The Legal 500

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. 

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.

On 13 September 2011, the Singapore Government released a public consultation paper on the proposed introduction of a consumer Data Protection (DP) regime in Singapore.

By Venisha Lakshmi Nair

In the recent case of Mano Vikrant Singh v Cargill TSF Asia Pte Ltd [2011] SGHC 241, the High Court held that a clause in an employee incentive award plan which forfeits deferred incentive payments if the employee resigns and joins a competitor is not a restraint of trade.

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 Sandra Seah and Tony Quek

Developers and Owners Environmental sustainability is now a key criteria in the assessment of a building’s credentials. Due to the ongoing efforts of governmental agencies such as Building & Construction Authority (BCA) and National Environment Agency (NEA), more energy efficient and innovative buildings are being constructed 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.

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.

Despite its small land area and lack of natural resources, Singapore has made great strides in mitigating greenhouse gas emissions and improving energy efficiency.

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.

Contents

Making claims against financial
institutions – Some guidance from
the Court of Appeal 1
Purchaser of multiple properties saves
more than S$400,000 in stamp duty 2
The bright-line test for novelty not so
bright anymore? 3

The National Wage Council ("NWC") is a tripartite body comprising representatives from employers, trade unions and Government. The NWC develops a national consensus on wage and wage-related matters and issues guidelines on these matters every year.

There are two arbitration regimes in Singapore; 'domestic' arbitrations governed by the Arbitration Act 2002 (Cap.10, 2002 Rev.Ed.) and 'international' arbitrations governed by the International Arbitration Act (Cap. 143A, 2002 Rev.Ed.).  This article will discuss the international arbitration system.

Singapore has a reputation for being one of the most corruption-free countries in the world. In the Doing Business 2010 Report ("the Report") issued by the World Bank, Singapore was ranked as the easiest place in the world to conduct business, and was ranked fourth in the world and first in Asia for having the least corruption in its economy.

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”).

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. 

In what the Singapore Court of Appeal termed as the longest marriage to come before the courts in recent years, it clarified two important issues in the division of matrimonial assets, namely, the “cut-off date” for determining matrimonial assets and the approach to be taken in the division of matrimonial assets.

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)

The tax practice at ATMD Bird & Bird LLP provides you the highlights of significant tax changes for businesses in the 2011 Budget delivered by Singapore’s Finance Minister on Friday 18 February 2011.

Currently, companies doing business in Singapore pay income tax at the corporate tax rate of 17%, effective from Year of Assessment 2010. Partial tax exemptions of 75% of the first S$10,000 of chargeable income and of a further 50% on the next S$290,000 of chargeable income, provide for tax exemption of S$152,500 on the first S$300,000 of a company’s chargeable income. Companies can achieve more tax savings under specific tax regimes.

This article provides an overview of income tax, goods and services tax and stamp duties in Singapore. The main inland taxes in Singapore are income tax, GST, property tax and stamp duties. These taxes are administered by the Inland Revenue Authority of Singapore (IRAS) as agent of the Government.

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.

(1) Plea of mistake succeeds in the District Court (2) Business methods patentable in US? (3) Latest edition of Primary Rules for Arbitrations conducted at SIAC (4)

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.

In Singapore, it is the accepted practice for an originating process to be served on a company without solicitors on record by leaving the document at, or sending it by registered post to, the company’s registered office.

Despite the disappointing outcome of the Copenhagen Climate Change Conference, where no legally binding outcome was reached, and where no real targets to achieve emissions reductions were set, Singapore has proactively continued with the implementation of its Sustainable Singapore Blueprint (“Blueprint”) which aims to achieve a 7% to 11% reduction of greenhouse gas emissions below Business-As-Usual (BAU) scenario by 2020.

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.

As part of a continued effort to address the issue of Singapore’s rapidly ageing population, the Ministry of Manpower recently released an updated set of Tripartite Guidelines for Reemployment of Older Employees (“Guidelines”) on 11 March 2010. The Guidelines supersede an earlier set of guidelines introduced in April 2008, and was finalised after one month of public consultation.

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.

Companies Act: Enhancing Shareholder Rights

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

01.05.10 - Boey Swee Siang - Naresh Mahtani

There are two arbitration regimes in Singapore; 'domestic' arbitrations governed by the Arbitration Act 2002 (Cap.10, 2002 Rev.Ed.) and 'international' arbitrations governed by the International Arbitration Act (Cap. 143A, 2002 Rev.Ed.).  This article will discuss the international arbitration system.

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

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.

Just as extreme weather, flooding and altered habitats are heralding the potentially devastating effects of climate change, increasingly stringent governmental intervention and acute public interest harbinger the corporate environment in which a business will have to operate in the near future. This article examines some of the regulatory and policy trends which may potentially impact on an enterprise with Singapore operations and offer suggestions on particular practices which an enterprise may consider implementing to stay ahead of the curve.