An extract from The Intellectual Property Review, Edition 10
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 InfringementPatent 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:
- if the invention is a product, making, disposing of, offering to dispose of, using or importing the product or keeping the product whether for disposal or otherwise;
- if the invention is a process, using the process or offering it for use in Singapore when the person knows, or it is obvious to a reasonable person in the circumstances, that its use without the owner's consent would be an infringement of the patent; and
- if the invention is a process, disposing of, offering to dispose of, using or importing any product obtained directly by means of the process or keeping the product whether for disposal or otherwise.
Whether these rights have been infringed depends on a comparison of the alleged infringing product or process with the patent claims.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:
- to reproduce the work in a material form;
- to publish the work if the work is unpublished;
- to perform the work in public;
- to make an adaptation of the work or to do any of the above in relation to an adaptation;
- to communicate the work to the public;
- to make a copy of the sound recording or film;
- to enter into a commercial rental arrangement in respect of the recording; and
- to cause the film, insofar as it consists of visual images, to be seen in public.
Infringement occurs where a person does any of the above acts without the copyright owner's consent. The owner's rights are also infringed by acts such as:
- importing, selling, offering for sale and exhibiting in public of any article where the infringer knows, or ought reasonably to know, that the article was made without the copyright owner's consent;
- falsely attributing the authorship of a work or the identity of the performer of a performance; and
- falsely removing or altering the rights management information electronically attached to a work.
The registered owner has the exclusive rights to:
- 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
- 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 DefencesPatents
Common defences to infringement include that:
- it is an act done privately and for non-commercial purposes;
- it is an act done for experimental purposes relating to the subject-matter of the invention; and
- it is an act that consists of the extemporaneous preparation of a medicine for a person in accordance with a medical or dental prescription or consists of dealing with such medicine in permitted acts that do not constitute infringement.
A key part to any defence against a claim of patent infringement is the defendant's right to challenge the validity of the patent being asserted. The validity of a patent may be challenged by, inter alia, asserting that the invention had been disclosed to the public by any party through commercial sale and use, display at trade fairs and conventions, or by publication of the details of the invention provided such acts took place prior to the filing date of the patent application.Trademarks
Common defences to infringement include that:
- the defendant's mark is not identical or similar to the plaintiff's trademark or is used on goods or services that are not similar to the goods or services for which the plaintiff's trademark is registered;
- it does not amount to infringement, on one or more of the following grounds:
- it is the use by the defendant of his or her name or the name of his or her place of business if such use is in accordance with honest practices;
- the use is descriptive of the characteristics or intended purpose of the goods or services;
- the use first began before the earlier of the registration of the mark or the first use by the registered owner of the mark and has been continuously used since then;
- it is the use of the defendant's registered mark;
- the use constitutes fair use in comparative commercial advertising or promotion; or
- the use is in relation to parallel imports;
- the registration of the plaintiff's trademark should be revoked on certain grounds (e.g., the mark has not been used in relation to the goods or services for which it has been registered for a continuous period of five years or that in consequence of inactivity it has become the common name in the trade for the product or service for which it is registered); or
- the registration of the plaintiff's trademark should be declared invalid (e.g., the registration was obtained by misrepresentation or fraud).
Common defences to infringement include that:
- copyright does not subsist in the work;
- the plaintiff is not the owner of the copyright;
- the defendant has not infringed any copyright either because the defendant's work is not sufficiently similar to the plaintiff's, or because he has not in fact copied the plaintiff's work, or because he had a licence (express or implied) to do the acts complained of;
- in the case of alleged infringement by dealing in infringing copies, the defendant did not know or had no reason to believe that the articles dealt in were infringing copies (this, however, only goes to the defendant's liability for damages); and
- the acts complained of constitute 'fair dealing' under the CA.
Common defences to infringement include:
- acts done for a private non-commercial purpose;
- acts done for the purpose of evaluation, analysis, research or teaching; and
- acts done in relation to genuine articles, that is, those marketed in and outside of Singapore, by the registered owner or with his or her consent (conditional or otherwise).
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.