An extract from The Intellectual Property Review, 9th Edition
Recent developments
i PatentsLegislation
In 2017, the PA and Rules were amended and key features of the amendments include the following.
Broadening of grace period
Before the amendments, public disclosures were only disregarded under very narrow circumstances, for instance when the disclosure was in breach of confidence. Public disclosures outside these narrow circumstances would lead to the invention being ineligible for patent protection. The amendments allow any public disclosure originating from the inventor to be disregarded if it occurs within 12 months before the patent application.
Changes to supplementary examination
Currently, patent applicants can submit an examination report issued by a foreign patent office for the same invention and IPOS then conducts a simplified examination that does not cover key patentability requirements. Under this ‘foreign route’, granted patents may not fully satisfy Singapore’s patentability standards.
The foreign route will no longer be available for patent applications filed on or after 1 January 2020. All patent applications must be fully examined by IPOS, which ensures that all granted patents fully satisfy Singapore’s patentability criteria.
CasesMillennium Pharmaceuticals, Inc v. Drug Houses of Australia Pte Ltd
The respondent had registered its anti-cancer drug with the Health Sciences Authority of Singapore (HSA), under the Therapeutic Products Regulations (TPR). Regulation 23 of the TPR required the respondent to declare if any patent was in force in respect of its drug. Although the appellant had two process patents in force in respect of the manufacture of the drug, the respondent did not make the declaration as it took the position that its drug did not infringe the appellant’s patents. Because the declaration was not made, the respondent was not required to serve the appellant notice of its application, and the appellant was unable to commence proceedings to restrain registration of the respondent’s drug.
The appellant applied for an interim injunction against the respondent in the High Court. The High Court did not grant the injunction as it held that the TPR did not allow a patent proprietor to apply for cancellation based on prospective infringing acts, namely, the anticipated sale and importation of the respondent’s drug.
The Court of Appeal allowed the appeal in part. The Court held that it was the respondent’s obligation to make the declaration under the TPR and it was for the HSA to determine whether to notify the patent proprietor. The respondent’s failure to make the declaration meant that the appellant did not get the opportunity to defend its patents, and the respondent could not argue that the appellant was using the post-registration cancellation procedure in the TPR as a ‘backdoor’ to defend its patents, after the window for it to commence proceedings to restrain registration of the respondent’s drug had closed, as it was the respondent’s actions that had resulted in the appellant being unable to commence proceedings in time.
The Court also found that where an act permitted by the product registration would infringe a patent, regardless of whether that act had been committed yet, Regulation 24(1)(a)(i) of the TPR applied to allow the HSA to cancel registration of the product. The appellant’s allegation that manufacture, import and sale of the respondent’s product would infringe its patents raised a reasonable cause of action for prospective infringement under Regulation 24(1)(a)(i) of the TPR. However, the Court declined to grant the interim injunction as the appellant had failed to demonstrate why damages would not be an adequate remedy.
Singapore Shipping Association and Association of Singapore Marine Industries v. Hitachi, Ltd and Mitsubishi Shipbuilding Co., Ltd
This dispute arose from an application to revoke a Singapore patent, jointly owned by Hitachi, Ltd and Mitsubishi Shipbuilding Co., Ltd (the proprietors). In response to the revocation application, the proprietors applied to make post-grant amendments to the patent specifications. The opponents objected to the amendment application on the basis of the proprietors’ failure to disclose, undue delay and unfair advantage.
The Registrar first considered whether the proprietors had fully disclosed all relevant matters leading to the application to amend the patent specifications. The patent family had faced invalidation trials in Japan and foreign examiners’ objections in China and Korea. The Registrar held that where the file histories of foreign patent prosecutions of the patent family were publicly available, it would suffice for the proprietors to provide a brief summary of the prosecution and details of the patent family such that an interested third party could retrieve the full reports. Where patent agents’ advice regarding the proposed amendments was protected by privilege, the proprietors were under no obligation to waive the said privilege and an adverse inference could not be drawn against such decision. The Registrar found that the proprietors had put forward the facts relevant to the reasons for the proposed amendments.
The Registrar then considered what would constitute undue delay in amending the patent specifications. In relation to pre-grant amendments, the Registrar considered that it would generally be unreasonable for the proprietors to amend their granted patent in Singapore in view of pre-grant examination objections elsewhere, unless those resulted in an allowable claim set. Given that the corresponding application in India was still pending when the proprietors sought to amend the specification in Singapore, they could not be faulted for not seeking these amendments earlier once they knew of the need to amend the patent application in India.
In relation to post-grant invalidation proceedings against the same patent family in Japan, the Registrar concluded that it was reasonable for the proprietors to await the outcome of the Japan trials and attendant amendment applications before taking out an application in Singapore to make similar amendments. However, there was a delay of almost 11 months following the conclusion of the final Japan trial before the proprietors made the amendment application. The Registrar found that the delay was not justified, particularly because the proprietors were attempting to monetise the patent in its unamended state in the relevant period.
In relation to unfair advantage, the Registrar took the view that in their discussions with potential licensees, the proprietors should, at the very least, have pointed out that some amendment to the Singapore patent was likely to be necessary. Instead, the proprietors continued to base their discussions around the unamended patent. The attempts to commercialise the patent in its unamended state, despite adverse foreign rulings on the original patent’s validity, constituted an attempt to obtain an unfair advantage from the unamended patent.
The Registrar refused the proposed amendments, in view of the unreasonable delay in applying for the amendment, compounded by the behaviour of the proprietors in their discussions with potential licensees.
Sunseap Group Pte Ltd and others v. Sun Electric Pte Ltd
The respondent patent proprietor alleged that the appellants had infringed eight out of the 12 claims in its patent (the other four claims being the ‘unasserted claims’). The appellants contended that all the patent’s claims were invalid. The appellants sought a declaration of invalidity and an order that the patent be revoked.
The High Court Assistant Registrar held that the validity of the unasserted claims could not be put in issue by way of defence in infringement proceedings pursuant to Section 82(1)(a) PA. However, the Assistant Registrar also held that revocation proceedings could be commenced in the High Court by way of counterclaim. The respondent patent proprietor appealed against this second finding.
The High Court held that it did not have original jurisdiction over an application to revoke a patent. Accordingly, the High Court allowed the respondent patent proprietor’s appeal and ordered that the defence and counterclaim be amended so as to remove any references to revocation.
On appeal, the Court of Appeal disagreed with the High Court’s decision and held that in cases involving applications for revocation by way of counterclaim in infringement proceedings, the High Court has original jurisdiction but only the validity of the asserted claims for infringement may be put in issue as part of the counterclaim for invalidity. In cases involving applications for revocation brought independently of infringement proceedings, the Court of Appeal held that the Registrar of Patents, not the High Court, has exclusive jurisdiction over this category of cases.
ii CopyrightLegislation
On 17 January 2019, the Ministry of Law (MinLaw) and IPOS issued the Singapore Copyright Review Report (Report), which outlines proposed changes to the CA with the aim of updating Singapore’s copyright regime to better support creators and the use and enjoyment of creative works in the digital age.
Key proposed changes to the CA include the following.
New civil and criminal liability provisions relating to streaming of audio-visual content
Civil and criminal liability will be imposed on people who wilfully make, import for sale, commercially distribute or sell a product (which can be a hardware device or a software application) that can be used to access audio-visual content from an unauthorised source. Additionally, it must be designed or made primarily for providing access to such content; advertised as providing access to such content; or sold as providing access to such content, where the retailer sells a generic device with the understanding that ‘add-on’ services such as the provision of website links, instructions or installation of subscription services will subsequently be provided.
Civil and criminal liability will also be imposed on service providers who do not sell devices, but instead, for a fee, either sell software, or otherwise enable devices to access content from unauthorised sources (e.g., on devices that a consumer already owns, installing and setting up applications that enable access to content from such sources).
Attributing creators whenever their works are used
A new right of attribution will be imposed for authors of literary, dramatic, musical and artistic works in relation to those works and adaptations of them, and for performers for performances. The right, which will be personal to the author or performer (and not transferable), will not apply to specified works and performances, for example a computer program or a work created in the course of employment. The right will last for the duration of copyright or protection period of a performance (as the case may be). Defences and exceptions to the right of attribution have also been proposed.
Granting creators default ownership of certain commissioned works
Default ownership of commissioned photographs, portraits, engravings, sound recordings and cinematograph films will be with the creator instead of the commissioning party.
For the general employment situation, employers will continue to have default copyright ownership of literary, dramatic, musical and artistic works. Moreover, employers will have default ownership of the rights in other subject matter (such as sound recordings and cinematograph films) created by employees. The current default ownership rules would be retained for journalist–employees.
Facilitating uses of works for text and data mining
Copying of copyrighted materials will be allowed for the purpose of data analysis. Additional safeguards and conditions will have to be met for the exception to apply, for example the user must have lawful access to the works that are copied and the user cannot distribute the works to those without lawful access to the works.
Strengthening the general fair use exception
The CA currently provides for an open-ended fair use exception, which permits uses of copyrighted works without permission from the copyright owner, as long as the courts deem the specific use as being fair. The CA lists five non-exhaustive factors to take into account when determining whether a particular use is fair or not: (1) the purpose and character of the use, including whether the use is commercial in nature or for non-profit educational purposes; (2) the nature of the creative work; (3) the amount of the creative work that has been copied, or whether the part that is copied is substantial to the whole of the creative work; (4) the effect of the use on the potential market for, or value of, the creative work; and (5) the possibility of obtaining the creative work within a reasonable time at an ordinary commercial price.
The amendments will remove the fifth factor because it may not be relevant in all cases, will describe the open-ended exception as fair use, and will clarify how the fair use exception operates vis-à-vis the other exceptions, including the specific fair dealing exceptions.
Facilitating educational uses by non-profit schools
A new purpose-based exception for educational uses will apply to any online work that is accessible without the need for payment at the time of access. The use of the online work must be in the course of any activity that has an educational purpose (such as giving or receiving instruction) and limited to reproducing, adapting or communicating it. The persons who can avail themselves of the exception will be limited to students, teachers and government officers who perform curriculum or content development functions.
Protecting certain exceptions from being restricted by contracts
A contractual term that attempts to override an exception will not be allowed if it is unreasonable. The current list of exceptions that cannot be restricted by contracts will be expanded to include exceptions for reproduction for purposes of judicial proceedings or professional advice, exceptions relating to galleries, libraries, archives and museums, and the new exception for data analysis.
Enhancing collective rights management
A new class licensing scheme for collective rights management organisations will be administered by IPOS. Any entity that carries out collective licensing activities in Singapore will be automatically subject to and have to comply with all licence conditions.
Setting an expiry date for the protection of unpublished works
The amendments will limit the duration of copyright protection for unpublished works. The draft legislative bill has not yet been made available to the public for comments.
CasesI-Admin (Singapore) Pte Ltd v. Hong Ying Ting and others and another suit
The plaintiff commenced a suit against the ex-employees of the defendants for, inter alia, copyright infringement and breach of confidence. Materials relating to the plaintiff were found in the defendants’ possession, and the plaintiff argued that the defendants’ reproduction of the plaintiff’s materials (source codes, databases and technical infrastructure details, plus business development and client-related materials) amounted to copyright infringement, and that the defendants’ products and services also infringed the plaintiff’s copyright. The defendants had acted in breach of their duty of confidentiality to the plaintiff by reproducing its confidential material and using its source codes and databases to generate the defendants’ payroll reports.
The High Court held that copyright subsisted in the plaintiff’s materials. Although specific human authors could not be identified, the Court was satisfied that the materials had human authors, namely, the plaintiff’s employees.
In considering whether the plaintiff’s materials were original, the High Court clarified that this threshold was a low one. A work was original as long as it was independently created by a human author and possessed some minimal degree of creativity. The Court was satisfied that the plaintiff’s independent work in creating the source codes satisfied this threshold, the plaintiff’s databases were original compilations of facts, and the business development materials required business skill to be conducive to clients’ data input. However, the Court did not find that there was any copyright infringement as any similarities between the plaintiff’s products and the defendants’ products were due to the functional and statutory requirements of what the relevant products (i.e., payroll reports) should generally contain. The Court considered the overall architecture and design of the software, including the programming language used and the logic of the source codes, and found that there were significant structural differences between the products.
The claims for breach of confidence were unsuccessful. The High Court found that the plaintiff’s source codes, systems, database structures and client materials were confidential, but only to the extent that the information in question was not found in the public domain and was original. The defendants owed obligations of confidence to the plaintiff, but there was no use of the plaintiff’s confidential information in the relevant sense. Mere copying did not amount to actual use for the purposes of making out the breach of confidence claim. The plaintiff was not able to show that the defendants had used the plaintiff’s material to generate material that was used in the course of the defendants’ business.
iii TrademarksBurberry Ltd v. Megastar Shipping Pte Ltd and another appeal
The respondent was a freight forwarder company providing transhipment services in Singapore. An Indonesian company hired the respondent to arrange for the transhipment of two sealed containers originating from China to Batam. During the transhipment process, Singapore Customs found and seized more than 15,000 counterfeit goods. The appellant trademark proprietors commenced proceedings against the respondent for trademark infringement under Section 27 TMA.
The High Court in this case (sub nom Louis Vuitton Malletier v. Megastar Shipping Pte Ltd (PT Alvenindo Sukses Ekspress, third party) and other suits) was of the view that for the purposes of the TMA, the importer or exporter of the goods was either the shipper in China or the ultimate consignee of the cargo in Batam. The mere fact that the respondent was named as the consignee in documents did not mean that it was an importer or exporter for the purposes of the TMA, and the respondent was not liable for trademark infringement.
The Court of Appeal agreed with the High Court decision and dismissed the appeal. Mere intention to export is insufficient to find liability under Section 27 TMA, although where there are accompanying actions that are clearly directed at fulfilling the intention to export or where there is clear evidence that export would definitely take place (for instance, the alleged exporter is under a contractual obligation to do so), a trademark proprietor could apply for an injunction against the alleged exporter. The evidence must be clear that the export is imminent or would definitely take place. To establish liability, the alleged importer or exporter must have intended to do the act constituting the infringing use with knowledge or reason to believe that there was a sign present on the goods in issue. On the facts of the case, there was no evidence that the respondent knew or had reason to believe that there were signs on the goods in issue. Thus, the respondent did not ‘use’ the signs and was therefore not liable for infringement of the trademarks.
Scotch Whisky Association v. Isetan Mitsukoshi Ltd
This was an appeal to the High Court arising from the Registry’s decision to dismiss the appellant’s opposition to the respondent’s application for the trademark ‘Isetan Tartan’ in Class 33 for ‘all alcoholic beverages except beer; sake’. The appellant argued that tartan was an iconic symbol of Scotland and would be misleading as to geographical origin if used on whisky that did not originate from Scotland. In the alternative, the appellant argued that ‘tartan’ was a geographical indication used in relation to whisky.
The Court allowed the appeal against the Registrar’s decision. In assessing the deceptiveness of the mark with reference to the goods or services applied for and in the context of the relevant trade (i.e., whether the mark was deceptive to consumers in Singapore who drank and purchased whisky), the Court was satisfied on the evidence that tartan was an iconic symbol of Scotland and that Singaporean consumers recognised tartan as such. The association between tartan and Scotland was sufficiently strong that the use of the mark on non-Scottish whisky products would be deceptive as to the product’s geographical origin. The Court did not consider that the word ‘Isetan’ in front of the word ‘Tartan’ would evoke Japan (as the origin of the Isetan department store chain) in place of Scotland. The average consumer would not think that all of Isetan’s varied products were produced in Japan. Hence, the non-Scotch whisky bottles sold in Isetan would cause the public to be deceived into thinking that the whisky originated from Scotland.
However, the Court was of the opinion that if the mark were used on an alcoholic beverage that was not whisky, it would not be sufficiently deceptive because Scotland was globally renowned for its whisky and the deceptiveness of the ‘Isetan Tartan’ mark had been enhanced because it was applied to whisky products.
The High Court declined to find that ‘Isetan Tartan’ contained a geographical indication, as a geographical indication was limited to matters that were geographical locations or places. An iconic symbol like tartan did not refer to a physical place and thus fell outside the scope of a geographical indication. The Court found no merit in the appellant’s alternative submission that use of a geographical indication extended to use of marks that evoked a geographical indication.
Tuitiongenius Pte Ltd v. (1) Toh Yew Keat and (2) Economics @ Tuitiongenius Pte Ltd
The first defendant was the former managing director of the plaintiff. The plaintiff was a tuition company using the brand ‘TuitionGenius’. The first defendant started offering similar services through the company Economics @ Tuitiongenius Pte Ltd while he was still employed with the plaintiff. The plaintiff made claims against the defendants for, inter alia, passing off.
The High Court held that the claim for passing off was not made out as the plaintiff had failed to prove that it had acquired goodwill in the TuitionGenius mark. The plaintiff’s tuition centres operated under the brand name ‘REAL Education’ and not ‘Tuitiongenius’. Internal documents where the TuitionGenius mark was printed prominently did not show promotion of the TuitionGenius mark. Marketing advertisements where the TuitionGenius mark was used, but in a less prominent manner than the Real Education Centre mark, did not suffice to show promotion of the TuitionGenius mark so as to generate goodwill. Although the TuitionGenius mark constituted part of the plaintiff company’s name, that did not necessarily mean that the TuitionGenius mark had been used as a mark to promote the plaintiff’s services.
iv Registered designsAmendments to the RDA
The RDA was amended in 2017. The amendments are not a significant overhaul of Singapore’s registered designs regime, but enhance the existing registered designs regime to better support Singapore’s economic and design initiatives. The key changes include the following.
Broader scope of design protection
The new definition of ‘design’ includes virtual or projected designs, the design of artisanal or handcrafted items and colours as a design feature. The new definition is flexible enough to permit dynamic designs to be registered as it does not restrict the features of shape, configuration, colours, pattern or ornament that are applied to only static features.
Designer of a design will be the owner by default
The designer is the owner by default instead of the person who commissioned the designer to create the design, but both designer and commissioner are free to contract otherwise.
Broadening and lengthening of grace period provision
The grace period within which designers must file a design application after first disclosure of their design has been lengthened from six months to 12 months.
Allowing filing of multiple designs within a single application
Subject to certain conditions, multiple designs may be filed in the same design application, and every such application will be treated as if a separate application had been filed for the registration of each of those designs.
Facilitating the correction of non-compliance of formal requirements in application
An applicant who fails to comply with certain formal requirements in relation to an earlier application for registration of a design may correct the non-compliance by filing one or more new applications. Each of the subsequent applications will be treated as filed on the date of filing of the earlier application if certain requirements are satisfied.
Graphical user interfaces
IPOS has issued a Practice Direction, which came into effect on 20 June 2018, for the registration of graphical user interfaces (GUIs) as designs. The Practice Direction states that applicants can seek the registration of GUIs as designs under the RDA, according to the following guidelines:
- applicants must indicate the article or non-physical product that the GUI is applied to;
- applicants must file a dynamic GUI as a series of static representations of the design, where each representation shows a freeze-frame of the GUI in action; and
- each application should contain a sufficient number of different views to completely disclose the appearance of the claimed design. A total of up to 40 different views of the same GUI may be filed as representations of the design that protection is being sought for, although the Registry may, on written request, allow for more than 40 views to be filed.
v Geographical indications
The Geographical Indications Act 2014 (GIA) partially commenced on 1 April 2019 to establish a system of registration for geographical indications as part of Singapore’s commitments under the European Union–Singapore Free Trade Agreement (EUSFTA). Further provisions of the GIA came into force on 21 November 2019, relating to the following:
- Sections 4(6) to (9) (application to any use of a registered geographical indication which identifies any agricultural product or foodstuff (other than a wine or a spirit) belonging to a category of goods listed in the Schedule, in relation to any goods which are of the same category but which did not originate in the place indicated by the registered geographical indication);
- Section 15 (certain uses of registered geographical indications excepted);
- Section 16 (exceptions for prior users of registered geographical indications and trademarks);
- Section 75 (registration to be prima facie evidence); and
- Section 76 (certificate of validity of contested registration).
Part IV of the GIA, which provides that owners of all registered geographical indications are to have access to improved border enforcement measures, has yet to come into force and is expected to be effective on a later date within three years of the entry into force of EUSFTA.
In February 2020, the Geographical Indications (Amendment) Bill was passed to make technical amendments to the GIA to address issues that have arisen since the GI Registry was set up. The changes under the Bill are due to be implemented during the first half of 2020. The Bill seeks to amend the GIA for the following purposes:
- to provide that a qualification of the rights conferred under the GIA in respect of a registered GI may only be requested before a GI is registered and may not be made if the qualification of rights would render the registration of a name contained in a GI, or a term which may be a possible translation of a GI, nugatory;
- to provide that, after a GI is registered, a person may apply to the High Court for an order that a limitation of the scope of any of the rights conferred under the GIA in respect of a registered GI be entered in the register; and
- to clarify that the grounds for refusal of registration apply in respect of a variant, and that a variant that falls within any of the applicable grounds for refusal of registration may be cancelled.
Trends and outlook
The government continues to take active steps to establish Singapore as an IP hub both regionally and globally. Below are some of the recent developments within the past year.
Under the Accelerated Initiative for Artificial Intelligence, which took effect from April 2019, IPOS will accelerate grants of artificial intelligence (AI) related patents to six months, compared to a typical period of at least two years. This supports Singapore’s shift to a digital economy, and innovative enterprises that need to bring their AI products to global markets faster. Under the initiative, IPOS granted Alibaba Group Holdings Limited (Alibaba Group) an AI patent in just three months.
To advance Singapore’s position as a leading hub for alternative dispute resolution in the region, IPOS introduced the Enhanced Mediation Promotion Scheme (EMPS) on 1 April 2019 to help fund parties’ mediation costs of up to S$10,000 per mediation case where the subject matter is limited to IP rights in Singapore, and up to S$12,000 per mediation case if foreign IP rights are also involved. The EMPS helps parties cover the fees charged by the mediation service provider, the mediator’s fees and mediation-related lawyer/agent fees. Alternative dispute resolution is becoming increasingly popular among businesses and individuals looking to resolve their disputes more effectively and satisfactorily. Compared to litigation, mediation offers a more cost-effective and swifter option to resolving IP disputes globally and further helps maintain relationships between the parties. In November 2019, IPOS announced its first successful multi-jurisdictional IP mediation under the EMPS. The dispute was between an American company and a Thai businessman, and both involved Singapore and foreign IP rights. Both parties flew to Singapore for the mediation. The mediation was conducted through the World Intellectual Property Organization Arbitration and Mediation Center, which has its only overseas office in Singapore.
In August 2019, IPOS launched the world’s first mobile app for trademark registration. The app, IPOS Go, enables businesses and entrepreneurs to file their applications for Singapore trademarks directly with IPOS via their mobile devices. Filing a trademark on the app can be completed in less than 10 minutes, and filing costs are also significantly reduced as applicants are able to file their applications directly with IPOS.
In February 2020, IPOS partnered with Singapore Exchange (SGX) to launch the Intangible Disclosure Evaluation and Audit Scheme (IDEAS) programme exclusively for SGX-listed companies and companies preparing for a listing on SGX. IDEAS aims to (1) raise awareness of the value of intangible assets (IA) and encourage companies to undergo IA evaluations, by enabling companies to identify important IA information that is a key driver to their businesses, and (2) make recommendations on disclosing such information to communicate business value to the market. This will help investors better appreciate the value of IA and support companies in capital raising.
Footnotes
