Thailand joins Patent Coorperation Treaty

Thailand (country code: TH) has acceded to the Patent Cooperation Treaty ("PCT") on 24 September 2009. Thailand is the 142nd contracting state to accede to this multilateral pact that facilitates the filing of patents in multiple countries. The treaty will enter into force for Thailand on 24 December 2009.

With respect to any international applications filed on or after 24 December 2009, Thailand will be automatically designated and will be elected in any demand for international preliminary examinations. Nationals and residents of Thailand will also be able to file PCT applications from 24 December 2009.

Singapore Designers Day

23 October marks the Designers Association Singapore's inaugural Singapore Designers Day, where the public is given an opportunity to acquaint themselves with selected members of the DAS and what they do. We are privileged to be one of the 9 designated members, the rest being esteemed design houses and branding consultants, and hope to be overrun with attendees thirsting to know more about us (we promise to throw in a little bit of intellectual property too).

Changes to Patents Rules

There was a gathering of IP lawyers and patent attorneys at IPOS yesterday. An email had been sent some days before, announcing a briefing by IPOS on changes to the Patents Rules. Thinking this must surely refer to the recent substantive proposed changes to the patent system, yours truly mentally prepared herself for an afternoon of heated discussion between "them" and "us". It was therefore somewhat of a let-down when we were told that the briefing was for something else, and that it would indeed be brief.

So here they are, the 2 most recent changes to the Patents Rules, which will take effect later this month :

1. The Hungarian Patent Office joins the Austrian, Australian and Danish Patent Offices on the panel of search and examination authorities appointed by IPOS.

2. The fees for post-grant search and examination will be revised to range from between S$2,600 and S$3,800, up from the current S$2,340 to S$2,515. The revised fees for the Austrian Patent Office will only take effect some time next year.

Singapore company prevails in patent battle and solders on

The High Court of Singapore recently ruled on a suit involving patent infringement and revocation.

The plaintiff, ASM Assembly Automation Ltd ("ASM") commenced an action against Aurigin Technology Pte Ltd ("Aurigin") and 2 other defendants for the infringement of its registered patent for an apparatus and method for automatically placing an array of solder balls onto a substrate. The defendants counterclaimed on 2 main grounds; first, that ASM's patent was invalid for lack of novelty and inventiveness and second, that ASM had made groundless threats of infringement.

On the issue of novelty, while ASM's expert witness made certain unfavourable concessions in the course of cross-examination, Aurigin's expert witness explained how the patent was not new as each of the tendered prior art documents individually disclosed all the elements of the invention. His testimony on novelty was unreservedly accepted by the court, which then held that ASM's patent was not novel.

On the issue of inventiveness, ASM asserted that the patent was inventive as it was an improvement over the prior art. However, this assertion did not bear out during cross-examination. On the contrary, the court observed that the patent was "a disadvantageous modification of the closest prior art".

It was not surprising, therefore, that the court held that the patent was neither novel nor inventive, and Aurigin succeeded in revoking the patent. Accordingly, there could be no patent infringement and the threats made by Aurigin were found to be groundless.

As patent cases rarely make it to trial in Singapore, those that do are valuable stockpiles of instruction and guidance for future cases. Even though the court's judgment did not modify or expand on the law, having applied established common law principles laid down in Trek Technology (S) Pte Ltd v FE Global Electronics Pte Ltd (No. 2) [2005] 3 SLR 389 for novelty and Windsurfing International Inc v Tabur Marine [1985] RPC 59 as approved by the Court of Appeal in First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR 335 for inventiveness, the following lessons may still be learnt from this case :

1. Exercise care in the selection of expert witnesses; patent attorneys, no matter how qualified, may not necessarily be persons skilled in the art.

2. Ensure that witnesses are qualified and well-prepared to endure cross-examination by opposing counsel. In this case, the court had commented that ASM's expert witness was not familiar enough with the prior art. Cross-examination also demonstrated that the expert witness was ill-prepared, resulting in damage to ASM's case.

The decision is currently under appeal.

Citation : ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and Others [2009] SGHC 206

Patent Practice Update

The Intellectual Property Office of Singapore has just issued a practice direction stating that issued Certificates of Grant for registered patents will no longer be accompanied by a copy of the granted specification. Patent owners who want a copy of the granted specification will have to download it from the ePatents database. This change will take effect on 1 November 2009.

Out and About

The final quarter of the year is looking to be a busy one. We (or at least one of us) will be speaking at the following events :

1. "The Artist and Copyright" at Art Singapore 2009 on Sunday, 11 October; and

2. "Intellectual Property Enforcement - An Overview of Trademark and Patent Cases" organised by the Law Society of Singapore on Thursday, 5 November.

We will also be attending FLAsia 2009 from 15 to 17 October and APAA 2009 from 18 to 22 November - do say hello if you are there as well.

Express Bus Service Operators Under Investigation for Price-Fixing

The Straits Times on Saturday 1 August 2009 reported that 16 bus service operators were under investigation by the Competition Commission of Singapore (“CCS”) for price-fixing.

CCS had on, 16 June 2009, issued a Proposed Infringement Decision (“PID”) against the Express Bus Agencies Association (EBAA) and 16 companies for colluding to fix the prices of express bus tickets from Singapore to various destinations in Malaysia from 2006 to 2008.

The PID is a written notice setting out the facts and the grounds on which the CCS had reached its proposed decision so as to give the parties involved an opportunity to make representations or arguments against the findings of the CCS.

It is understood that the bus companies could collectively face fines of up to $1.75 million with one of the companies facing a fine of about $520,000.

Some of the express bus operators together with the EBAA have submitted their representations to the CCS within the 6 week deadline from the date of the issuance of the PID.

The CCS is now considering the representations and will issue a final decision in due course. The CCS will not release further details of the case at this stage.

Unlucky 13

The Criminal Investigation Department conducted simultaneous raids of 13 shops in Lucky Plaza yesterday, resulting in the arrest of 27 men and 1 woman, aged between 19 and 55 years old. The raids were carried out on the premise of trade mark and copyright infringement offences. Originally targetting the sale of pirated games and illegally modified gaming consoles, the CID's haul of 794 items eventually included desktop computers, laptops, external hard disks and memory sticks. The seized items had an estimated street value of S$60,000.

If found guilty, each offender is liable to pay a fine of up to S$10,000 per item (subject to a maximum of S$100,000) and may be imprisoned for up to 5 years.

Singapore's WIPO Arbitration and Mediation Centre to open its doors in January 2010

The Straits Times online edition has today reported that the Singapore office of the WIPO Arbitration and Mediation centre will open in January 2010. A memorandum of understanding was signed between the Law Minister Mr. K. Shanmugam and WIPO Director General Dr Francis Gurry, earlier today. It is reported that when the centre opens a panel of legal specialists will hear intellectual property related disputes ranging from trademark and copyrights to patent issues. The centre will be located within the Maxwell Chambers centre for international dispute resolution.

Dr. Francis Gurry, Director General of the World Intellectual Property Organisation, visits Singapore.

The Ministry of Foreign Affairs and the Ministry of Law have issued a joint press statement on Dr. Francis Gurry’s visit to Singapore. Dr. Gurry is here as a guest under the United Nations Distinguished Visitors Programme (UNDVP) and will be in Singapore until the 31st of July 2009.

Besides, meeting Singapore dignitaries, Dr. Gurry will give a keynote speech at Trading Ideas 2009 together with Mr. Hisamitsu Arai, President & CEO of the Tokyo Small and Medium Business Investment & Consultation Co. Ltd. From the Trading Ideas website, it appears that Dr. Gurry’s speech will be on the topical subject of how the financial crisis is affecting the intellectual property sector and is entitled The Current Financial Crisis – Opportunity for the IP Landscape.

Dr. Gurry’s presence in Singapore also coincides with the establishment of the Singapore Office of the WIPO Arbitration and Mediation Center, tomorrow, 28 July 2009. The Arbitration and Mediation Center is part of the WIPO - Singapore Office which was established in 2005 with the aim of establishing a stronger presence in Singapore from which to reach out to the region.

The opening of Arbitration and Mediation Center is part of WIPO’s plans to expand the Singapore Office’s scope to serve as a regional service centre for a range of IP international services currently provided by the WIPO Headquarters in Geneva, Switzerland, including multi-jurisdictional IP registrations and patent information services besides alternate dispute resolution for IP matters.

A Tale of 2 (and more) Valentinos

In a trade mark opposition heard before the High Court (upon appeal), it was ruled that the Class 18 marksand were not similar.

In comparing the marks aurally, visually and conceptually, the Judge was of the view that there was no similarity in all 3 aspects. In particular, he noted that several parties had registered trade marks which "constituted wholly or in part", the word "Valentino". As such, the Opponent (Valentino Globe B.V.) could not be said to have a monopoly over the word "Valentino", and could not establish similarity or a likelihood of confusion just by virtue of the Applicant's (Pacific Rim Industries Inc.) incorporation of the word "Valentino" into its "Emilio Valentino" mark.

On the ground of bad faith, the Opponent pointed out that one Mr. Emilio Valentino had applied to register a mark identical to the Applicant's, in Italy. As the Applicant did not adduce any credible evidence to show how it had derived the mark, the Opponent called upon the Court to make an adverse inference that the Applicant must have copied the mark from Emilio Valentino.

In response, the Court said the most damaging inference was that either the Applicant or Emilio Valentino had copied the mark from the other; no evidence had been put forward to show which party had prior use. Also, given that "Valentino" is a fairly common name for Class 18 goods, the Court said it would be slow to find that any copying had taken place. This was unlike the Team Lotus case cited by the Opponent where the trade marks consisted of complex designs. Further, the word "Lotus" "is an uncommon and very distinctive name for cars and/or related services, and this militates in favour of a finding that some copying had taken place".

As neither similarity nor bad faith had been made out, the appeal was dismissed in favour of the Applicant.

Citation : Valentino Globe BV v. Pacific Rim Industries Inc. [2009] SGHC 150

When is my mark not my mark?

Singtel, the biggest telco in Singapore, have been marketing and packaging their telecommunications and TV services under the mark mio since 2007. However, a Taiwanese party, Mitac, had registered a stylised version of the mark at the Singapore Registry earlier. Mio mean "my" in Italian. Mitac sued Singtel for infringement; the case is Mitac International Corporation v Singapore Telecommunications Ltd [2009] SGHC 137.

The Singapore High Court found that there was no infringement and held the following:

1. Mitac stylised mio was not identical to the Singtel mark notwithstanding that phonetically the marks are identical. In this regard, the court placed great weight on the fact that the Mitac mark was "highly stylised and distinctive." In the circumstances, it might be wise for proprietors of trademarks to register the block version of the mark rather than the mark as used otherwise they will face the same issues as Mitac did in this case. The problem, however, is where the block letter version cannot obtain registration for some reason or other.

2. If the court finds that the marks are identical, then there is no need to show a likelihood of confusion. However, where the court as in this case holds that the marks are not identical, then Mitac was weighed with the burden to show that there was a likelihood of confusion. In this regard and on the authority of the Polo case [2006] 2 SLR 690, an inquiry into the marketplace is relevant.

3. The court felt that there was no likelihood of confusion agreeing with the several reasons put forward by Singtel. The court went on to say that: "The marketing expenditure of and number of events [Mitac] participated in paled in comparison to [Singtel's], leading to the conclusion that it was unlikely that an average customer would think of [Mitac] at all when confronted with [Singtel's] trade marks."

4. If it is true that market power can affect the statutory rights afforded under the Trade Marks Act, then we are backing into the tort of passing off. In this case, the pervasiveness of Singtel in Singapore trumped Mitac's prior registration and weak marketing. One wonders what rights would be given to a mark which has not been used at all.

Citation : Mitac International Corp v Singapore Telecommunications Ltd and Another Action[2009] SGHC 137

Proposed changes to patent system

The Intellectual Property Office of Singapore has called for public feedback on several proposed changes to the existing patent system.

Most significant are the suggested modifications to the current self-assessment regime. At present, the burden of whether patent claims meet the patentability criteria lie on applicants, and not the patent office. Patent applications will not be refused even in the light of negative examination reports; it is up to the applicant to amend the claims to address the examiner's objections. IPOS proposes to move away from the self-assessment regime by several means, including :

a. providing for informal hearings with the examiner before the examination report is issued;

b. disallowing amendments to claims after the examination report is issued;

c. refusing applications with negative examination reports;

d. only allowing reliance on fully positive IPRPs;

e. mandatory examination of all post-grant amendments.

Other areas of the patent system that are under consideration are :

1. imposing limits to extensions of time;

2. whether the restoration period for lapsed patents should be shortened from 30 months to 20 months;
3. whether renewal reminders should be sent to patent owners before the renewal deadline;
4. whether second or subsequent new medical use claims should be allowable.

The deadline for feedback is 14 August 2009.

David sues Goliath

Singapore's national broadcaster MediaCorp has been taken to court by an Internet start-up company RecordTV, for issuing groundless threats of legal action. In its defence, MediaCorp has filed a counterclaim for copyright infringement. Groundless threats are actionable under the Copyright Act, Trade Marks Act, Patents Act and Registered Designs Act.

As its name suggests, RecordTV's 2007-launched website allowed registered users to request recording of MediaCorp's free-to-air television programmes. In its opening statement in court, RecordTV said its service was merely an alternative to more traditional permitted means of recording television programmes at home, such as using a video cassette recorder or digital video recorder. The only difference was that RecordTV recordings were stored outside the user's premises. RecordTV has also contended that the recordings were made by its users, and not itself.

In reply, MediaCorp pointed to evidence gathered by its private investigators, which showed that unlike users of video cassette recorders, users of RecordTV's services had no control over functions such as recording and playback. Further, one of the private investigators had requested a 5-minute recording but received a 26-minute recording instead - this, MediaCorp suggested, was indicative that it was RecordTV and not the user that made the recordings.

Presided over by the Honourable Justice Andrew Ang, the 4-day hearing is slated to end today.

Interestingly, RecordTV stated that it bought the software from RecordTV USA. If this is the same RecordTV USA that the Los Angeles Federal court ruled against in 2001, then things do not look too optimistic for the start-up.

Singapore's Top 100 Brands

In a survey by Brand Finance, Singapore Airlines was found to be the top Singapore brand with; it was valued at 3.9 billion Singapore dollars. Other brands in the top 10 were DBS(#3), APB (#5;the makers of Tiger beer), SingTel(#6) and Cold Storage(#8).

2008 was a tough year for brands; valuations plunged as a result of the financial crisis. Intangible assets declined by USD$203 billion in the year with the worst hit being companies in the banking and real estate sectors.

IPOS - JPO Patent Prosecution Highway

Come 1 July 2009, the Singapore and Japan IP offices will embark on a year-long Patent Prosecution Highway ("PPH") test run. The test period may be extended by a year depending on the PPH's popularity among other factors. This is the second PPH pilot programme for IPOS, the first being a collaboration with the US Patent Office ("USPTO"). Information on how to participate in the PPH by filing the requisite notices at IPOS and JPO may be found here and here respectively.

It is yet unknown as to how many PPH cases there are under the 2-month old IPOS-USPTO PPH pilot programme; let's see if I can find out when I make a trip down to IPOS tomorrow morning later.

Singapore still up for grabs on Facebook

Following the Facebook land rush on Saturday, 13 June 2009, celebrity names like Richard Nixon, The Real Shaq and Snoop Dog were snapped up by less famous imposters. Others may be found here. Some have also been posted on auction block Assetize, www.facebook.com/assetize being by far the cheekiest. Vanity URLs for big boys Bank of America, Fox News and Chinese company Huawei are also up for sale. This could just be an exercise in futility though, as Facebook is currently sticking to their strict no-transfer policy, at least until they figure out a workable dispute resolution process.

As of today, www.facebook.com/singapore is still untaken. In Facebook-land, the great country of America, however, belongs to one Tegan Snyder of Lincoln, Nebraska.

Asia's Top 1000 Brands

The top 3 brands in Asia as found in a survey co-funded by Media magazine are Sony, Samsung and Canon. Two questions were asked:

1 "When you think of the following (product/service category), which is the best brand that comes to your mind? By best, we mean the one that you trust the most or the one that has the best reputation in the (product/service category)."

2 "Apart from the brand that you have just mentioned, which brand do you consider to be the second-best brand in the (product/service category)?"

HP was the top US brand in 6th place and Coca-Cola was 10th.

Facebook.com/Me

Commencing Saturday 13 June 2009 (midnight, EDT), Facebook users may create personalised URLs for their Facebook pages (facebook.com/username). To prevent third parties from using famous trade mark(s) as or part of their personalised URLs, Facebook has provided an online form for trade mark owners to record their rights. The form is accessible here. The information required is :-

a. Company name
b. Title
c. Email address
d. Trade mark
e. Trade mark registration number (in any jurisdiction)

Once registered, the personalised URLs will be non-transferable. We encourage trade mark owners to take preventive action now rather than to enforce trade mark rights later

Having said that, how will Facebook verify the identity of the person submitting the form, if at all? Mr. X could very well obtain a trade mark number of a well-known mark off any of the online databases then tick the little box that says he is authorised by the trade mark owner. Hmm, and what if someone tries "facebook.com/louisevuitton" or "facebook.com/kelvinkline"? What then? I can't help but wonder ...

IPOS' new operating hours

Just so you know, IPOS is now open from 8.30 am to 5.30 pm from Mondays to Fridays, so if you want to manually file applications during your lunch hour, you can. Please note that they are no longer open on Saturdays. Electronic applications may be filed any time, any day. The new operating hours took effect from 1 June 2009.

Singaporean’s 10-year battle for IDNs wages on

The Internet Corporation for Assigned Names and Numbers' (“ICANN”) continuing efforts to infinitely expand the number of Generic Top Level Domains (“gTLDs”) beyond the current 21 which include .com, .net. and .org, have received mixed reviews. While cities and big brands are expected to be among the first applicants (think .newyork, .tokyo, .apple and .sony), it is without any doubt that cybersquatters will also be near, if not at, the head of the line.

Version 2 of the New gTLD Draft Applicant Guidebook was just released on 31 May 2009. In it contains the public's comments on various issues surrounding the new gTLDs, including trade marks, geographical names and Internationalised Domain Names ("IDNs").

One particular name in the Guidebook - James Seng - caught my eye. Seng, a Singaporean, has been lobbying for IDNs, particularly "CJK" (Chinese, Japanese and Korean characters) in an Anglo-centric Internet for the last 10 years. His dream of a truly international Internet echoes the Internet Society's slogan of yore : The Internet is for Everyone.

Sadly, as Seng laments, not much progress has been made. The latest Guidebook imposes a 3-character minimum for IDNs, which is perfectly sensible for English words (.boy, .car) [Edit : not for famous 2-letter brands like .ge, .lv and .ax though], but simply does not fit the nature of CJK where meaningful words may be formed by less than 3 characters. In his blog, Seng reminds ICANN that in 2008, Asia contributed to the largest growth of domain names (excluding .com). He ends the entry with an earnest plea : If ICANN is sincere about making gTLD successful, I beg you, please do not fumble in Asia.

Version 3 of the Guidebook is set to be released in end of June 2009 for yet another round of public comment. The fate of IDNs remains to be seen.

New IPOS Initiative

Launched in late May 2009, IP Knowledge Kaleidoscope is the latest of IPOS' initiatives to assist businesses in identifying, protecting and commercially exploiting their intellectual property. The Kaleidoscope is primarily a series of factsheets containing relevant information on various aspects of intellectual property. The first factsheet on "Licensing of IP Rights as a Business Tool" is available for download here.

Also, patent owners looking to licence their rights may endorse their patents accordingly. In return, they get a 50% reduction on renewal fees. In order that interested licensees may easily search for these patents, IPOS has now put together a list for convenience. More information is available here.

Mail Surprise

Sure, it was all warm and fuzzy in the afterglow of our Court of Appeal win. But the tedium of taxation of costs is now upon us, our daily tools of pens and pencils temporarily making way for calculators and spreadsheets.

Amidst the angst, it was indescribably pleasant to receive Part 7 of the 2009 Fleet Street Reports in the mail, where the aforesaid appeal decision has been published. And how very thoughtful of the publishers to have sent 3 copies, one for each of us.

Suddenly, I'm punching buttons with more vigour and even managing to do some sums in my head.

It sure feels good to be standing on Fleet Street.

Monday blues for counterfeit goods syndicate

Night bazaars and trade fairs are commonly held in various locations in Singapore. Short of visiting a Magistrate at his home on a Saturday night, intellectual property rights owners are hard put to apply for the required search warrant to seize any counterfeit goods that they may have found.

Police assistance is therefore invaluable in these circumstances. On Monday, 4 May 2009, after months of investigations which revealed a syndicate’s involvement in these night bazaars, the Intellectual Property Rights Branch of the Singapore Police Force successfully conducted a 16-hour islandwide raid, in various suburbs of Singapore. More than 10,000 pieces of counterfeit sports and luxury goods were seized from make-shift stalls. The street value of the goods amounted to more than S$360,000.

Three women and a man between the ages of 27 and 51 were arrested for selling the counterfeit goods.

Former employee of education centre sued for breach of confidentiality

The Singapore franchisee of a teaching method created by late Professor Makoto Shichida and the Shichida Educational Institute, The Shichida Method, has taken one of its ex-employees to court for allegedly poaching its trainers and students.

David Ng was formerly the general manager and acting chief operations officer of The Shichida Method. After being dismissed in June 2007 for allegedly misappropriating a sum of S$160,000 in fees, Ng set up his own education centre. It is alleged that he proceeded to poach trainers and students from his former employer, and also tried to persuade the Japanese franchisor to appoint his company as the Singapore franchisee.

The suit was commenced in the High Court and is premised upon breach of confidential information. The evidence against Ng includes camera footage of Ng removing documents from his former employer’s office shorter after his dismissal, and of his trainers offering the former employer’s curriculum to his students’ parents.

In Ng’s defence, Senior Counsel Hri Kumar has argued that the suit is anti-competitive; an ex-employee should be allowed to use the skills and knowledge that he had acquired in the course of employment. He has further argued that Ng had not signed an employment contract and was therefore not subject to any obligation of confidentiality.

The Shichida Method’s former trainers have also been sued for breaching the secrecy clause in their contracts. Mr. Kumar has argued for the unenforceability of the clause as it does not stipulate what information is considered a trade secret.

This suit, which was heard on 4 May 2009, reminds employers that employees should be made to sign confidentiality agreements or have appropriate clauses included in their employment agreements. Confidential documents such as training manuals and customer lists should also be marked “confidential”. Security measures (e.g. password protection) should also be put in place to ensure that access to such information is restricted.

[Update (11/06/2009) : A source informs me that the matter has since been settled out of court.]

Greetings from Seattle

Today saw the conclusion of the 131st Annual INTA Meeting in Seattle. After 5 days of meets and greets, of old friends and new, we bid farewell to all those that we have said hello to, and hope to see them again next year in Boston.

Stay tuned for photographs!

An All Time Low

Software piracy in Singapore has dropped to an all time low of 36 per cent, reports the Business Times. This is a significant milestone in Singapore’s anti-piracy efforts, the last being Singapore's removal from the United States Trade Representative Office’s Special 301 Watch List in 2001.

However, there is much room for improvement. Singapore is bested by countries in the Asia-Pacific region such as Australia, New Zealand and Japan which have software piracy rates of 26, 22 and 21 per cent respectively. Still, the staggering dollar losses continue to rise; from US$159 million in 2007 to US$163 million in 2008 (Singapore) and from US$14 billion in 2007 to US$15 billion in 2008 (Asia Pacific).

Globally, piracy has risen from 38 per cent to 41 per cent, despite decreases in 57 of the 110 countries surveyed.

Please note that the above references to software piracy pertain to personal computer software. I wonder what the figures would be like taking into account all other platforms such as Playstation and Xbox. If anyone out there has these statistics, please send them our way.

If companies can have brands, why can't nations?

It was bound to happen; there is now a Nation Brands Index which measures a nation as if it were a brand. Germany, France and Britain were the first three, in that order. USA was ranked 7th and Singapore was 24th out of 50 countries.

Some countries are upset by the rankings and feel misunderstood. South Korea is 33rd and they are not happy. They have formed a Presidential Council on Nation Branding and the goal is to move up to 15th place by 2013. An advisor has commiserated with S.Korea saying "One unfortunate thing is that South Korea shares its name with a rogue state."

Patent Prosecution Highway : A One-Way Street?

The United States Patent and Trademark Office (USPTO) and the Intellectual Property Office of Singapore (IPOS) have begun testing the feasibility of sharing the results of their patent search and/or examination results with each other, under what has been called the Patent Prosecution Highway Pilot Programme (Programme).  It is hoped that the shared results would lead to reduced work done, faster prosecution and better search and examination.  The initiative will last for one year from 2 February 2009, and may be extended for another year if necessary.    

Under the Programme, where a patent application has been first filed at the USPTO, and a corresponding application filed at IPOS, the Singapore patent application may in certain circumstances benefit from accelerated prosecution where :-

1. the final results of the search and examination or the patent grant of the US application are available; and

2. the applicant furnishes certain prescribed information of the US application to IPOS.

For instance, a request for accelerated prosecution may be made where the Singapore application validly claims priority from the US application, or where the Singapore application is a national phase entry of a PCT application and which validly claims priority from a US national application.  More scenarios under which accelerated prosecution may be requested in Singapore are found here.   Details on applying for the Programme at the USPTO may be found here.

Our primary concern was how much more the Programme can accelerate the prosecution of Singapore applications, as under Singapore’s current prosecution system, applicants may already rely upon final examination reports of US corresponding applications.   At a discussion with IPOS on Thursday 30 April 2009, IPOS addressed this and other enquiries raised by IP practitioners on the Programme.  

The takeaway from the discussion was that the Programme would benefit applications first filed in Singapore, and then later filed in the US, as that would potentially shave 2 to 3 years off the US application by jump-starting the examination process.  However, as IPOS informed us, in view of our prosecution system, applications first filed in the US (and later filed in Singapore) and where the latter relies on the US examination results, would only be shortened during the grant stage.   The amount of time saved seems insignificant given that it currently only takes about 2 to 4 months from the filing of the grant request to the issuance of the certificate of grant.

Clearly, the Programme is geared towards accelerating applications in the US.  However, considerations such as the documentary requirements for making the US application "special" (i.e.  signing it up for the Programme)  are notoriously heavy and may potentially incur hefty US patent attorney costs.  Then again, this may be a worthwhile exercise depending on the technology involved, such as software patents which by nature have a short shelf-life given the speed of advancement in the area.

The USPTO currently has similar pilot programmes with the German, Danish, Australian, Canadian, UK and European patent offices.  The programme has been made permanent with the Japanese and Korean patent offices.

McCurry vs McDonald's

The Malaysian Court of Appeal allowed an appeal by an Indian restaurant in Malaysia to use the name McCurry. It ruled that there was little danger of confusion as the McDonald's served fast food whilst the appellant sold Indian food. Further, the patrons of the Indian restaurant were adults whilst, accorduing to the court, McDonald's served mainly kids.

It should be noted that Malaysia does not have dilution provisions which may have given McDonald's a remedy without the need to show confusion.

From Law Society of Singapore to Blawggers

The Law Society of Singapore has just issued its first Council Practice Direction of the year.  The message : adhere to professional conduct rules when blogging about ongoing proceedings.   We reproduce the guidelines here :-

1. To act in the best interest of the client;

2. To uphold the standing of the profession;

3. To maintain confidentiality between solicitor and client;

4. To comply with the rules of professional conduct and publicity;

5. To avoid comments that may prejudice matters sub judice or that may be in contempt of Court;

6. To avoid adverse remarks on the conduct or character of the opposing party.

Singapore Brands in the News

‘Singapore Airlines’ and ‘SingTel’ Make it To The Top 500

One of the few Singapore brands with a global presence that comes readily to mind is ‘Singapore Airlines’. The other is ‘SingTel’ (telecommunications). Both ranked 246 and 318 respectively in the BrandFinance Global 500 report of April 2009, the Annual Report on the World’s Most Valuable Brands.

‘Singapore Airlines’ was ranked 280 in 2008 while ‘SingTel’ was unranked.  The ranking in 2009 illustrates the positive progress these Singapore brands are making, globally.

‘Get Singapore Brands’ Launched

There are some home grown brands which enjoy recognition outside Singapore but lack the same recognition at home.

In addressing this, ‘Get Singapore Brands’, a non-profit organization was launched in March 2009. SPRING Singapore is funding the initiative. According to a recent Straits Times report there are currently 37 participating companies who pay subscription fees. The target is to get 100 companies.

The objective of ‘Get Singapore Brands’ is to market goods of the participating brands in Singapore and abroad and to create a greater awareness that Singapore produces well designed goods.

Another objective is to promote Singapore as a place known for good design and innovative retail ideas, and help participating companies exchange ideas and expertise.

The publicity extended to the participating brands is reported to include showcasing products in shopping malls, advertising campaigns and promotional materials extended to tourist. Moving forward, the publicity is expected to be extended abroad next year at international trade fairs and overseas missions.

This initiative is laudable and it is hoped that more companies will participate and take Singapore brands to the greater recognition and success that they rightly deserve.

New chapters

Six new chapters have been added to the Intellectual Property Office of Singapore’s Trade Mark Work Manual.  These are :

Chapter 9 - Marks Contrary to Public Policy or to Morality 

Chapter 10 - Names and Representation of Famous People, Buildings, etc 

Chapter 11 - Other Grounds for Refusal of Application 

Chapter 12 - Deceptive Marks 

Chapter 13 - Licences 

Chapter 14 - Slogans

Court of Appeal rules on well-known mark

"Should a modest cluster housing project in Yio Chu Kang [a modest street] in Singapore be allowed to share the name as an ultra-exclusive luxury resort in Bali where that name is not a registered trade mark in Singapore?"

This question was posed in the first line of a recent Singapore Court of Appeal judgement. The court held that the mark "Amanusa" was a well-known trade mark in Singapore (albeit unregistered ) and that the use of the mark by the housing project was likely to cause people to believe that there was a connection between the said project and the resort. The court granted an injunction restraining the use of the name by the housing project.

The court held that in deciding whether a mark was well-known, one looked at the actual or potential consumers of the proprietor of the mark. The court recognised that this made it easy for marks to be considered well-known in Singapore and, therefore, balanced this with the requirement that the proprietor of the mark show that there is a likelihood of confusion before an injunction can be granted.

The upshot of this judgement is that proprietors of an unregistered mark which is not being used in Singapore may have a remedy provided the mark is well-known to a sector of the public in Singapore and there is a likelihood of confusion. Under the common law tort of passing off, this was not possible as goodwill needed to be shown.

Asian Art We Like

Composite Interior Landscape ‘09 by Hong Sek Chern

Ink on rice paper

152 x 152cm

This painting by local artist Hong Sek Chern will grace our conference room wall as of tomorrow. Hong is currently the Head of Programme of the Diploma in Fine Art in the Nanyang Academy of Fine Arts.  Her paintings which juxtapose "snapshots" of spaces both interior and exterior have won her many awards and accolades.  

For other Asian art that we like, please visit our website.

Fake trade mark notices

According to the Intellectual Property Office of Singapore ("IPOS"), companies should be cautious about fake trade mark notices demanding payment for registering trade marks. Several such instances have been reported until this day. The notices look authentic but these have no connection with IPOS or any such authorities. Companies need to be observant, and review any such notices with utmost care, so that they do not fall prey to such a mischief. Consult a lawyer or any knowledgeable consultant if you are in doubt.

Erm ... 嗯 ...

The Intellectual Property Office of Singapore has very kindly posted up a list of commonly used IP terms and their Chinese equivalents.  Our My head-scratching, brow-furrowing, squinting-into-the-distance, index-finger-chin-tapping days are over!

 

The long and short of it

Singapore has become rather well-known for her unusual fetish for acronyms.  See here and here.  There is even an alarmingly long list compiled by the people at Wikipedia. 

And here’s yet another – SAM or software asset management, which refers to recognising, managing and controlling the software that an organisation or business owns.   

The first step of SAM is to know exactly what software you own, and to ensure that you have not infringed anybody’s copyright.  The Intellectual Property Office of Singapore and the Singapore Infocomm Technology Federation launched a campaign yesterday to help small and medium enterprises stay clear of infringement suits by the Business Software Alliance, which represents software giants such as Microsoft, Symantec and Adobe.   

Businesses may from now till 21 June sign up for a voluntary software audit and if they are found to be using unlicensed products, they have 14 days to right the situation.  They may purchase licensed products at a discounted price up to 30 June.  The most reassuring part of the audit is that compliant businesses will have immunity from lawsuits up to 21 June 2010.  

The message from IPOS and SITF is clear : to avoid being sued by BSA for copyright infringement, SMEs are encouraged to sign up for the voluntary audit.  Other organisations such as ASME, DAS, SBF, SIA and SICC have also committed their support to this campaign.

Is your business SAM ready?

Radio streaming dries up under heat from licensing body

An amendment to the Copyright Act has resulted in the suspension of Internet streaming services by radio stations here. The amendment to Section 107B makes it an infringement of copyright to broadcast digital audio transmissions (whether by simulcast or re-transmission) through the Internet, unless otherwise authorised by the copyright owners (read : payment of licence fees to Recording Industry Performance Singapore, known also as RIPS).

RIPS is a collective licensing body that issues licences to broadcast music in Singapore. According to a report in TODAYOnline, RIPS represents 13 record companies and has been in negotiations with radio stations for licence fees in order that Internet streaming may continue. However, the licence fees tabled so far could potentially cost radio stations up to hundreds of thousands of dollars, a suggestion so unpalatable that all 22 stations (run by MediaCorp, Safra Radio and SPH UnionWorks) have chosen to suspend their online services until an agreement has been reached with RIPS.

A DAShing Bunch

Mention the word "designers", and one can't help but think of Tim Gunn of Project Runway fame making his rounds in a cluttered Parsons studio and dishing out directions like "make it work" in his clipped accent. But there is more to designers than just fashion designers - we have graphic, textile, web, packaging, product, environment, interior, furniture and exhibition designers, a fact that we were recently reminded of at the Annual General Meeting of the Designers Association Singapore.

Top of the agenda was to elect the next executive committee. Newly elected President Lawrence Chong and Vice-President Ulrich Schraudolph then proceeded to communicate their vision for the DAS in a most inspiring and engaging presentation. Attended by about 50 members from all walks of design, the room sparked with ideas about taking the DAS to the next level. Our very own Ravi was elected co-auditor.

Having practised intellectual property law for more years than I care to mention (publicly, anyway), I have met my fair share of creative types - writers, artists, game designers - all originators of IP, creators, dreamers, inventors in their own right. But I have to admit that being in the presence of so many of them in one room at the same time, was awe-inspiring and just a little intimidating.

And here they are ... well, give or take 2 legal types, if you can spot us.

The evening ended splendidly on the terrace of the Singapore Cricket Club, over scintillating conversation with old friends and new, under clear skies and against the backdrop of Singapore's city skyline.

Singin' the Blues

Local singer-songwriter Tanya Chua's application for a declaration of copyright ownership was denied by the High Court in October 2008. The reasons for the judgment were released on 31 March 2009 as Ms. Chua had filed an appeal to the Court of Appeal.

In 2002, Ms. Chua had entered into an agreement with her music publisher, agreeing among other things to "irrevocably and absolutely assign, convey and grant to the Publisher (the music publisher), its successors and assigns all rights and interests of every kind, nature and description in and to the ... Compositions created by the Writer (Ms. Chua) during the term of this Agreement." In return, the music publisher was to exploit the songs composed by Ms. Chua for which she would receive royalty payments.

In 2005, a second agreement was entered into by the parties. This agreement purported to extend the obligations of the parties under the earlier agreement till 17 March 2007. Ms. Chua had an option to extend the validity of this second agreement past 17 March 2007. However, the second agreement also contained clauses that expressly stated that certain terms of the earlier agreement would survive 17 March 2007.

The basis of Ms. Chua's application was that since she had not opted for the extension past 17 March 2007, the copyright in her compositions would revert back to her. She also alleged that the music publisher had continued to exploit the compositions past 17 March 2007 without her consent.

The High Court Judge found that the music publisher was entitled to continue exploiting the compositions past 17 March 2007, as the second agreement specifically stated that this right would survive past the said date. Further, the Judge also noted that Ms. Chua had "appeared to have completely overlooked the fact that she would continue to be paid royalties (in perpetuity) by the defendant for the ... compositions that she had assigned to the company. It was not a situation where she was put into bondage by the defendant without any consideration or benefit to her."

Indeed, it would appear that this reeks a little of biting the hand that feeds. According to the music publisher, it had pulled Ms. Chua out of the realm of anonymity and helped her gain celebrity status. Ms. Chua has won several awards since 2006, including Best Female Singer and Best Album Producer at the Taiwan Golden Melody Awards.

Well, now that an appeal has been filed, I can't help but hear Mr. Kravitz's falsetto ringing in my head, going "it ain't over till (the 3 judges say) it's over".

Citation : Chua Chian Ya v. Music & Movements (S) Pte Ltd. [2009] SGHC 75

World IP Day

Celebrated on 26 April each year, World Intellectual Property Day goes green in 2009. In a bid to reduce the IP industry's carbon footprint, the World Intellectual Property Organisation has encouraged IP players to contribute by "stimulating the creation, diffusion and application of clean technologies; to promoting green design, aimed at creating products that are eco-friendly from conception to disposal; to green branding".

The Intellectual Property Office of Singapore is commemorating the event with a seminar for parents and how their kids' web content may be protected. Find out what other countries around the world are doing to celebrate.

We are happy to note that our friends at Venner Shipley LLP were the first IP firm to achieve carbon neutral status. The International Trade Mark Association (INTA) is also doing its part at this year's Annual Meeting in Seattle by printing the brochure on mixed-resources paper, using eco-friendly soy-based ink for printing and going paperless where possible.

10

Singapore's Trade Marks Act turned 10 in January this year.

On 15 January 1999, an overhauled Act had come into force, enabling Singapore to meet the requirements of the TRIPS Agreement as well as the Paris Convention.

In celebration of this momentous occasion, the IP Academy is holding a discussion cum workshop conducted by Associate Professor Ng-Loy Wee Loon, law lecturer and author of "Law of Intellectual Property of Singapore". The issue du jour : distinctiveness in trade mark law. Happy for the opportunity for trade mark professionals to share, discuss and mingle, this writer has penciled this event (yes, the old-fashioned way) into her appointment book.

In the press

The cordyceps case was reported in the Lianhe Zaobao (联合早报) on Sunday.



For the uninitiated, "cordyceps" as defined by Wikipedia, is a genus of ascomycete fungi. What basically happens is this fungi (the most famous species out of about 400 others is called cordyceps sinensis) parasitizes ghost moth larvae in the winter. By summer, these larvae are completely killed and take on the appearance of dried herbs. Cordyceps have long been considered a precious ingredient in Chinese traditional medicines. It is believed that the benefits of consumption (usually boiled in soup) include improved lung and respiratory function. The Chinese name for the product is 冬 虫 夏 草 which literally means “winter worm summer grass”.

Ladies who lunch (and then some)

I am pleased to report that the franchising and licensing scene in Singapore is very much alive and kicking. Last week, I met Ms. Terry Wong, General Manager of the Franchising and Licensing Association (Singapore). Amidst talk about career histories and kids (always a great ice-breaker), Terry shed some light on the activities of the FLA and its tireless efforts in expanding and growing local businesses through franchising and licensing.

Over lunch at Ministry of Food, which Terry proudly announced was one of FLA's 170 members, I learnt that the government has been dishing out attractive subsidies to potential entrepreneurs. As a result, the FLA has never been busier; their courses are subscribed to the limit, and they now take more overseas trips to match their members with suitable foreign partners. All this over and above their participation in trade shows all over the world and of course the annual Singapore FLAsia Show in October 2009 (which I will be attending).

Terry's enthusiasm for what the FLA does was undeniable. And I suppose it is only natural, seeing that her work revolves around people driven enough to turn their dreams into reality. As we parted, I assured her of our firm's commitment to assist wherever we can ... at which point I remembered that we hadn't renewed our membership (!). No prizes for guessing what I did the minute I returned to the office!

MYCHEW not similar to HI-CHEW

Vicki represented a Korean company, Crown Confectionery Co., Ltd. in their application to register the mark MYCHEW in relation to inter alia “chewing candy” in Class 30, and succeeded in resisting an opposition on all grounds canvassed by Japanese competitors Morinaga Ltd. based on their series of marks consisting of the word HI-CHEW. The marks are reproduced below :-

The crux of parties’ arguments revolved around comparison of the marks. In applying the established principles that marks must be compared as wholes, and that visual, aural and conceptual aspects must be considered, the Registrar found that the marks were overall not similar :-

1. MYCHEW is not visually similar to HI-CHEW. The presence of the hyphen in HI-CHEW, the different beginnings in both marks (MY and HI-), the slant in MYCHEW all contributed to the "sea of visual differences" that virtually drowned out the common ending (CHEW) in the marks.
2. MYCHEW is marginally similar to HI-CHEW aurally. The Registrar veered away from the oft-cited “first syllable” principle, and instead considered where the natural stress falls in both marks. She also found that the vowel sounds and vowel order in the marks (AI-EW) were strikingly similar.
3. MYCHEW is not conceptually similar to HI-CHEW. The Registrar first identified the distinctive portion of the marks. Given that “chewing candy” was claimed by both marks, the Registrar found that the word “CHEW” was not likely to be taken as a distinctive feature. It was therefore the words “MY” and “HI” that consumers would pay attention to. As these simple English words had different meanings discernable to the general Singapore public, different conceptual impressions would be formed between MYCHEW and HI-CHEW.

Citation :
Crown Confectionery Co Ltd v Morinaga & Co Ltd [2008] SGIPOS 12

Panasonic defeats Pensonic

Sugu and Vicki represented Panasonic Corporation of Japan (formerly known as Matsushita Electric Industrial Co., Ltd) in an opposition in Class 9 and invalidation in Classes 7 & 11 of the mark set out below (“the PENSONIC mark”):

The PENSONIC mark was applied/registered in relation to household electronic goods, by Pensonic Corporation Sdn Bhd of Malaysia, and was not in use in Singapore. Panasonic Corporation had prior registrations for PANASONIC in classes 9, 7 and 11 for, inter alia, household electronic goods.

The opposition and invalidation succeeded.

The Registrar found PANASONIC to be well-known in Singapore based on the evidence presented. The PENSONIC mark was held to be similar to the PANASONIC mark owned by Panasonic Corporation and therefore, confusion would occur should the PENSONIC mark enter the Singapore market for identical goods.

An additional ground on which Panasonic Corporation prevailed in the opposition of the PENSONIC mark in class 9 was based on a then untested provision of the law, introduced on 1 July 2004, section 8(4)(a)(b)(i) of the Trade Marks Act which is applicable to well known marks. The Registrar held that since PANASONIC is a well-known mark to the relevant sector of the public and that a connection would be made between PENSONIC goods and PANASONIC goods, there would be a likelihood of damage to occur if PENSONIC was allowed to proceed to registration.

This is the first reported case where an opposition based on this new provision of the law succeeded.

Citations :

(i) Pensonic Corporation Sdn Bhd v Matsushita Electric Industrial Co. Ltd [2008] SGIPOS 9 (Opposition)

(ii) Matsushita Electric Industrial Co. Ltd v Pensonic Corporation Sdn Bhd [2008] SGIPOS 10 (Invalidation)

The Court of Appeal decides

Ravi, Sugu and Vicki appeared and successfully defended the registration of an important Chinese trademark in the Singapore Court of Appeal; the mark was first used in the fifties and spanned China’s transition from a centralised, government-controlled economy to the modern, market-driven economy of today. The mark is reproduced below and was registered in Singapore for cordyceps, a traditional Chinese herbal medicine.

In a 137-page judgment (which may be viewed here), the court of three judges made the following important rulings:

1. The contention that a registered mark does not actually function as a trade mark should not be considered in a revocation based on non-use as it is not relevant to the question of whether or not a mark has been used but pertains instead to the effect of the use of mark.

2. The mere fact that a mark is popular or even the only one in the market does not ipso facto render the mark generic and undeserving of protection.

3. In assessing whether a mark possesses the requisite capacity to distinguish so as to constitute a trade mark, one should look only at the inherent features of the mark, and not the use of it. In this connection, the Court of Appeal expressly adopted the Philips approach [1999] RPC 809 as opposed to the Bach approach [2000] RPC 513 which the lower court had followed.

4. The court adopted the modified Ajit Weekly [2006] RPL 25 combined test for bad faith i.e. not only must the actions of the registered proprietor fall short of the normally accepted standards of commercial behaviour, but the said proprietor knew of facts which would cause an ordinary, honest person to realise that such standards were being breached.

5. Fraud and/or misrepresentation in the registration of an assignment does not invalidate the original registration of the trade mark.

6. Once the grounds of invalidation or revocation are made out, the court does not have any residual discretion not to so invalidate or revoke.

7. A civil court should not exercise its discretion to grant a declaration of non-infringement where criminal proceedings for an offence under the Copyright Act have already been initiated.

The Court of Appeal also took the opportunity to comment on the fact that while the criminal prosecution of offences under the Trade Marks Act takes place in the Subordinate Courts, an attack on the registration by the accused person could only be initiated in separate proceedings in the High Court. This state of affairs under our laws is unsatisfactory as it resulted in a duplicity of proceedings. The court stated that in future such proceedings i.e. the criminal prosecution and the attack on the registration should be consolidated so that both matters could be heard expeditiously by the same judge.

Citation : Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another and Another Appeal [2009] SGCA 9