No. 2

We are proud to announce the arrival of Ravi's 2nd. It arrived about a week ago, all swaddled in white, causing quite a stir in the office. We are, of course, referring to the 2nd edition of "Trade Marks Act - A Commentary", published by the good people at Lexis Nexis. For a closer peek at the young 'un, please click here.

Congratulations, Ravi!

"Raffles" not similar to "Raffles Fine Arts Auctioneers"

The Registry of Trade Marks recently held that the mark “Raffles” was not similar to “Raffles FINE ART AUCTIONEERS”.

Raffles Fine Arts Auctioneers Pte Ltd (the “Applicant”) had filed to invalidate Raffles Corporate Consultants Pte Ltd's (the “Registered Proprietors”) registrations for the sole word “Raffles” (the “Raffles Marks”) for business management consultancy services and financial consultancy services under Class 35 and Class 36 respectively. The application was grounded on the basis that the Applicant had earlier rights in the unregistered marks “Raffles” and “Raffles Fine Arts” used in relation to business consultancy and financial solutions (“the Services”), such that use of the Raffles Marks would amount to passing off.

One of the Raffles Marks

The Applicant had alleged goodwill in the mark “Raffles”. In support, the Applicant submitted evidence of its sales figures, official receipts issued to clients, promotional and advertising materials, a schedule of clients to whom they had provided advice and declarations made by clients. However, it was clear from the evidence that the actual mark used consisted of the words “Raffles Fine Arts Auctioneers”, and not “Raffles” per se. The Registrar also noted an absence of tax invoices for the Services, and commented that this made it difficult to prove the actual provision of such services.

The Applicant's Mark

Taking into account the sales volume and promotion of the Applicant’s marks, the Registrar was of the view that it had not acquired sufficient goodwill in relation to the Services.

With regard to the element of misrepresentation, the Registrar commented that it is the impact on the persons to whom the misrepresentation is addressed, and not the state of the mind of the defendant, that is material. In this case, the marks were found to be visually, aurally and conceptually dissimilar. Moreover, as the word “Raffles” is peculiar to Singapore, being the last name of her founder, Sir Stamford Raffles, the public would be more discerning of marks consisting of the word “Raffles”. As such, the Registrar held that there was no likelihood of confusion and therefore the element of misrepresentation was not present.

As the first two elements of passing off (i.e. goodwill and misrepresentation) were not made out, the Registrar found it unnecessary to consider the third element of damage. Consequently, the invalidation action was dismissed and the Applicant was ordered to pay the Registered Proprietors’ costs.

Citation :
In the matter of TM Nos. 06306/03 and 06307/03 in the name of Raffles Corporate Consultants Pte Ltd [2010] SGIPOS 1

IPOS Legal Decisions

We are pleased to note that the Intellectual Property Office of Singapore has taken heed of practitioners' feedback, and has started to publish the full text of its legal decisions on its website (look under 2010 for the lovely inaugural .pdf file). Prior to this happy development, only decision summaries were made available and practitioners had to look to other sources such as Lawnet for the full text.

Reliance on New Zealand patents to grant

In Singapore, it is possible for a patent application to proceed to grant based on final examination results or granted patent of a corresponding application in any one of seven prescribed patent offices, including the New Zealand Patent Office. When this option is elected, section 30(3)(c) of our Patents Act states that the claims in the Singapore patent application must relate to the claims in the corresponding application (we believe that the claims should be identical) which have been examined for novelty, inventive step and industrial application.

However, the Singapore Registry has recently highlighted that the New Zealand Patent Office does not examine patent applications for inventive step. Therefore, while Singapore patents proceeding to grant on the strength of a corresponding New Zealand patent (or final examination results thereof) will still be granted, such patents may be challenged on the basis that they have not been examined for inventive step. In that event, it is possible to request post-grant search and examination at the relevant time.

In the circumstances, patent applicants are encouraged to rely on corresponding patents of prescribed offices i.e. the United States, United Kingdom, Australia, Korea, Japan, European Patent Office (if filed in English), Canada (if filed in English), which examine for all three criteria of patentability, or final examination results thereof.

Meanwhile, it is believed that the current New Zealand Patents Act of 1953 will be replaced by a new Act, which will, among other changes, introduce inventiveness as an examination criteria.

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.