Intellectual Property

From copyright over a simple musical jingle to patents over cutting-edge inventions and trademarks to protect your brand, here at Trident Law, we handhold you in protecting your creations.

Investments of time, skill, and effort in the creative process ought not to be wasted or worse, stolen by your competitors.

The power of branding in the commercial world can never be underestimated – through a short slogan and a symbol, a company can stand out from its competitors and be etched in the mindspace of its consumers. Over time, goodwill in a brand is established. As time has repeatedly shown, that goodwill needs protection from your competitors.

Accordingly, a strong trademark portfolio lays the foundation for an organisation to take its level of branding to greater heights and garner more market share. In this regard, we will work with you for the entirety of the process of establishing your reputation and brand through the registration of a trademark up till the protection of your reputation and your brand should there be another party infringing it in the market.

Where necessary, we may even assist you in the invalidation of the registration of a trademark, preventing others from eating into your share of the market. We also defend you where other parties are opposing the registration of your trademark for any reason. We leave no stone unturned in assisting you in protecting your valuable works, regardless of whether the issues involve copyrights, patents, trademarks, or other exotic forms of intellectual property rights.

TRIDENT LAW CORPORATION’S ACCOLADES AND VALUES – LAWYERS WHO GO THE DISTANCE TO MAKE A DIFFERENCE

Trident Law Corporation has been given:

• A 5-star rating in the Criminal Law and Company and Commercial Law categories; and
• A 4-star rating in the Civil Disputes, Family Law and Negligence and Liability Law categories.

We pride ourselves on adding value to each client’s experience of intellectual property rights in Singapore. We do this by doing our best to uphold our core values of tenacity, rigour and ingenuity. Our established reputation is built on an unflinching determination in going above and beyond for our clients.

TRIDENT LAW CORPORATION’S INTELLECTUAL PROPERTY TEAM

The protection of intellectual property goes hand in hand with business development. From copyright over a simple musical jingle to patents over cutting-edge inventions and trademarks to protect your brand, here at Trident Law Corporation, we handhold you in protecting your creations.

Investments of time, skill, and effort in the creative process ought not to be wasted or worse, stolen by your competitors.

The power of branding in the commercial world can never be underestimated – through a short slogan and a symbol, a company can stand out from its competitors and be etched in the mindspace of its consumers. Over time, goodwill in a brand is established. As time has repeatedly shown, that goodwill needs protection from your competitors.

Accordingly, a strong trademark portfolio lays the foundation for an organisation to take its level of branding to greater heights and garner more market share. In this regard, we will work with you for the entirety of the process of establishing your reputation and brand through the registration of a trademark up till the protection of your reputation and your brand should there be another party infringing it in the market.

Where necessary, we may even assist you in the invalidation of the registration of a trademark, preventing others from eating into your share of the market. We also defend you where other parties are opposing the registration of your trademark for any reason. We leave no stone unturned in assisting you in protecting your valuable works, regardless of whether the issues involve copyrights, patents, trademarks, or other exotic forms of intellectual property rights.

UNDERSTANDING INTELLECTUAL PROPERTY

Intellectual Property (“IP”) relates to “creations of the human mind”. Some instances of IP include brands of goods and services, inventions, movies and written works. In this regard, IP has a lot to do with following consumer behaviour (and perception) as well.

According to Second Minister for Law Mr Edwin Tong Chun Fai, SC, during his Second Reading speech on the Intellectual Property (Amendment) Bill on 12 January 2022, the World Economic Forum ranks Singapore to be “first in Asia and second globally for IP protection”.

The Intellectual Property (Amendment) Act 2022 was passed by Parliament on the same day. It amends several Acts of Parliament on IP. Most of the amendments will take effect in May 2022, save for a new mechanism for examining plant variety protection applications, which will be implemented later.

The Supreme Court of Judicature (Intellectual Property) Rules 2022 (the “Rules”) took effect on 1 April 2022 after a comprehensive public consultation exercise. The Rules bring together the Rules of Court pertaining to IP into one single document. The Rules strengthen Singapore’s IP dispute resolution process, providing greater access to people and companies, including SMEs. The Rules put in place a simplified process for certain IP claims. To this end, ceilings may apply to the following: costs, damages, and duration of the trial. In addition, the simplified process enables prompt case management. It is intended to help expedite disputes that are less costly for the parties. To find out more about the Rules, you may wish to consult the Singapore Courts’ website, accessible here.

There are a number of different kinds of IP. Each kind of IP relates to an innovation or design that is regulated by separate applicable laws in Singapore. You can find out more about IP by referring to the informative IPOS website, accessible at www.ipos.gov.sg. The kinds of IP that you may relate to in your everyday life are, amongst others, trade marks, patents, registered designs, copyright and trade secrets. Newer kinds of IP are set out further below.

Turning to the kind of IP right that you are seeking, you might have to register the IP with IPOS to secure its protection in accordance with Singapore law. The law provides you as the IP holder, the sole and special right to use your IP, in view of preventing others from doing so. IP could also be seen as a kind of property in that the IP holder can provide a licence, allocate or sell the IP to another person or entity.

The safeguarding of your IP depends on the law of the land. This means that if you were to secure an IP right in Singapore, you might not have the same rights abroad. If you want to secure your IP rights abroad, you might have to apply for registration in the other countries. Alternatively, where applicable, e.g. for trade marks, you may wish to consider applying for international registration of the relevant IP.

The remedies that you may get from the inappropriate or illegal use of your IP, without your permission, could be: (i) an injunction to stop the conduct that gives rise to the breach; (ii) compensation for your loss; and/or (iii) the revenue generated by the other party that resulted in disadvantage to you.

Trade marks
A trade mark can help you improve your business. Its use may enable clients to recognise your goods and services, consolidating your interests in part of the market.

A trade mark is a sign that you may use to differentiate your company’s goods or services from those of other businesses. When you successfully register your trade mark with IPOS, you would have the sole and special right under the Trade Marks Act 1998 to use your trade mark to the exclusion of others, in that they cannot use signs that are identical or similar to the trade mark that you had registered.

Some typical instances of trade marks include: word marks; marks that comprise a graphic or picture; a mark that comprises both a word and graphic/picture mark; a sound (here the representation of the sound must be set out in writing/printed); and “an aspect of packaging”.

To seek registration of your trade mark, you would have to submit: (i) a unique sign that you want to use as your trade mark; and (ii) an explanation on the goods and services that your trade mark would apply to. To this end, you may wish to identify the particular “Nice Classification”, accessible here.

If you successfully register your trade mark, you would have the right to use it for 10 years from the date you had submitted your application for registration. You can seek renewal towards the conclusion of the 10 year period. In this way, you could ensure the continued validity of your trade mark over the long term.

The Intellectual Property (Amendment) Act 2022 amended section 8 of the Trade Marks Act 1998 by providing for the period that a trade mark that has expired would still be considered an earlier trade mark. A registered trade mark would be deemed an “earlier trade mark” provided that it can still be renewed. An earlier international trade mark that has been registered in Singapore will be considered as an “earlier trade mark” unless the Registry is informed of non-renewal by the International Bureau.

Patents
A patent can be a commercial boon, whether as a way to generate state-of-the-art technologies, get funding, or secure benefits from third parties by selling it to them or through a licensing agreement.

A patent is an exclusive right given to the person who has invented something to use it and gain from it. Nobody else can benefit from the patent without your consent. A patent could be a completely new product or an enhancement to current technology.

If you successfully register your invention, you would have the sole and special right under the Patents Act 1994 to use your invention to the exclusion of others in that they cannot manufacture, deal in and use it.

You may wish to take into account the following considerations before filing an application for a patent:

• Is your invention capable of being patented? To this end, it is to meet 3 requirements: (i) it is to be a novel invention and unprecedented in that the global community does not know of it [i.e. never publicised]; (ii) it is to amount to an advancement in the current technology (its value-add enhancement in this context cannot be evident to a person with expertise in the field); and (iii) it ought to be useful and serve some relevant, workable purpose in the field.
• Does the invention belong to you? Generally an invention belongs to the person who created it, except for where the invention was formed in a work setting (within the scope of your employment), in which case the owner of the invention would be the employer.
• How would you apply for the patent? The application, together with its enclosed patent information would have to meet and satisfy some requirements. To this end, you should consider getting a lawyer or registered patent agent to assist you. If you successfully register your patent, you would have the right to use it for 20 years from the date you had submitted your application for registration provided that you continue to make the requisite yearly payment for renewal. Such payment for the maintenance of the patent commences from the 5th year.

The Intellectual Property (Amendment) Act 2022 amended sections 26 and 28 of the Patents Act 1994 to do away with the need for an applicant for a patent to submit additional documents in certain situations. Where an applicant has already submitted a patent application, the applicant would not have to submit a copy of a previous related application or its English translation when seeking to: (i) include the description in the application by reference; (ii) submit information that had not been included in the earlier application; or (iii) provide documents or information that substantiates a priority claim.

Registered Designs
A design safeguards the outward appearance of a “non-physical product”. It relates to elements of the form and structure that the non-physical product takes, its make-up/composition or layout that are put on that product, giving it its outward appearance.

If you are a designer, you can seek registration to safeguard the outward appearance of a product (such as its form, its make-up/composition or layout) that you intend to make. A few instances of designs that were registered under the Registered Designs Act 2000 are those for bags and furnishings.

If you successfully register your design, you would have the sole and special right under the Registered Designs Act 2000 to the general appearance of the entire (or part of) the design of the product, to the exclusion of others. In doing so you would be in a position to prevent them from manufacturing and dealing in products that include your registered design without your consent. A registered design is a type of property that can be assigned or licensed to another party. Designs can be in two-dimensional or in “3-D” form.

You may wish to take into account the following considerations before filing an application to register a design:

• Does your design meet the requirements for the purposes of registration? Your design must meet the following requirements: (i) it is to be novel and unprecedented in that the global community does not know of it [i.e. never publicised]; and (ii) it must be “industrially applied” for the purposes of the Registered Designs Act (one example: over 50 copies of the article were produced or would be produced for the purposes of sale or hire).
• Does the design belong to you? Generally a design belongs to the person who created it, except for where the design was formed in a work setting (within the scope of your employment), in which case the owner of the design would be the employer, or if the design was made pursuant to an assignment (i.e. where you were given the responsibility to come up with the design, or “commissioned” to do so), in which case the owner of the design would be the person who had granted the assignment.

If you successfully register your design, you would have the right to use it for a starting period of 5 years from the date you had submitted your application for registration, that is renewable every 5 years, until 15 years have elapsed. After 15 years, the design would no longer be renewable.

Copyright
Copyright is a way to safeguard the representation of ideas that have taken shape. If you have the copyright to the work, you have the right to use and benefit from the work to the exclusion of others. This means that others cannot print (publish), act out the work in front of an audience or the community-at-large, present the work to the community or adjust/modify the work.

Copyright safeguards the rights of those who produce works that include artistic, dramatic and musical works, literature, movies, plays, audio recordings, broadcasts and the like.

In contrast to trade marks and patents, it is not necessary for you to register your work to enjoy your copyright in Singapore. The safeguarding of your rights pursuant to the Copyright Act 2021 takes place immediately if: (i) your work is authentic (in that, it is original); (ii) your work is set out in material form (i.e. taped or expressed in writing); and (iii) as the producer of such work, you were a Singaporean or a Resident in Singapore (where this is not the case, your work could still be eligible if it was first printed [published] in Singapore).

Generally the copyright in the work belongs to the writer or producer of that work, except for where the writer or producer had created the work within the scope of employment, in which case the employer has the copyright, or where the work was produced pursuant to an assignment, in which case the person who had granted the assignment has the copyright.

If you hold the copyright in the relevant works, you would have the sole and special access to a “bundle of rights” that exists in the works. The bundle of rights and period in which you enjoy copyright would differ considering the kind of work created (and the kind of copyright that accompanies it), as well as if it has been printed (published). For example, for a writer who owns the copyright to a published book of literature:

• The bundle of rights consists of: (i) the right to replication of the work; (ii) the right to print (publish) it; (iii) the right to act out the work in front of an audience, or before the community-at-large; (iv) the right to present the work to the community; and (v) the right to adjust or modify the work and enjoy any of the rights mentioned above involved in such adjustment or modification.
• The safeguarding of the copyright commences from the date that the work had been produced or printed (published), and continues throughout the writer’s life, plus an additional 70 years from the close of the year of the writer’s demise.

Trade Secrets
A trade secret consists of factual knowledge or a concept that is often of commercial worth, is meaningful to the business, and has not been disclosed to the community. This could include a methodology that enables a company to have “one-up” over others. A trade secret is often solely revealed to some important employees, members or shareholders of a company. Revealing a trade secret can have detrimental effects on the business.

Trade secrets are safeguarded by laws on confidentiality, or the relevant provisions contained in confidentiality agreements. A trade secret can be kept confidential in the long term, if action is taken to protect such information from “leaking out”.

The action that you can take to safeguard a trade secret includes:

• Determining that the factual knowledge is confidential;
• Making certain that such information is confined solely to the knowledge of a few persons, i.e. revealed on a case by case basis, only disclosed to certain people as a matter of necessity; and
• Making certain that any person who knows or may come to know of such information appends her or his signature to a Non-Disclosure agreement. For employees, a provision on confidentiality can be set out in their employment contract. You should consider whether to get in touch with a lawyer on what to set out in the Non-Disclosure agreement on employment contract.

The conduct of unlawful disclosure of a trade secret amounts to a breach of confidence that is actionable in Court.

When taking into account whether a breach of confidence has been proven, the Court will note the following:

• Whether the factual knowledge is of confidential value;
• Whether such information was given in a situation that imposed a responsibility to keep the information confidential. This can be determined even if such confidential information was obtained without the company’s awareness or permission; and/or
• Whether the person who came to know of such information can show that her or his “conscience was clear” e.g. by showing that s/he did not know of the confidentiality of the information or s/he inadvertently, incidentally or unintentionally came to know of it.

Plant Variety Rights
If you are a cultivator of plants, and you have found and nurtured a different, novel plant variety, you can claim IP over your new plant variety by submitting an application for a Grant of Protection for a Plant Variety with IPOS.

If you secure such a Grant of Protection, this means that you possess the sole and special right to stop others from taking up any of the activities below to cultivate or spread the growth of the material of the safeguarded plant variety without your permission:

• Production/Reproduction;
• Enhancements to spread the growth of the plant variety;
• Represent that it is available for purchase;
• Sale or other types of promoting the plant variety;
• Export or import;
• Keep an inventory and keeping stock for any of the activities set out above.

Conversely, your IP does not cover others’ use of the plant variety for their own personal, non-economical, testing, or research ideas, or for the purpose of cultivating other plant varieties.

Securing a Grant of Protection from IPOS would also enable you to, in turn, grant a licence to a third party, get royalties and reproduce the plant variety for profit.

If you secure the Grant of Protection from IPOS, your plant variety will be safeguarded for 25 years from the date of the grant, provided that you renew it annually.

Geographical Indications
A geographical indication (“GI”) could include an indication used in business to relate a product that comes from a certain country or location that has conferred on the product its unique quality or status. A GI often includes the location where the product is derived from, e.g. Tea from Darjeeling, Spirit from Tequila. Every one of these products reflects a certain quality or status that is attached to the place where it comes from.

A GI reassures customers that the good purchased is derived from a location, and has distinct attributes or qualities associated with the GI. It distinguishes the good that has been granted the GI from other goods that do not enjoy such a label.

If you successfully register the GI in Singapore, it will be safeguarded in that GI labels cannot be ascribed or attached to goods that do not come from the same location indicated by the GI. This would be the case even where purchasers would not be so deceived as to the where the product is actually comes from.

If you secure the GI’s registration, it will be safeguarded for 10 years from the date of registration, which is renewable when it lapses every decade.

DISCLAIMER
As mentioned, the information above is not intended to be legal advice, but is meant to give you some understanding of Intellectual Property generally. Hence, you should not see the information contained here as a comprehensive guide. Trident Law Corporation excludes liability for loss suffered by any person resulting in any way from the use of, or reliance on, this information.

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