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.