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Singapore Intellectual Property Laws – a Maturing Jurisprudential Landscape

PATENT

Patent holder prevails in patent infringement suit:

Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and Others [1]
On 16 April 2002, Trek was granted a Singapore patent for a portable USB enabled computer data storage device. Trek’s product is sold under Trek’s registered trademark “ThumbDrive”. Trek’s patent has also been granted in the UK, New Zealand and South Africa. On 17 April 2002, Trek issued notification letters to FE Global Electronics, Electec, M-Systems (NASDAQ: FLSH) and Ritronics Components. Trek promptly sued the four companies, alleging that M-System’s “Diskey” and Ritronics’ “SlimDisk” infringed Trek’s “ThumbDrive” patent. Before the hearing, Trek applied to amend its patent. This was the first time that a Singapore court had to deal with issues of amending a patent during infringement proceedings. At first instance, Lai J. accepted Trek’s amendments, holding that Trek’s patent was valid (in both its amended and unamended forms) and that the defendants had infringed Trek’s patent. On 30 December 2005, Singapore’s Court of Appeal dismissed the appeal. The Court of Appeal addressed three issues:

1. Was the ThumbDrive device within the ambit of the patent?

The Court held that “the language of a patent is deemed to have been addressed by the inventor not to a panel of equity draftsmen but to the man skilled in the art”. In finding that Trek’s ThumbDrive was protected under the patent, the Court endorsed the purposive approach to patent claim interpretation because it achieves a balance between the rights both of the patentee and third parties. Catnic and Kirin-Amgen were cited with approval.

2. Were the amendments properly allowed?

The Court endorsed a more lenient approach to amendments because the transparency of the patent registration system means that there is little scope for abuse. As examination reports are available for public inspection, adverse parties could evaluate the validity and strength of patents and were less likely to be surprised and consequently prejudiced by subsequent amendments, even if this took place in the course of patent litigation. An amendment will only be allowed if it complies with the statutory requirements, namely the amendment

(a) must not disclose additional or added matter
(b) must not extend the protection conferred by the patent[2]
(c) must be clear and concise[3]

Whether an amendment is allowed is ultimately a question of discretion that depends on several factors:

(a) whether the patentee has disclosed all the relevant information with regard to the
amendments;
(b) whether the patentee delayed in seeking the amendments (if so, whether the delay was
reasonable);
(c) whether the patentee had sought to obtain an unfair advantage from the patent; and
(d) whether the conduct of the patentee discourages the amendment of the patent.

3. Was Trek’s patent invalid for lack of novelty and inventiveness?

With respect to novelty, the Court held that disparate pieces of prior art could not be combined unless a document directs the reader to do so. On the question of inventiveness, the Court held
“…Trek had an inventive concept…Admittedly, all the elements required for this invention
were available to those skilled in the art…Yet before Trek applied for the patent in question,
no one else thought of combining all these elements together…It was thus not obvious to
proceed from a two-piece cable-connected prior art to the neat cableless solution presented
by the Thumb Drive device.”
In its assessment of inventiveness, the Court noted that Trek’s ThumbDrive was warmly welcomed when it was launched and has enjoyed great commercial success thereafter.

article_trek article_trek2
article_trek3 article_trek4

Singapore bar capable of handling patent infringement litigation – Re Platts-Mills Mark Fortescue QC[4]
Here, the Singapore Court of Appeal denied the defendants in the Trek case the permission to have their appeal argued by a UK Queen’s Counsel. The Court showed confidence in the Singapore bar, saying that standards had increased over recent years and that local litigators were competent to address complex patent infringement issues. Local counsel may, of course, continue to rely on written opinions from a UK Queen’s Counsel. In doing so, the Court reversed the first instance decision of Prakash J.[5] who held that lawyers in Singapore stood to gain from seeing “a top-notch lawyer in action”.

Changes in Patent Procedure

Abolishment of block extension fee.
From 1 August 2006, Singapore PCT national phase applications with an international filing date on or after 1 July 2004 may apply for a block extension at the 39th month without incurring any official fee, easing the transfer of applications from the fast track to the slow track. Singapore national phase entries will now be able to proceed along the considerably more flexible slow track route, by which the deadlines for examination and payment of grant fee are increased by 18 months, without incurring the hefty S$1800 fee.

Recognition of Korean search and examination results.
From 2 June 2006, search and examination reports from the Korean Intellectual Property Office may be relied upon for Singapore patent applications where the declared priority date (or the date of filing, if there is no declared priority date) of the Singapore application is on or after 2 June 2006. This is a welcome addition to the current list of prescribed patent offices whose search and examination results are recognized – Australia, Canada, New Zealand, Japan, the United Kingdom, the United States of America and the European Patent Office. Korea will be a competent International Searching Authority for PCT applications filed on or after 2 June 2006 through IPOS as the receiving office.

Proposed Changes in Singapore PCT National Phase:

Lower costs and more flexible timelines
The proposals made by IPOS during the April 2006 consultation exercise are expected to take effect on 1 October 2006. The changes concern prosecution timelines for the Singapore PCT national phase applications with an international filing date on or after 1 July 2004. Because the deadline to enter the Singapore national phase is the 30th month from the priority date, all applicants seeking entry into the Singapore national phase from January 2006 onwards fall under the “1 July 2004” law. Applicants can now rely on the ISR and the IPRP to meet the grant requirement for search and examination, but under the default fast track route, the IPRP must be furnished by the 42nd month. If there are outstanding objections or unexamined claims arising from IPRP, the applicant will be forced to request local search and examination. Currently, an applicant can request for local search and/or examination when applying for a block extension at the 39th month to defer the deadline for meeting grant requirements from the 42nd month to the 60th month. Effectively, applicants entering the Singapore national phase at the 30th month have only 9 months to satisfy all grant requirements. Alternatively, applicants who enter the Singapore national phase extremely early can request for a local search and/or examination report at 21st month. The latter option requires applicants to decide whether they want to enter the Singapore national phase well in advance of the 30th month national phase deadline, which is often impractical.

In view of this, IPOS is expected to push the deadline for applicants to request for local search and/or examination from the 21st month to 39th month. Under the proposed changes, the deadline for submission of the IPRP (or results from corresponding application) and payment of the grant fee is pushed from the 42nd month to the 60th month. Accordingly, for Singapore national phase entries only, there will no longer be any distinction between the fast track and the slow track.

TRADEMARK

Court reverses interim injunction: Richemont International SA v Da Vinci Collection Pte Ltd[6]

The alleged substantive infringement.
Richemont International SA (Richemont), registered proprietors of the mark DA VINCI in Class 14 in respect of watches and watch straps and manufacturers of luxury IWC-Da Vinci watches, filed a trademark infringement suit against Da Vinci Collection Private Limited (DVC). DVC denied infringement and counterclaimed for an order for revocation and/or a declaration of invalidity of Richemont’s registration alleging non-use and bad faith. Andrew Ang J. gave summary judgment in favour of Richemont and granted them an injunction restraining DVC from using the mark DA VINCI in relation to watches. The Judge was satisfied that Richemont had made genuine use of the mark, even though the mark appeared on the back of their IWC watches. It is well-established that a product may have more than one trademark – secondary or even tertiary product identifiers can function as trademarks if they indicate that a product originates from a particular undertaking, e.g. the Oyster series from Rolex. At the time of writing, DVC is appealing the summary judgment.

“The Da Vinci Code” advertising campaign.
DVC teamed up with Sony, distributor of the movie “The Da Vinci Code”, to produce a range of officially licensed designer watches in conjunction with the 18 May 2006 Singapore release of the much anticipated film adaptation of Dan Brown’s bestselling novel. DVC’s advertisements showed a diamond-encrusted watch bearing the initials DV on the dial, in connection with the movie and as part of DVC’s DA VINCI Jewellery collection. DVC is the registered proprietor of the DV initial mark in Class 14 for watches and watch straps (Singapore trademark T0500468H, see Figure 1). Richemont sought an interim injunction to restrain DVC’s advertising campaign. At first instance, Richemont was granted an interim injunction restraining DVC from advertising in any manner the composite mark seen at Figure 2 in relation to watches and watch straps in conjunction with and/or in relation to the movie “The Da Vinci Code”. However, the Singapore Court of Appeal set aside the High Court’s interim injunction, allowing DVC to run its advertising campaign. Chan Sek Keong CJ, delivering his first IP judgment since assuming the office as Chief Justice of Singapore on 11 April 2006, repeatedly emphasised that Richemont’s complaint was not directed against the use by DVC of the DV initial mark on its watches or the use of the composite mark as part of the advertising campaign. Indeed, it seems that counsel for Richemont conceded that it would not have been able to obtain an interim injunction to restrain DVC from selling its watches using the composite mark or the DV initial mark. The issue at hand was the use of the composite mark in the advertisement in connection with scheduled release of the movie “The Da Vinci Code”. Richemont was concerned that the publicity connected with the movie would lead potential buyers of Richemont’s IWC-Da Vinci watches to believe that DVC’s watches as advertised originated from Richemont. The American Cyanamid questions were asked:

  1. Was there a serious question to be tried?
  2. If there was, would damages not be an adequate remedy?
  3. Where does the balance of convenience lie?

The Court assumed for the purposes of this hearing that the threshold for point 1 was met, without making a determination, so as not to prejudice Richemont’s substantive infringement action against DVC, which is pending appeal. The judgment contains many interesting paragraphs on what factors persuaded the Court of Appeal to set aside the interim injunction. In particular, the CA was persuaded by DVC’s argument that lifting the injunction was not likely to cause substantial damage to Richemont’s mark. Given that Richemont had spent $118m advertising IWC watches worldwide and also sold about $6m of the IWC-Da Vinci watches between 2000 and 2006 in Singapore, it would not be possible for DVC’s $0.8m advertising campaign to “overwhelm” or “swamp” Richemont’s reputation in the mark. Any loss of sales of Richemont would be quantifiable, whereas any loss of sales to DVC during the interim injunction would be difficult to assess. A crucial factor tilting the balance of convenience towards DVC was the fact that if “The Da Vinci Code” movie stopped screening in cinemas before trial, the interim injunction would have, in effect, been a permanent injunction.

Figure 1: T0500468H, DVC’s registered trademark
DVC registered trademark

Figure 2: T0404543G, DVC’s pending trademark application (“the composite mark”)DVC pending trademark

Transitional provisions do not automatically convert 2D marks into shape marks: Nation Fittings (M) Sdn Bhd v Oystertec Plc

This is the first case to deal with the registrability of shapes as trademarks under the Trade Marks Act 1998 (the current Act). Prior to the enactment of the current Act, only two-dimensional marks could be registered. The Court held that the transitional provisions of the current Act did not enable two-dimensional marks registered under the old Act to be treated as three-dimensional marks under the current Act. Such additional or new rights could only be obtained by making a fresh application under the current Act. The Court further noted that in order to apply for a shape mark under the current Act, the applicant would have to show that the shape performed the essential function of a trademark, i.e. it must be an indicator of origin.

Oystertec’s registrations
article_oystertec
Nation Fittings products
article_nation_fittings

COPYRIGHT

Criminal liability for wilful copyright infringement: Public Prosecutor v PDM International[8]

2006 saw the first decided case on s 136(3A)(c)(ii) of the Copyright Act, which was enacted pursuant to Singapore’s obligations under Article 16.9 paragraph 21 of the United States-Singapore Free Trade Agreement [USSFTA], extending criminal liability to ordinary users if the infringement of the copyright is wilful and either (a) the extent of the infringement is significant; or (b) the person does the act to obtain a commercial advantage. Pre-USSFTA, Singapore’s copyright law only criminalised the commercial manufacture, commercial importation, distribution or sale of infringing copyright material. Where non-trade activities were involved, Singapore’s old copyright law only criminalised distribution of infringing material that is of a degree that has a severe impact on the copyright owner. In PDM, the Business Software Alliance (the complainant) was reportedly tipped off by a whistleblower. The accused company pleaded guilty to 2 counts under s 136(3A)(c)(ii) for having unlicensed software worth $78,174.73. As a first-time offender, PDM faced a maximum fine of $20,000 per charge. PDM pleaded the following during mitigation:

This was not a case of blatant infringement – the licenses obtained by the company were merely insufficient to cover the number of installations.PDM’s attempts to obtain the extra licenses stagnated because they did not have IT staff and the manager in charge was on long maternity leave.PDM had, since the raid, rectified the situation.

However, the district court took the view that a deterrent sentence was necessary and imposed a fine of $15,000 per charge, resulting in a total fine of $30,000.

Table 1: Criminal Prosecutions for Infringements – Number of Charges

Copyright (s 136) Trade Mark (s 49)
2004 1563 330
2005 2425  523
January  to June 2006  610 384

[1] [2005] SGHC 90 and [2005] SGCA 55
[2] s 83 of the Patents Act
[3] s 25(5) of the Patents Act
[4] [2005] SGCA 57
[5] [2005] SGHC 191
[6] [2006] SGHC 150; [2006] SGCA 19
[7] [2005] SGHC 225
[8] [2006] SGDC 91

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