Legislative amendments bringing broad-ranging reform to the intellectual property (IP) regime in Singapore were tabled before lawmakers in early July 2019, following public consultations in July 2017 and August 2018.
The IP (Dispute Resolution) Bill (the IP Bill) has the following overarching aims:
(1) The consolidation of civil IP proceedings in the Singapore High Court, instead of multiple fora;
(2) The introduction of new formal procedures in the grant of patents, namely, (i) third party observations for patent applications; and (ii) a post-grant patent re-examination process; and
(3) Providing clarification that IP disputes may be arbitrated.
To note that, whilst these amendments cover all aspects of IP, this update refers exclusively to trade marks:
Consolidation of IP proceedings in the High Court
At present, civil IP disputes are heard in multiple fora including the Intellectual Property Office of Singapore, the State Courts, or the High Court depending on a multitude of factors that can hinder access to IP dispute resolution processes. The IP Bill aims to simplify this by granting the High Court exclusive jurisdiction of the following matters:
(i) infringement of registered (i.e. patents, trade marks, registered designs) and non-registered (i.e. copyright) IP rights;
(ii) passing off; and
(iii) declarations of non-infringement of patents.
A summary of the proposed position with regard to jurisdiction under the IP Bill is set out below:
Arbitrability of IP Disputes
The IP Bill sets forth amendments to the Arbitration Act (Cap. 10) and the International Arbitration Act (Cap. 143A) to clarify that IP disputes can be arbitrated in Singapore.
The amendments further provide that the resulting arbitral award (and any judgment entered in terms of the arbitral award) binds only the parties to the arbitration and not third parties. In particular, an arbitral award does not affect the rights or liabilities of third party licensees and third party holders of security interests of the IP right in dispute.
The IP Bill seeks to achieve laudable policy goals in both streamlining and expounding on the procedures available to enforce one’s IP rights.
The consolidation of civil IP disputes in the High Court may result in the increase of legal costs in the short run compared to IPOS proceedings which are generally more cost-effective. Furthermore, the “fast-track” litigation track last mooted in the October 2018 Public Consultation on IP Dispute Resolution Reforms, which aimed to reduce costs in IP proceedings in court, is conspicuously absent from the IP Bill.
That said, the consolidation of civil IP disputes in the High Court (along with future bills to introduce measures such as “fast-track” litigation) may herald the beginnings of a dedicated IP court analogous to the UK Intellectual Property Enterprise Court.
By: Denise Mirandah and Yan ChongShuo
This article was first published in the Pharmaceutical Trade Marks Group (PTMG) Law Lore & Practice September 2019 Newsletter.