Intellectual propertyi Brand search
Before a franchisor or franchisee enters the local market to seek to establish itself as a brand in Singapore, it should first conduct relevant searches to ensure that there are no conflicts with, or similarities to, existing brands. The following are the most important searches to be conducted.Trademark searches
To minimise risk of infringement, franchisees should search the local trademark registry, administered by the Intellectual Property Office of Singapore (IPOS), for any existing registered or pending trademarks that could be in conflict with the franchisor's brand; however, such searches are not exhaustive as the local registry only has records of pending or registered trademarks. Unregistered trademarks are not reflected on these records and the owner of an unregistered trademark may be able to lodge an objection with IPOS against the franchisor's application for a trademark if the application mark is similar to the unregistered trademark. Further, unregistered trademarks are protected under the common law in Singapore and the owner of an unregistered trademark may be able to bring a civil action in passing off against any person using a similar trademark.Business and company name searches
The Accounting and Corporate Regulatory Authority of Singapore (ACRA) maintains a database of businesses and companies registered or incorporated in Singapore. A franchisor or franchisee intending to incorporate a company in Singapore to conduct its franchising business in the country must first reserve with ACRA a valid company name that does not conflict with an existing company name or any business name prohibited by law. ACRA usually takes two business days to approve a name reservation application, as it conducts its own conflict checks on the proposed company name.Domain name searches
It is good practice to ensure that the desired domain names are available for registration by conducting domain name searches. Even though a particular domain name may be available for registration, that domain name may nevertheless be similar or identical to an existing registered or unregistered trademark. Cybersquatters often register domain names that are also popular trademarks or variants of popular trademarks. Trademark owners typically seek to enforce their rights against cybersquatters by alleging that those domain names were registered in bad faith. Domain name disputes of this type are usually resolved using the Uniform Domain Name Resolution Policy process developed by the Internet Corporation for Assigned Names and Numbers.Copyright due diligence
Copyright generally automatically subsists upon creation of a work. There is no requirement for copyright to be registered and no registration system for copyright in Singapore. It is important, therefore, to conduct due diligence checks to ensure that the necessary copyright clearances, licences or assignments have been obtained with respect to any source materials used in the franchise's marketing and promotional materials.Patent searches
A registered patent grants the patent holder the exclusive right to prevent others from making, using, importing or selling the patent without his or her permission. Therefore, use of a patent without the patent holder's permission could amount to patent infringement. To minimise the risk of infringement, franchisors and franchisees should carry out proper due diligence when engaging in business that involves inventions or new technology. To determine if a particular invention is protected by a patent, franchisors and franchisees can search the local patent registry administered by IPOS, or engage a qualified patent attorney.ii Brand protectionTrademark registration
There is no time limit for registering any trademark, therefore a trademark may be used by the owner without the need for registration; however, registration of a trademark confers a wider scope of protection on the trademark.
There are a number of advantages in owning a registered trademark. Unless a trademark is registered, the trademark owner cannot bring an action for registered trademark infringement or seek relief under the Trade Marks Act. A claim for infringement of a registered mark is generally easier to establish than a claim under the common law tort of passing off. The registration of the trademark also serves as a notice to the public of the ownership of the 'proprietor' and interest and rights in the trademark, and potential competitors who conduct trademark searches will be alerted that the registered trademark is not available for their use. In addition, using a mark that is registered also serves as a defence against trademark infringement claims from proprietors who may allege that their trademarks are similar to the mark.
The process to apply for registration of a trademark in Singapore is fairly straightforward. An applicant is permitted to file for several classes of goods or services within the same application (i.e., a multi-class application). The applicant may also designate Singapore through the Madrid Protocol (an international registration system of marks administered by the International Bureau of the World Intellectual Property Organization), to which Singapore is a signatory.
Where an earlier claim for the same trademark has already been filed in another Paris Convention country or a World Trade Organization member country, there is a priority claim procedure in place in Singapore. The Singapore application must be filed within six months of the date of the first filing.
Typically, an application will be examined by IPOS within about three to four months of the date that the application is filed. Thereafter, the applicant will be informed whether the application is in order for acceptance and publication, or if there are any objections to the application by third parties.
The trademark registration process is the same for both traditional trademarks such as word marks and logos, and non-traditional marks such as aspects of packaging, sound marks and shape marks. Franchisors may therefore also wish to expand the scope of protection of their brand by applying for the registration of both traditional and non-traditional trademarks, depending on the nature of the marks in question.Confidential information and trade secrets
Franchisors and franchisees should ensure that all parties who may have or have had access to confidential information or trade secrets have signed and are contractually bound by appropriate non-disclosure agreements that provide a sufficient scope of protection over the information.iii Enforcement
Franchisees should ensure that they have obtained the necessary licences or assignments of intellectual property rights from the franchisor in accordance with the general intellectual property laws of Singapore. Failure to do so may attract civil or criminal sanctions.
Generally, the owner of the intellectual property may be entitled to take legal action against an infringing party by seeking relief in the form of an injunction to stop the infringing action, obtaining profits gained by the infringing party by virtue of the infringement, or seeking damages or compensation for loss suffered because of the infringement. In the event that an intellectual property infringement is committed deliberately and to a significant extent, this may attract criminal penalties such as a fine or imprisonment.
An exclusive licensee is entitled to bring infringement proceedings against any person in his or her own name, if his or her licence so provides. Where this is the case, the exclusive licensee need not join the proprietor as a plaintiff in the action. However, for non-exclusive licensees, the right to enforce varies depending on the terms of the licence, as well as the governing law. For example, under the Trade Marks Act, a non-exclusive licensee is also entitled to bring infringement proceedings in his or her own name, unless the licence provides otherwise, but only if he or she has first called on the proprietor to instate infringement proceedings and the proprietor has refused or failed to do so within two months of being called upon. If this is the case, the non-exclusive licensee must join the proprietor as a plaintiff in the action. Under the Copyright Act, however, a non-exclusive licensee has no right of action.iv Data protection, cybercrime, social media and e-commerceData protection
The Personal Data Protection Act 2012 (PDPA) came into force on 2 July 2014. While the PDPA regulates how organisations process the personal data of individuals, it is not intended to be overly burdensome.
In general, organisations may collect, use and disclose personal data solely with notice to and the consent of the individual. To obtain valid consent, the organisation must notify the individual of the purposes of the collection, use, or disclosure. The organisation must also limit its collection, use, or disclosure of personal data to purposes that would be considered reasonable in the given circumstances, and that the individual was notified by the organisation. If the organisation wishes to use personal data for new purposes, fresh consent must be obtained in respect of these new purposes.
An organisation may only transfer personal data to another country or territory in accordance with the requirements prescribed under the PDPA. This is to ensure that organisations abroad provide for a standard of protection that is equal or greater than that prescribed by the PDPA.
Under the PDPA, organisations that outsource the processing of data to a third party will be held responsible for the acts of that third party and should ensure that its contract with the third party requires the third party to comply with the requirements of the PDPA, whether locally or abroad.
Franchisees and franchisors have to ensure compliance with the requirements under the PDPA, as failure to comply with the PDPA amounts to an offence.Cybercrime
On the other hand, there are some specific statutory laws that permit or require organisations to disclose data to law enforcement authorities, particularly where the disclosures relate to an offence. For example, under the Criminal Procedure Code of Singapore, depending on the suspected offence, law enforcement authorities may obtain a warrant to access certain decryption information for the purposes of investigation.
Previously, the Computer Misuse and Cybersecurity Act (CMCA) was in force to protect computers, programs and stored data from unauthorised access, modification, interception and interference. The CMCA was recently amended and split into two separate pieces of legislation.
The Cybersecurity Act 2018 came into force on 31 August 2018. The Cybersecurity Act establishes a framework to oversee and maintain national cybersecurity in Singapore and, most notably, establishes the Cybersecurity Commission. The Act confers upon the Commissioner significant powers to respond to and address cybersecurity threats affecting Singapore. These include powers to seize evidence, examine persons and conduct investigations.
Similarly, cybercrimes are also governed by the Computer Misuse Act. The Computer Misuse Act mirrors the language found in the previous CMCA (as referenced above). The Computer Misuse Act is not technology-specific and defines 'computer' widely, thereby capturing offences committed in relation to cloud services or online platforms. Under the Computer Misuse Act, an aggrieved company may make a police report, which will then be investigated by the Technology Crime Division.E-commerce
In relation to commercial communications, the Spam Control Act regulates the sending of unsolicited electronic mail in bulk. This may be relevant where an organisation's advertising or marketing strategy involves the sending of electronic messages in bulk to its recipients. The Spam Control Act prescribes certain requirements that may have to be met when unsolicited commercial electronic messages are sent. These requirements include the inclusion of an unsubscribe facility or opt-out function or mechanism, and labelling of the electronic message with ' ' before the title in the subject field of the electronic message.
E-commerce is also regulated under the Electronic Transactions Act, which closely matches the provisions of the UN Convention on the Use of Electronic Communications in International Contracts signed and ratified by Singapore. The Electronic Transactions Act addresses issues that may arise specifically in the context of digital signatures and contracts that are entered into electronically.
In general, Singapore has well-developed laws that recognise and support electronic transactions, in recognition of the importance of technology and the internet as part of doing business. To keep pace with the developments in involving e-commerce, franchisors or franchisees should keep a lookout for any legal developments in this fast-moving industry.Social media
While there is no legislation specifically and directly governing social media in Singapore, existing laws relating to data protection, cybercrime and e-commerce, as described above, will apply equally to the use of social media by organisations as part of the brand recognition and marketing strategy for their business.
Organisations would be prudent to take additional care when making use of social media. While the social media space continues to function in the traditional manner as an online phone book, thereby involving potential data protection and privacy issues, social media is also increasingly playing a dual role as a space for users to gather for the purposes of transacting and offering goods or services for sale, thereby effectively hosting an online marketplace where cybercrime and e-commerce issues may arise.
In August 2016, the Advertising Standards Authority of Singapore published the Singapore Code of Advertising Practice, which promotes high standards of ethics in advertising. This now addresses new advertising issues arising from online marketing platforms such as blogs, Facebook, Instagram, Twitter, etc. For instance, marketers cannot boost the user engagement of a website (e.g., the number of 'likes' on Facebook) through fraudulent means. Examples of fraudulent means include the purchase of bulk likes and creation of fake accounts. Marketers were required to have adhered to these guidelines by 29 September 2016.