Chapter 14 - Intellectual Property Law

Chapter 14: Intellectual Property Law
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Key Terms
Definitions
In your own words
Intellectual
Property Law
Seeks to protect creations arising out of the human mind by treating

them as items of property.
While protecting the rights of the creators, the law at the same time
tries to balance with the interests of others who may wish to make use
of the creations, for one reason or the other.
Refers to matters such as:
Trade Marks
Trade Marks
Patents
Registered Designs
Copyright
Used to distinguish goods or services provided by a business from

those provide by others.
In Singapore, trade marks are governed by the Trade Marks Act.
Meaning
A trademark is basically a sign capable of being graphically
represented and which is capable of distinguishing goods or services
provided in the course of trade by one person from goods or services
provided by any other person. [TMA, Section 2]
Trademarks can even extend to sounds

and scents which are capable of being
graphically represented.

The term sign includes any letter, word, name, signature, numeral,
label, shape, colour, aspect of packaging or any combination thereof.
[TMA, Section 2]
Registration
The best way to protect a trademark is to register it.
By registering it, the owner may be able to more effectively, stop
others from copying it and grant licences to third parties to use the
trademark in return for payment (such as franchises)
To register, the applicant must use or have a bona fide intention of

using the mark in the course of trade in relation to the class of goods
or services for which the registration is sought. [TMA, Section 5(2)]
Mark that is identifiable to business and

used for commercial purpose. Identify
class of service.
If cannot register trademark, still can use

logo protected under Tort of Passing off
The TMA classifies goods and services into various categories. [TMA
Section 6]
If an applicant is in a certain business, he can only seek registration in

that line of business. He cannot seek to register the trade mark in
respect to another category of goods, unless he has a bona fide
intention of going into that line of business as well.
a) Grounds on which registration may be refused
If the mark is devoid of distinctive character,

then the registration will not be permitted. [TMA, Section
7(1)b]
If the mark is indicative of the kind, quality,
There are 45 categories under the TMA.

quantity, intended purpose, value or geographical origin or
time of production or other characteristics of the goods or
services, then it cannot be registered. [TMA, Section 7(1)c]
If the trademark is contrary to public policy

or intended to deceive the public, then registration may be
refused. [TMA, Section 7(4)]
A mark shall not be registered if it is identical

to an existing trade mark and the goods or services in
respect of which registration is sought are identical. [TMA,
Section 8(1)]
A mark shall not be registered if it is identical

to an existing trademark, and the goods or services in
respect of which registration is sought are similar; or if the
mark is similar to an existing trademark and registration is
sought in respect of goods or services which are identical or
similar, unless there is no likelihood of confusion on the part
of the public. [TMA, Section 8(2)]
A mark cannot be registered if either the

whole or essential part of it is identical or similar to an
earlier trademark, provided,
- the earlier trademark is well known in Singapore, and
the use of the latter trademark would indicate a connection
with the proprietor of the earlier trademark and is likely to
damage the interests of the proprietor of the earlier
trademark, or
- if the earlier trademark is well known to the public at
large in Singapore and, the use would cause a dilution in
an unfair manner of the distinctive character of the earlier
trademark or would take unfair advantage of the distinctive
character of the earlier trademark. [TMA, Section 8(4)]
b) Duration of registration
Once registered, the trademark is valid for 10 years, and thereafter it
may be renewed for further periods of 10 years. [TMA, Section 18]
EXCEPTION [Section 7(1), Section 7(2)]

If the trademark has acquired distinctive
character as a result of use made of it,
registration may nonetheless be allowed.

Item of property
A trademark is an item of property [TMA, Section 36] and may be
assigned [TMA, Section 38] or licensed [TMA, Section 42].
Infringement of Trade Marks

A person infringes a trademark if he, without the consent of the
proprietor of the trademark, uses in the course of trade, an identical
mark in respect of identical goods or services. [TMA, Section 27(1)]
A person infringes a trademark if he, without the consent of the

proprietor of the trademark, uses in the course of trade an identical
mark in respect of similar goods or services, or a similar mark in
respect of identical or similar goods or services and there exists a
likelihood of confusion on the part of the public. [TMA, Section 27(2)]
A person infringes a trademark which is well known in Singapore if:

o Without the consent of the proprietor of the trademark,
he uses in the course of trade a sign which is identical with or
similar to the trademark, in relation to goods or services which
are not similar to those for which the trademark is registered,
o The use of the trademark in relation to those goods or
services would indicate a connection between those goods or
service and the proprietor,
o The use of the trademark in relation to those goods or
services would indicate there exists likelihood of confusion on
the part of the public because of such use, and
o The interests of the proprietor are likely to be damages by
Assignment is akin to selling a property

Licensing is akin to renting it out.
Section 27 sets out how a trademark may

be infringed.

such use. [TMA, Section 27(3)]
It is not an infringement to use a registered trademark if such use

constitutes fair use in comparative commercial advertising or
promotion or if it is for non-commercial purposes or if it is for the
purpose of news reporting or news commentary. [TMA, Section 28(4)]
a) Do parallel imports result in infringement?

Parallel import refers to the process whereby a person seeks to sell
goods or services which are the subject of a trademark (or copyright or
patent) without the consent of the proprietor of that trademark (or
copyright or patent) in Singapore, but with the consent of the
proprietor of that trademark in another country.
PARALLEL IMPORTS DO NOT RESULT IN INFRINGEMENT under Section
29 of Trade Marks Act, Section 25(3) of Copyright Act, or Section 66(2)
(g) of the Patents Act (subject to conditions stated therein)
a) Consequences of infringement
If the proprietor of the trademark proves an infringement, he may seek
an injunction.
He may also obtain damages, account for profits made or statutory

damages [TMA, Section 31]
He may also ask for a court order to remove any infringing sign [TMA,
Section 32] or for the delivery up of infringing copies [TMA, Section 33]
Section 28 sets out certain matters which

do not amount to an infringement.

For criminal sanctions
The TMA provides that the counterfeiting of trademarks [TMA, Section
46], or the importing or selling or keeping in possession for the
purpose of trade or manufacture, goods which infringe the trademark
of a registered proprietor could amount to an offense [TMA, Section
49].
The mere possession of a good with an infringing trademark for private

purpose is not an offence.
International protection
The proprietor of a well-known trademark in a convention country may
restrain, by injunction, the use in Singapore in the course of trade a
similar or identical trademark in relation to identical or similar goods or
services, if such use is likely to cause confusion. [TMA, Section 55(2)]
A proprietor of a well-known trademark shall be entitled to an

injunction if, without the proprietors consent, an identical or similar
mark is used in relation to any goods or services, if:
That would indicate a connection between the goods or
services and the proprietor, and is likely to damage the interests
of the proprietor, or
If the proprietors trademark is well known to the public at
large in Singapore, and usage would cause dilution in an unfair
manner of the distinctive character of the proprietors
trademark, or would take unfair advantage of the distinctive
character of the proprietors trademark. [TMA, Section 55(3)]
A Singapore trademark holder may be able to protect his trademark in
Injunction is a court order forcing the

defendant to embark on a particular
course of action, such as ordering the
defendant not to use the name or get up
of the plaintiffs business.
Statutory damages can only be claimed is

the infringement relates to the use of
counterfeit trademarks [TMA, Section
31(5)]. Plaintiff is not compelled to proof
his actual loss to claim statutory damages.
The factors the court would have to
consider in determining the amount of
statutory damages are set out in [TMA,

other convention countries. It is also possible for a Singapore
trademark holder to register his trademark in another country by
following the requirements for registration in that country.
Section 31(6)]. Subject to an exception,

there is also a maximum amount of
statutory damages that can be paid out
and this is set out in Section 31(5)(c).
Pursuant to the Paris Convention and the

TRIPS Agreement
Alternatively, he may make use of the

Madrid Protocol, which Singapore
acceded in July 2000. By using this

Protocol, the Singapore trademark holder
would be able to register his trademarks in
other countries which have also acceded
to the Protocol, in a cheaper and far less
cumbersome manner.
Patents
To protect inventions. (Provide incentive to innovate)
Singapore follows the first-to-file system (as opposed to the first-toinvent system).
Governed by Patents Act.
Need for Registration

Process may be complicated and take time. Services of patent agents
or patent attorneys may be required.
The right to apply for the patent generally lies with the inventor or
joint-inventors [PA, Section 19].
An invention made in the course of employment by an employee

belongs to the employer, and in such a case, it would be the employer
who is entitled to apply for the patent [PA, Section 49], unless
otherwise stated [PA, Section 50(4)]
Inventions that can be patented can relate

to products (eg. Machines) or processes
(eg. Process of making a micro-chip)

Criteria for registration
To register a patent [PA, Section 13], it must be established that:
The invention is new,
New means that the invention must not form part of the state
of art [PA, Section 14(1)].
State of the Art refers to any prior information relating to the
invention that is available to the public in Singapore or
elsewhere [PA, Section 14(2)].
Has to be established that the invention is new if it can be
established that a similar invention has been documented
previously elsewhere, then the invention may not be considered
new.
This means that while the product/process is being developed,
great care should be taken to keep the information secret.
It involves an inventive step, and
The invention must not be obvious to someone skilled in the art
[PA, Section 15]
Subject to some exceptional situations

[PA, Section 14(4)]
It is capable of industrial application

An invention is capable of industrial application if it it capable of
being used in any industry, including agriculture [PA, Section 16]
Invention must be capable of some physical or practical
application. If the invention consists purely theoretical
information which cannot be applied to the industry, then this
requirement has not been met.
Factor that may be relevant (but not

conclusive) whether the invention has
taken a long time to come about. If it has
take a long time to come up, that may
suggest that the invention is not obvious.
Duration & Property rights

Once registered, the patent is valid for 20 years [PA, Section 36].

A patent is an item of property [PA, Section 41] and may be assigned
or licensed.
Infringement of patents
If a person without the consent of the proprietor of the patent makes,
uses or imports the invention, that would amount to infringement. [PA,
Section 66]
Situations provided by Section 66.
If instead of making a direct copy, the defendant makes a variant,
whether that would amount to an infringement would depend on
whether the defendant has nonetheless followed the pitch and
narrow (essential features) of the earlier invention.
DEFENCES
If the acts are done for private and non-commercial purposes [PA,
Section 66(2)], or if they are done for experimental purpose [PA,
Section 66(2)], or if they are used for the services of the government
[PA, Section 56].
ENTITLEMENT
If an infringement can be proved, the proprietor of the patent may be
entitled to an injunction, damages, account for profits and delivery up
of infringing materials [PA, Section 67]. However, infringing a patent in
this manner does not result in criminal liability.

International Protection
By registering a patent in Singapore, the proprietor gets protection
only in Singapore. If he wishes to get protection in other countries, he
has to register again individually in those countries, or seek to register
in other countries through the provisions of the Patent Co-operation
Treaty, which is an international agreement that Singapore has
assented to.
Using the Treaty might be cheaper, faster and less cumbersome
process to get a patent registered overseas.
Registered
Designs
Designs are governed by the Registered Designs Act.
For such designs to be protected, they need to be registered.
The drawing of a design may also amount to an artistic work for which
copyright may exist. However, generally stated, if a design could be
registered under the Registered Designs Act and it is not, it will not be
protected by copyright [Copyright Act, Section 74]
Criteria for Registration

A Design refers to features of shape, configuration, pattern of
ornament applied to an article by any industrial process [RDA, Section
2].
If the features of the shape or configuration were solely determined by

the function off the article, then that design cannot be registered.

[RDA, Section 2].
To register the design, it must be new [RDA, Section 5].

The design must not have been previously published in Singapore or
elsewhere and further it cannot just differ in terms of immaterial
details from existing designs [RDA, Section 5].
Duration & Rights

Once registered, the design is valid for 5 years, and may be extended
for a 2nd or 3rd period of 5 years by paying extension fees [RDA, Section
21].
The proprietor of the registered design has the right to make in

Singapore, or import into Singapore, or sell or hire out any article in
respect of which the design is registered [RDA, Section 30].
The registered design is an item of property and may be assigned or

licensed. [RDA, Section 32]
Infringement of Registered designs

If there is an infringement, for instance, if someone tries to make,
import, sell or hire out any article in respect of which the design has
been registered without the consent of the proprietor of that design,
an action may be brought to recover damages or account for profits

and an injunction may be granted [RDA, Section 36].
Further, an order of delivery up [RDA, Section 40] or disposal of

infringing articles [RDA, Section 41] may be made.
DEFENCES
If the act is done for private, non-commercial purposes [RDA, Section
30(5)].
No criminal liabilities are imposed for infringements under the RDA.
International Protection
If a design is registered under the RDA, that design is protected only in
Singapore.
Generally, if the proprietor of that design wishes to get protection in

other countries, he has to register that design in those other countries
in accordance with the local laws of those countries or use the Hague
System administered by the International Bureau of the World
Intellectual Property Organisation, which allows international
registration in countries which are partied to the Hague Agreement by
filling 1 application, thereby saving time and money.

5
Copyright
The Law of copyright does NOT seek to protect ideas, facts or

information. Instead, it seeks to protect the form of expression of those
ideas, facts or information.
Difficult to protect rights without

registration no 1st had proof (Problem of
authorship
No need for Registration

Copyright protection is automatic.
Sometimes the product in question might state that it is subject to

copyright laws or it might come with a symbol. However, it is not
compulsory to have these notifications, and even without them the
owner of the copyright may enjoy copyright protection.
PRE-CONDITIONS
i.
Copyright exists only in respect of certain types of
matters, and
a)
WORKS
All that is necessary is that the work must not be copied from another
work and must be a result of ones own skill, labour or judgement.
Literary works includes compilations in any form and computer

programmes [CA, Section 7A]
For a work to qualify as a literary work, literary merit is irrelevant.

Cases have also held that to qualify as a literary work, the contents
must be able to offer information or pleasure or instructions to the
reader. Thus, if the work were very short, it may be difficult to consider
it as a literary work.
Work refers to original literary, dramatic,

musical and artistic works.
Originality does not refer to novelty or
something inventive.

Dramatic work includes written notes for a choreographic show or
mime show and scripts for films [CA, Section 7(1)].
It is possible for that dramatic work may

also qualify as literary works.
Artistic work is defined as paintings, sculptures, drawings, engravings,

photographs, buildings or models for buildings and other artistic
craftsmanship [CA, Section 7(1)].
b)
SUBJECT MATTER OTHER THAN
WORKS
Commonly known as Entrepreneurial

Rights.
Compromise sound recordings (compact discs, cassette tapes),

cinematographic films (laser discs, video compact discs, digital video
discs), broadcasts (television, sound broadcast transmitted by
wireless means), cable programmes (transmission otherwise than by
wireless means) and published editions of works.
For matters not listed in the Copyright Act, there is no copyright.
ii.
There must be some connection between the author
or the maker and Singapore
For literary, artistic, dramatic and musical works which have been
published, the author must be a qualified person at the time the work
was first published, or the work must be first published in Singapore
[CA, Section 27].
For sound recordings or cinematographic films, the recording or the

films must have been made or first published in Singapore or created
by a qualified person [CA, Section 87 and 88].
Qualified person refers to Singapore

citizens or residents, or in the case or
corporations, a corporation which is
incorporated under the written laws of
Singapore [CA, Section 27(4) and 81].

For broadcasts, the broadcast must be from Singapore by a holder of
broadcasting license [CA, Section 89].
For cable programmes, a qualified person must have provided the

cable services [CA, Section 90].
For published edition of works, the work must be first published in

Singapore, or the publisher must be a qualified person [CA, Section 91]
Duration of copyright
For authors works, copyright generally extends for the duration of the
life of the author plus 70 years [CA, Section 28(2)].
However, if the work is yet to be published, performed in public,

broadcasted, included in a cable programme or if the records of the
work have not been offered or exposed for sale to the public, before
the authors death, copyright extends to 70 years after the work was
first published, performed in public, broadcasted, included in a cable
programme or records of the work were first offered or exposed for
sale to the public [CA, Section 28(3)].
For sound recordings, cinematograph films, the duration is generally

70 years from the time it was first published [CA, Section 92 and 93].
For broadcasts and cable programmes, it is 50 years from the time it
Proved void due to the Berne Convention.

was broadcast or included in a cable programme [CA, Sections 94 and
95].
For published edition of an authors work, copyright extends to 25

years from the 1st publication [CA, Section 96].
Ownership of copyright
Generally, the authors or makers of the work have copyright.
EXCEPTIONS
If the case of employees, unless the contract provides otherwise, the
copyright in works created in the course of employment belong to the
employer [CA, Section 30(6)].
Unless the contract provides otherwise, when a newspaper or

magazine employees someone, the employer only has the right to
publish the work in the newspaper or magazine, or to make a
reproduction of it for the purpose of publication in that newspaper or
magazine [CA, Section 30(4)].
Rights conferred by copyright

In relation to literary, dramatic and musical works, copyright gives the
proprietor the right to:
Reproduce the work in a material form

Publish the work
Perform the work in public
Communicate the work to the public
Make an adaptation of the work or do any of the abovementioned acts in respect of the adapted work.
For artistic work, there is NO right to perform the work in public [CA,
Section 26(1)(b)]. The right to reproduce the work includes right to
convert works in 2-dimensional form into 3-dimensional form and viceversa [CA, Section 15(3)].
For sound recordings, the proprietor is given the right to make copies,
publish it or make it available for the public by means of a digital audio
transmission [CA, Section 82].
For cinematograph films, the proprietor is given the right to make

copies of the film, cause the film to be seen in public or communicate
it to the public [CA, Section 83].
For broadcasts generally, the proprietor has the right to make certain
copies, cause it to be seen or heard in public before a paying audience,
re-broadcast it or otherwise communicate it to the public [CA, Section
84].
For cable programmes, the proprietor has the right to make certain
copies, cause it to be seen or heard in public before a paying audience
or communicate it to the public [CA, Section 85].
Section 26(1)(a) provides rights.

For published edition of authors works, the proprietor has the right to
make reproductions of the edition [CA, Section 86].
Item of property
Copyright is an item of property and may be assigned or licensed.
Licences may be exclusive or non-exclusive.
EXCLUSIVE
The proprietor would not grant similar rights in the subject matter of
the copyright to others.
NON-EXCLUSIVE
The owner of the copyright would usually still retain the right to grant
a similar right to others.
Infringement of Copyright
When a person, without the consent of the proprietor, does any of the
acts that only the proprietor of the copyright is entitled to do, there will
be an infringement [CA, Section 31 and 103].
This is the case (generally) even if the person infringing is innocent
In some cases, licences may be implied,

instead of being express.

and unaware of the infringement.
Even if the person infringing acknowledges that the work is not his and
belongs instead to the holder of the copyright in that work, it is
considered to be an infringement.
Since copyright only protects the form of expression and not the idea,
the expression and not the idea has to be reproduced for infringement
to occur.
For there to be infringement, the form of the expression copied need

not be identical, it will suffice if it in a material form.
HOW MUCH MUST BE COPIED FOR IT TO AMOUNT FOR INFRINGEMENT?

If there were substantial copying, that would amount to a reproduction.
Substantial copying would depend on the facts of each case.

Generally, quality of what is copied must be looked at and not just the
quantity that is copied.
Proprietors of literary, dramatic and musical works, as well as

proprietors of cinematograph films, broadcasts and cable programmes
have the right to transmit the work in public.
Instead of personally infringing, if someone authorises another to

infringe, there could be liability as well [CA, Section 31].

DEFENCES
o In relation to a literary, dramatic, musical or artistic work,
if the copying amounts to a fair dealing for purposes of research
or study, then that would be a defence [CA, Section 35].
However, with regard to a published edition of literary, dramatic,
musical or artistic work, if the amount copied is less than 10%,
or in the case of a publication divided into chapters, 1 chapter of
the work, that is deemed to be fair dealing if done for purposes
of research or study [CA, Section 7(2) together with 35(3)].
o In relation to a literary, dramatic, musical or artistic work,
if the copying amounts to a fair dealing for purposes of criticism
or review [CA, Section 36] or the purpose of reporting current
events [CA, Section 37], then that could be a defence.
o In the case of a literary work in a computer programme, if
a copy of it is made by the owner of the programme for the
purpose of replacing the original should it get destroyed or
rendered unusable, that would be a defence [CA, Section 39].
o Making of a copy of a broadcast or cable program for
private or domestic use is a defence [CA, Section 114].
o Defences relating to educational institutions [CA, Section
50A to 53], libraries [CA, Section 44 to 49] and government
services [CA, Section 198] which allow copying in certain
circumstances.
o There might be an implied licence to carry out 1 or more
of the rights associated with copyright, and in such
circumstances, there would not be an infringement.
Consequences of Infringement
If copyright is breached, an action for damages or an account for
profits [CA, Section 119] may be brought by the copyright owner.

An action for statutory damages may be bought [CA, Section 119].
Subject to an exception, there is a limit as to the amount of statutory

damage that can be claimed.

Chapter 14 - Intellectual Property Law

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Chapter 14 - Intellectual Property Law

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Chapter 14: Intellectual Property Law

In your own words

Seeks to protect creations arising out of the human mind by treating

Refers to matters such as:

Used to distinguish goods or services provided by a business from

In Singapore, trade marks are governed by the Trade Marks Act.

Trademarks can even extend to sounds