The Legal 500

The Computer Misuse Act has been renamed the Computer Misuse and Cybersecurity Act. The name change is only the first sign of the myriad of changes within the body of the Act, with new provisions giving the Government “sweeping powers over cyberspace”. The wording of the law now allows a very broad interpretation of the circumstances in which the Government may exercise such “sweeping powers” to order "measures and requirements... as may be necessary...

In accordance with Rule 35(2)(c) of the Common Regulations under the Madrid Agreement and Protocol, the Director General of the World Intellectual Property Organization (WIPO) has, at the request of the Office of the United States of America, established the following new amounts, in Swiss francs, of the individual fee that is payable when the United States of America is designated in an international application, in a designation subsequent to an international registration or in respect of the renewal of an international registration:

In November 2012, Mexico deposited its instrument of accession to the Madrid Protocol for the International Registration of Marks (“Madrid Protocol”) with the World Intellectual Property Organisation (“WIPO”), the body administering the Madrid Protocol. The treaty will enter into force with respect to Mexico on 19 February 2013. Mexico is the third Latin American country, after Cuba and Colombia, to join the Madrid Protocol.

The Personal Data Protection Act (“PDPA”) will come into force s and takes effect in phases. The Ministry of Communications and Information (“MCI”) has set up a Personal Data Protection Commission (“PDPC”) and a Data Protection Advisory Committee on 2 January 2013 to administer and advise on the PDPA.

After 3 public consultations held by the Ministry of Information, Communications and the Arts (“MICA”), the PDPA was finally passed by the parliament on 15th October 2012. 

Parliament’s aim in the passing of the PDPA was to regulate the activities of an organisation concerning the collection, use and disclosure of personal data. To ensure that the rules laid out by the PDPA is followed, a Data Protection Commission shall be established pursuant to the PDPA. Further to this, a Do Not Call (“DNC”) Register regime will be set up specifically to regulate and control the activity of telemarketing either by voice calls, short-messaging service or facsimiles.

This update discusses the proposed revisions to the Patents Act, encapsulated in the Patents (Amendment) Bill (“Bill”). The proposed changes in the Bill would introduce a shift from the present self-assessment system to a positive grant system, whereby only patent applications which have fully positive examination reports and meet all the requirements under the Patents Act will be granted.

Earlier this month, we reported that the list of gTLD applications would be published on 13 June 2012. "Reveal Day" has arrived and the list of gTLD applications has been published on ICANN's website. Please click here to download a PDF copy of this list for your review.

We reported in our May 2012 update on gTLDs that the Internet Corporation for Assigned Names and Numbers (ICANN) had delayed publication of the list of gTLD applications due to technical difficulties. ICANN has now announced that it is targeting to publish the list of applied-for domain names on 13 June 2012.

Restrictive covenant (RC) clauses are common in Singapore employment contracts, with the Singapore courts generally taking a strict approach towards enforcing them.

On 23 March 2012, Singapore signed a historic Memorandum of Understanding (MOU) with the C40 Cities Climate Leadership Group (C40) to participate in the C40 as an observer city.

On 2 May 2012, the Monetary Authority of Singapore (“MAS”) accepted all recommendations made by the Corporate Governance Council (“Council”) on the Code of Corporate Governance (“Code”), and issued the revised Code of Corporate Governance.

On 14 September 2011, the Singapore Exchange Securities Trading Limited (“SGX”) announced amendments to listing rules to strengthen corporate governance practices and foster greater corporate disclosure.

There are currently only 22 generic top level domains (gTLDs) in the world. A top level domain is the last part of a domain name (e.g. .com).

In P.T. Swakarya Indah Busana v Haniffa Pte Ltd and another [2012] SGHC 69, the Plaintiff sought to invalidate the Defendants’ 15 “Martin” formative trade marks (“the Challenged marks”) on grounds that the marks were registered in bad faith (section 7(6) read with section 23(1) of the Trade Marks Act (the “Act”), and that there was fraud in the registrations or the registrations were obtained by misrepresentation (section 23(4) of the Act).

The recent decision of the Singapore High Court (“the Court”) in the appeal of Wong Seng Kwan v Public Prosecutor [2012] SGHC 81 (“Wong”) clarifies the law relating to the obligations of a person who finds lost property (“a Finder”).

On 11 April 2012, The Monetary Authority of Singapore (MAS) announced that it took a civil penalty enforcement action against Mr Lau Kee Swan for contravening section 201(b) of the Securities and Futures Act (SFA), which prohibits the employment of manipulative and deceptive devices in connection with the subscription, purchase or sale of securities.

On 22 March 2012, the Singapore Exchange (SGX) introduced dual currency trading which enables listed securities to be traded in two different currencies.

By Oh Pin-Ping

In Astrazeneca AB v Ranbaxy (Malaysia) Sdn Bhd [2012] SGHC 7, the Singapore High Court clarified the operation of s. 82 of the Patents Act (“the Act”), which provides for the circumstances in which the validity of a patent may be put in issue. 

The tax practice at ATMD Bird & Bird LLP provides you the highlights of significant tax changes for businesses in the 2012 Budget delivered by Deputy Prime Minister & Finance Minister Mr Tharman Shanmugaratnam on Friday 17 February 2012.

By Edmund Kok

On 19 January 2012, the Singapore High Court granted judgment in favour of AstraZeneca AB (SE) (“AstraZeneca”) against Sanofi-Aventis Singapore Pte Ltd (“Sanofi-Aventis”), dismissing Sanofi-Aventis’ claim that AstraZeneca’s Statement of Claim be struck out and wholly dismissed. 

By Lorraine Tay

Choice Fortune Holdings Ltd v Seiko Holdings Kabushiki Kaisha [2011] SGIPOS 20 (“Choice Fortune”) The Applicant’s mark was advertised for opposition on 19 August 2011. 

By Tiong Hou Yuen

The validity of patents is often challenged by Defendants in patent infringement actions. In Astrazeneca AB v Ranbaxy (Malaysia) Sdn Bhd [2012] SGHC 7 the Plaintiff brought an action for a declaration that the Defendant’s intended importation of certain pharmaceutical products would infringe specific claims of the Plaintiff’s Singapore Patent No. 49283 (“SG49283”). 

By Vincent Wong

The Evidence Act (Chapter 97) (the “Act”) which was first enacted in 1893 when Singapore was part of the Straits Settlement will undergo another round of substantive amendments. 

By Sandra Seah

Singapore’s demand for natural gas, which currently fuels 80 per cent of its electricity needs, is expected to soon exceed supply. 

Wan Dui Da Intellectual Property Express provides updates of WHD and the development in intellectual property laws and cases in China mainland. If you are interested in any IPR-related issues and looking for legal advice, please contact us.

By S. Sharma

Payments for intellectual property (IP) can attract various tax consequences. Both payers and recipients of such payments need to manage their tax affairs.

By Lionel Ser

On 10 January 2012, the Singapore Patent Office published a Public Consultation on proposed changes to the Patents Act,

By Alban Kang

Trade mark disputes may now be settled through mediation at the WIPO Center Office in Singapore.

The issue before the Court of Appeal was whether the registration of the trade mark NIKE should have been rejected on the ground that as of the registration date of the NIKE mark, there existed another identical earlier mark on the trade mark register. The appellant, Campomar SL ("Campomar"), was the proprietor of the earlier mark and had appealed against the decision of the High Court Judge, who had refused to overturn the decision of the Principal Assistant Registrar of Trade Marks ("PAR"), and allowed the trade mark NIKE to proceed to registration.

It is a common practice for companies to seek patent protection in various jurisdictions for the same invention. As each of these patent applications would need to undergo search and/or examination by the different patent offices, it is therefore not only a costly process for applicants but also one which requires significant time and effort from the patent offices to perform.

By Deryne Sim

Starting from 3 January 2012, parties to trade mark opposition, invalidation and revocation proceedings before the Intellectual Property Office of Singapore (“IPOS”) may resolve their disputes through mediation under the World Intellectual Property Organization (“WIPO”) Rules, as administered by the WIPO Arbitration and Mediation Center in Singapore. 

By Arthur Yap

Trade mark oppositions, like any court proceeding, are governed by well-defined procedural rules that are designed to promote certainty, transparency and the expeditious disposal of disputes.

By Howard Yap

Singapore’s existing patent system is a self-assessing one, in that a patent grant will not be refused on the ground that the invention is assessed to be not patentable.

By Joyce Ang

Ferrero SPA (“Ferrero”) is the proprietor of various registered “Nutella” trade marks (including the “NUTELLA” word mark and the composite “nutella and device” mark) in Singapore (collectively referred to as the “‘Nutella’ marks”). Sarika runs The Connoisseur Concerto café outlets in Singapore. Sarika had used the name ‘Nutello’ on its drinks menu.

IPOS have announced increases to their official fees. We highlight some of the key fee changes below.

Ministry Issues Further Public Consultation on Framework Details for National “Do-Not-Call” Registry

The Ministry of Information, Communications and the Arts (“MICA”) has issued a consultation paper relating to the setting-up of a Do-Not-Call (“DNC”) registry. This follows favourable feedback on this proposal, which was raised in MICA’s earlier consultation on setting up a consumer data protection framework in Singapore (“DP Consultation”). Please click here to refer to Drew & Napier LLC’s update on the DP Consultation.

Singapore patent filings are dominated by foreign entities. Over the past ten years, on average, more than 90% of Singapore patent applications filings were initiated by foreign entities.

The Hearing and Mediation Division of the Intellectual Property Office of Singapore (“IPOS”) has recently issued a Circular relating to the filing of evidence of non-use in trade mark revocation proceedings and the proprietor’s obligation to file evidence.

S. 136 of the Singapore Copyright Act (Cap. 63) (the “Act”) makes it an offence to trade in “any article” which the offender “knows, or ought reasonably to know, to be an infringing copy of the work”.

On 29 March 2011, the Singapore High Court granted judgment1 in favour of Martek Biosciences Corporation (“Martek”) against Cargill International Trading Pte Ltd (“Cargill”), restoring Martek’s patent that was earlier revoked2 and dismissing Cargill’s claim that Martek’s patent is invalid.

In the recent decision of City Chain Stores (S) Pte Ltd v. Louis Vuitton Malletier [2009] SGCA 53 (“City Chain v LVMH”), the Singapore Court of Appeal (“Court”) considered the issue of the types of use of a trade mark that would constitute an infringement of a registered trade mark under the Singapore Trade Marks Act (“the Act”).

As previously mentioned (see News dated 30 November 2010), the Swiss Federal Supreme Court held, in a decision dated 8 September 2010, that collecting dynamic IP addresses of persons uploading copyright-protected works and then forwarding those addresses to copyright holders so as to enable them to enforce their rights constitutes an unlawful and unjustifiable breach of the privacy of the persons concerned.

Logistep AG had been extracting the dynamic IP addresses of persons uploading copyright-protected works to P2P networks and then forwarding those addresses to the relevant copyright holders in order to allow them to identify the persons using the IP addresses by filing criminal complaints against “unknown” persons.

Written by Tim Harris

The UK MHRA’s ‘Operation Singapore’ investigation into the infiltration of counterfeit medicine into the UK’s supply chain during five months in 2007 has concluded with a British man being sentenced to eight years imprisonment. 

INDEX TO ARTICLES
Trade Marks / Passing Off....................................1
LV Mark Not Tarnished.................................1
Amanusa Triumps Again...............................3
Mio v Singtel’s Mio.........................................5
Legend – “Shen Hua”....................................6
Clinique Not Clinic.........................................8

In the November 2010 issue of IP Pulse (Singapore), we reported on the Productivity and Innovation Credit (“PIC”) scheme announced by the Singapore Government in Budget 2010. (See “New tax deductions for intellectual property related expenses” by S. Sharma & Huang Wenshan)

1. Creative Commons – What it is and How to use it        2. Clearing the Way: Copyright and Licenses

The Singapore Patents Act (SPA) conveniently provides applicants with a choice of patent prosecution procedures to obtain a grant of a patent. The options available are generally referred to as slow track or fast track options.

This article discusses the application of the offence of ‘wilful’ and ‘significant’ infringement under Section 136(3A) of the Copyright Act (Cap.63).

This article features the decision of the Singapore High Court in Chong Peter v. Triple 8 Enterprise Pte. Ltd. [2010] SGHC 9.

Patents have a significant influence on a company’s success. But simply filing patents is not enough. A comprehensive, well developed patent strategy is critical for success.

In the recent decision of Valentino Globe BV v Pacific Rim Industries Inc [2010] SGCA 14, the Singapore Court of Appeal affirmed the decision of the High Court in rejecting Valentino Globe BV’s (the “Appellant”) opposition to Pacific Rim Industries’ (the “Respondent”) application for the registration of its “Emilio Valentino & V Device” mark in Class 18.

The information in this article is provided subject to our terms and conditions of use.

The Patent Corporation Treaty (PCT) has been a popular choice among patent applicants who wish to file patent applications in numerous countries as it allows patentees a single international patent application applicable to 141 countries. However, the application can only be granted by a local patent office after the international application enters the national phase in each country. Although the PCT application is examined by an International Search or Preliminary Examining Authority (ISA or IPEA) during the International Phase, most patent offices conduct their own examination at the national phase. Despite this, applicants choose the PCT as it reduces considerably the amount of time and money spent in filing a patent application in each country.

One of the lesser known facts about the Singapore patent system is that the search and examination of Singapore patent applications is not conducted by the Intellectual Property Office of Singapore (IPOS). Instead, this important task has been contracted out to foreign Patent Offices, namely the Australian, Austrian, Danish and Hungarian Patent Offices.

The decision of the Singapore High Court (“SGHC”) in PT Swarkarya Indah Busana v Dhan International Exim Pte Ltd [2009] SGHC 280 brings out key considerations in determining whether a trade mark has been registered in bad faith.

Patent Prosecution Highway Pilot Programme The one-year IPOS*-USPTO pilot programme, which commenced on 2 February 2009, has been extended to allow both offices to obtain more information from the programme to better assess the feasibility of the programme. Applicants are able to continue to make use of the programme during the extended period. Briefly, the purpose of the programme is to accelerate the processing of patent applications in one patent office by making use of the search and examination result of corresponding patent applications conducted by the other patent office.

In this recent case, the Singapore Court of Appeal (the “Court”) applied well established propositions of patent law to a patent infringement claim relating to a software patent. The Court also commented on the application of the plea of innocent infringement provided by section 69(1) of the Patents Act (Cap. 221).

In a Court of Appeal decision regarding a patent infringement case, it was held that the defence of “innocent infringement” applies to damages and not liability.

The Registrar of Patents has issued a decision that when considering an application for restoration of lapsed patents, impecuniosity is not a valid ground for non-payment of renewal fees.

The Applicants, Pensonic Corporation Sdn Bhd, applied to register (“Applicants’ Mark”) in Class 9 for electronic products. The Opponents, Matsushita Electrical Industrial Co Ltd, owned registrations of the “PANASONIC” mark (“Opponents’ Mark”) in numerous classes in Singapore for an extensive variety of goods and services. The Opponents’ Mark had been registered in Class 9 for electronic products since 1968 in Singapore.

In this trade mark opposition case, the Registry considered the issues of whether commonly used words in local dialects were capable of distinguishing a trader’s services from those of others, and whether evidence of substantial use of a mark was relevant when the mark was held to have no capacity to distinguish a trader’s services from those of others.

In this case, the luxury fashion brand Valentino Globe B.V. (“the Opponents”) failed in their bid to establish that their marks were well known in Singapore and also failed to prevent the registration of the mark “Emilio Valentino & Device “ ”by Pacific Rim Industries Inc. (“the Applicants”).

This case involved an application for a device mark showing a slug of toothpaste by Colgate- Palmolive Company (“the Applicants”) for dentifrices in Class 3. The mark was opposed by The Proctor & Gamble Company (“the Opponents”) on the grounds that it was not distinctive and not capable of distinguishing as a badge of origin.

The Opponents, Worldwide Brands, Inc., failed to adduce sufficient evidence that their CAMEL composite marks were well known marks and failed to prevent the registration of the SWEETCAMEL mark in Class 25. The Registrar’s decision which is summarized below was affirmed by the High Court.

The High Court allowed an application by Love & Co. Pte Ltd (“Love & Co.”) to invalidate for nondistinctiveness and revoke for non-use the trade mark registration for “LOVE”. The simple word mark “LOVE” had been registered in respect of jewellery, precious stones (including diamonds) and precious metals by The Carat Club Pte Ltd (“TCC”).

In this appeal against the unfavourable decision of the Principal Assistant Registrar of Trademarks (“PAR”), Mobil Petroleum Co., Inc. (“Mobil”) failed it its bid to prevent registration of the “Mobis” trademark by Hyundai Mobis (“Hyundai”) in respect of Class 12 goods. This is another decision by the High Court touching on the relatively new section 8(3) of the Singapore Trademarks Act which governs trade mark opposition on the basis of a “well-known” mark.

The Singapore Court of Appeal has refused to grant leave to appeal against a High Court Judge’s decision to uphold the District Judge’s judgment that the “virtual maps” placed online by a private map provider infringed the copyright belonging to its ex-licensors, a local statutory board.

Amanresorts, the owner of the AMANUSA resort in Bali took out an action to restrain the use of “AMANUSA” on a residential property development in Singapore. The action succeeded on the grounds of passing off and an injunction was granted on the basis that AMANUSA was a well-known mark in Singapore.

The High Court granted relief in an action for trade mark infringement and passing off of Louis Vuitton 4 trade marks and shed some light on how the question of dilution of well-known trade marks would be approached.

The first defendant was the proprietor of two “Rooster” trade marks, one registered in Singapore covering cordyceps, and the other registered in China. The background of its proprietorship of both marks is set out as follows:

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 this issue, we look at some of the recent interesting Intellectual Property cases.

The objective of the Registered Design regime confers legal protection for designs applied to articles. The Registered Designs Act interprets a design as the “features of shape, configuration, pattern or ornament applied to an article by any industrial process”. Thus, the law of designs recognises both creative and artistic character of an industrial design. Since the introduction of this legislation in 2000, the Registry of Designs has seen a steady increase in the number of local applicants, particularly in the field of jewellery design, with 6 local-based jewelers dominating the top 10 local applicants ending year 2008. Most of the designs filed in Singapore relate to consumer electronic products , automobile designs , furniture designs, cosmetics products (bottles and packaging) and luxury goods.