court of Appeal case of Obegi Melissa and Others v Vestwin Trading Pte Ltd [2008] SGCA 4 (“Obegi case”).

In the Obegi case, the defendants were judgment creditors of the plaintiffs. The defendants were trying to enforce a New York judgment against a foreign company (“Co X”) and had hired private investigators (“PIs”) to locate assets in Singapore belonging to Co X. The PIs made frequent trips to the plaintiffs’ office building and retrieved the plaintiffs’ trash bags from the building’s common rubbish dump. The defendants then filed affidavits exhibiting documents found in the plaintiffs’ trash in the enforcement proceedings against Co X. The plaintiffs were not party to that suit. The plaintiffs subsequently brought the action against the defendants for breach of confidence and applied for summary judgment. The defendants claimed that the plaintiffs had by throwing out the documents, abandoned the documents and could not assert property rights therein.

The High Court held that the defendants’ claim was untenable and gave summary judgment to the plaintiffs. In reaching its decision, the High Court relied on a 1957 UK case of Williams v Phillips (1957) 41 Cr App Rep 5, where dustmen had removed for their own benefit certain commercially valuable items which they found in the rubbish they had collected. The dustmen were charged with and convicted of theft.

Upon the defendants’ appeal in the Obegi case, the Singapore Court of Appeal overturned the High Court’s decision and decided that there were triable issues of fact and/or law and the case was not suitable for summary judgment. In particular, the questions of fact and/or law were identified (a) Had the allegedly confidential documents been abandoned or converted? Were the defendants liable for a breach of confidence? (b) Does the use of such allegedly confidential documents in legal proceedings constitute a breach of confidence? (c) Does equity continue to impose an obligation of confidence where such documents are surreptitiously withheld from a party who has a legitimate interest in seeking their disclosure?

The issues raised in this recent case should put all potential litigants on guard to ensure that all sensitive documents should be properly destroyed or shredded before they are placed in the trash. Further, it is a timely warning to investigators and lawyers, who do not think twice of going through the other party’s trash to gather evidence for potential litigation.

Conclusion

Singapore’s comprehensive legislation and structured registration systems ensures adequate protection for IP rights and her IP laws are continually being revised. The local courts have provided sound, commercially inclined and sensible decisions to effectively enforce the legal framework and complement the promotion of a secure IP environment in Singapore. In fact, the Singapore judiciary has 2 judges who specialize in IP law. Needless to say that as Singapore evolves as the key dynamic knowledge economy in Asia, Singapore will to continue to evolve and refine their IP system and laws to ensure that they remain in line with international best practices.

Tony Yeo
Director (Intellectual Property)
T: +65 6531 2512
E: tony.yeo@drewnapier.com

The contents of this update are only intended to provide general information on the subject covered. Nothing in this publication should be treated as specific professional legal advice concerning any particular business, operational or other situations with which you might be faced. Drew & Napier LLC accepts no liability for, and does not guarantee the accuracy of, the information contained in this publication, and does not accept any liability for any loss or damage arising from any reliance thereon.