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.