This country-specific Q&A provides an overview to intellectual property law in Singapore.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist in this jurisdiction to protect?
(a) Inventions (e.g. patents, supplementary protection certificates, rights in confidential information and/or know-how);
Patents, trade secrets (rights in confidential information and/or know-how), copyright, registered design rights
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
Trade marks, cause of action in passing off, collective marks (association marks), certification marks, geographical indications
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in confidential information and/or know-how).
Copyright, registered design rights, layout-designs (topographies) of integrated circuits, plant varieties, trade secrets (rights in confidential information and/or know-how).
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Copyright – Copyright subsisting in a literary, dramatic or musical work, or in artistic work other than a photograph shall continue to subsist until the expiration of 70 years after the expiration of the calendar year in which the work is first published or performed in public, or if not published/performed in public, 70 years after the expiration of the calendar year in which the author of the work died.
For sound recordings and cinematograph film, 70 years after the expiration of the calendar year in which the recording/film was first published; and for a published edition of a work or works, 25 years after the expiration of the calendar year in which the edition was first published.
Copyright subsisting in a television broadcast, sound broadcast or in a cable programme will continue to subsist until the expiration of 50 years after the expiration of the calendar year in which the broadcast was made/the cable programme is first included in the cable programme service.
Registered designs – A maximum of 15 calendar years from the date of filing, subject to the payment of renewal fees every five years. No possible extension of rights, unless the design in question was registered under the UK Registered designs Act before 13 November 2000, and the registration had not expired or been cancelled as of 13 November 2000. In such situations, the total period of registration may not exceed 25 years from the date of its registration under the UK Registered designs Act.
Layout-designs (topographies) of integrated circuits – A layout-design ceases to be a protected layout-design if it is first commercially exploited within five calendar years after the calendar year in which it was created, at the end of the tenth calendar year after the calendar year in which it was first commercially exploited; and for all other cases at the end of the period of 15 calendar years after the calendar year in which it was created.
Patents – A maximum of 20 calendar years from the date of filing, subject to the payment of annual renewal fees starting from the end of the fourth year.
Plant varieties – A maximum of 25 calendar years from the date of the grant of protection, provided that an annual fee of a prescribed amount and any relevant information required by the Registrar are furnished within the prescribed period.
Trade marks – Indefinite registration period, subject to the payment of renewal fees every 10 calendar years.
Geographical indications/trade secrets/know-how – N.A.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
Copyright – Generally, the person who created the work (i.e. the author) owns the copyright in the work. However, there are exceptions to this general rule. Some exceptions are:
Employment: If the work is created by an employee pursuant to the terms of his employment, the employer owns the copyright in the work.
Special situation for newspaper/magazine/periodical employees: Where an employee of a newspaper, magazine or periodical creates a literary, dramatic or artistic work pursuant to the terms of his employment and for the purpose of publication in a newspaper, magazine or periodical, the proprietor of the newspaper, magazine or periodical owns the copyright in respect of publication in or reproduction for the purpose of publication in any newspaper, magazine or periodical. The employee owns the remaining rights that make up the copyright bundle of exclusive rights.
Commissioning: If a portrait/photograph/engraving is commissioned by another party, the commissioner owns the copyright in the work. If the portrait/photograph/engraving is required for a particular purpose, this purpose must be communicated to the commissioned party. While the commissioner is the copyright owner, the commissioned party has the right to stop others from doing any act comprised in the copyright, unless such act is done for the particular purpose for which the portrait/photograph/engraving is created.
For other types of commissioned works: Ownership belongs to the commissioned party, unless the commissioner and commissioned party otherwise agree.
Registered designs – The designer of the design. If the rights are created in the course of employment or under a commission, then the employer or commissioning party will own the rights in question.
Geographical indications – N.A.
Layout-designs (topographies) of integrated circuits – Where the layout-design is not created in pursuance of a commission or in the course of employment, the creator of a layout-design is the owner. Where the layout-design is created in pursuance of a commission, the person who commissioned the layout-design is the owner. Where the layout-design is not created in pursuance of a commission but is created by an employee in the course of his employment, the employer is the owner.
Patents – The inventor(s). However, if the rights are created in the course of employment (i.e. normal duties of the employee or specifically assigned to him or has a special obligation to further employer's interests), the employer would be the owner of the invention. Where an invention is created in pursuance of a commission without more, the owner of the invention would be the inventor rather than the commissioning party.
Plant varieties – The breeder of the plant variety. Where the plant variety was bred, or discovered and developed, by the employee, the employer would be the breeder and thus owner. If instead pursuant to a commission without more, the breeder would be the person who bred the plant variety rather than the commissioning party.
Trade marks – The authorised user of the mark in relation to the particular goods or services, or the party that has the bona fide intention to use the mark in relation to the particular goods or services, in the course of trade.
Trade secrets/know-how – The creator of the rights in question. The employer and commissioning party would have no automatic ownership over the rights.
Which of the intellectual property rights described in questions 1-3 are registered?
Patents, trade marks, registered designs, and plant varieties.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Registered designs – The legal owner of the rights in the design can file the application with the Registry. If formalities requirements for the application are met, the design should be simultaneously published in the Journal and registered in due course.
Patents – The legal owner of the rights in the invention can file the application. If formalities requirements are met, there will be substantive examination of the application once this has been requested for by the applicant after the publication of the application. Grant of the patent will take place in due course once all requirements have been met.
Plant varieties – The breeder of the plant variety can file the application. If the requirements for the application have been met, the application will be published in the Journal and will be registered in due course unless there are any objections raised by third parties.
Trade marks – The bona fide user or legal owner of the mark can file the application. If formalities requirements of the application are met, substantive examination of the application will take place. Once the application has been approved for registration, it will be published in the Journal and will be registered in due course unless there are any objections raised by third parties.
How long does the registration procedure usually take?
Generally, the registration procedure of plant varieties and trade marks take between six months to a year. The registration procedure of designs can take between four to six months, while the registration procedure of patents can take between two to four years.
Do third parties have the right to take part in or comment on the registration process?
Third parties do not have the right to take part in or comment on the registration process of designs and patents. Third parties can take part in or comment on the registration process of plant varieties and trade marks.
What (if any) steps can the applicant take if registration is refused?
The applicant may file an appeal to the relevant forum as legislated under the relevant statutes.
What are the current application and renewal fees for each of these intellectual property rights?
Registered designs – S$250 for the application fee, and between S$220 and S$550 for the renewal fees.
Patents – S$160 for the request for Grant of Patent, and between S$140 and S$1,200 for the renewal fees.
Plant varieties – S$1,600 for the application fee, and S$100 for the annual renewal fees.
Trade marks – S$341 per class for the application fee, and S$380 per class for the renewal fees.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
If renewal fees are not paid, the registration of a design, plant variety, or trade mark will expire. As for patents, which last for a term of 20 years, the registration will lapse if renewal fees are not paid when required.
Save for plant varieties, the registration can potentially be renewed if late renewal fees are paid within the stipulated time frame.
What are the requirements to assign ownership of each of the intellectual property rights described in questions 1-3?
Save for geographical indications which cannot be assigned, a validly signed assignment agreement in writing is required to assign ownership of each of the intellectual property rights described above.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Generally, the legal owner of the intellectual property rights in question will have the right to licence them to a third party. In this regard, the licence must be in writing, and must be signed by or on behalf of the grantor. Otherwise, the licence is not effective. Every person shall be deemed to have notice of a licence if the prescribed particulars of the grant of the licence are entered in the relevant register of patents, trade marks, registered designs, and plant varieties.
Registered designs/patents/trade marks – Until an application has been made for registration of the assignment, the assignment is ineffective as against a person acquiring a conflicting interest in the rights in ignorance of it.
Plant varieties – No requirement.
What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3?
Generally, the legal owner of the intellectual property rights in question will have the right to licence them to a third party. In this regard, the licence must be in writing, and must be signed by or on behalf of the grantor. Otherwise, the licence is not effective. Every person shall be deemed to have notice of a licence if the prescribed particulars of the grant of the licence are entered in the relevant register of patents, trade marks, registered designs and plant varieties.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Copyright/layout-designs (topographies) of integrated circuits – No requirement.
Registered designs/patents/plant varieties/trade marks – Until an application has been made for registration of the licence, the licence is ineffective as against a person acquiring a conflicting interest in the rights in ignorance of it.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Registered designs/patents – The holder of an exclusive licence under a registered design/patent shall have the same right as the registered owner to bring proceedings for an infringement of the right committed after the date of the grant of the licence. Non-exclusive licensees do not have this right.
Plant varieties/trade marks – Exclusive and non-exclusive licensees are not given different rights.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Copyright – Section 136 of the Copyright Act covers criminal offences, including the sale, hire, importation, distribution, or possession of infringing copies of infringing works. Offenders can be liable for a fine up to S$100,000 and/or imprisonment for a term not exceeding 5 years upon conviction.
Trade marks – Part VI of the Trade Marks Act covers criminal offences, including the counterfeiting of a trade mark, false application of a registered trade mark to goods or services, the making or possessing of article for committing offence, and the importing or selling of goods with falsely applied trade mark. Offenders can be liable for a fine up to S$100,000 and/or imprisonment for a term not exceeding 5 years upon conviction.
What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
For all of the intellectual property rights described above, civil court proceedings, intellectual property office proceedings, and alternative dispute resolution are available.
In addition, for copyright, geographical indications and trade marks, administrative proceedings are also available.
What is the length and cost of such procedures?
Costs will vary and will depend on the evidence and complexity of the case and the nature of the proceedings involved.
For civil court proceedings, intellectual property office proceedings, and arbitration proceedings, a successful party may recover its costs from the losing party, although the quantum of the costs recovered is at the discretion of the court/office/tribunal and often does not cover all the legal costs and disbursements incurred.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
Proceedings in which a claim is made in respect of the infringement of a copyright or for breach of confidence may be begun in the State Court or High Court by writ, choice of forum depends on the quantum of damages/account of profits sought. Proceedings in which a claim is made in respect of the infringement of a patent or trade mark shall be begun in the High Court by writ.
Proceedings will involve the filing of pleadings, discovery, the exchange of evidence through affidavits and trial in open court with cross-examination of witnesses and the filing of submissions
Generally, court proceedings can last between 12 – 18 months depending on the complexity of the matter and the number of interlocutory applications taken out. Appeals for infringement proceedings are to the Court of Appeal and it can take a few months to a year for appeals to be heard.
The relief available for the infringement of a patent or trade mark include an injunction, an order for the defendant to deliver up or destroy any infringing products or goods, damages, an account of profits, and a declaration that the patent or mark is valid and has been infringed by the defendant.
In addition, for copyright and trade marks, the plaintiff can also obtain orders to erase, remove, or obliterate the infringing works/articles, and in certain cases, may be awarded statutory damages.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?
Factual evidence is given through affidavit and examination of witnesses on the stand.
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
The High Court has identified judges who are able to bring their considerable experience and expertise in specialist areas of law to bear on complex cases, and there is an identified list of judges for intellectual property cases.
The court may, on its own motion or on the application of any party, appoint an expert. The court appointed expert will then produce a report, and any party may apply to the court for leave to cross-examine the expert on his report.
Parties may also appoint expert witnesses, and the expert must produce a written report signed by the expert and exhibited in an affidavit affirmed by the expert. The expert will be subject to cross-examination.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Litigants can take out applications for specific discovery, discovery against a non-party (Norwich Pharmacal orders), or search orders (Anton Piller Orders).
Generally, evidence disclosed in the course of proceedings is also protected by the common law Riddick principle. Alternatively, the court can order the establishment of a confidentiality club. In patent proceedings, where the allegedly infringing process is a trade secret, a defendant can claim limited discovery.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Evidence at trial is provided via affidavits of evidence in chief, on which the deponents are cross-examined. Evidence during interlocutory proceedings is tendered by way of affidavit.
Cross-examination is a given at any trial.
For expert witnesses, the court has the discretion to order a hot-tubbing for experts instead of cross-examination.
What customs procedures are available to stop the import and/or export of infringing goods?
Under the Copyright Act, Geographical Indications Act 2014, and Trade marks Act, the Singapore Customs has powers to search and detain infringing goods. The Singapore Customs may take ex-officio action to detain goods which are (1) imported into or which are to be exported from Singapore, or (2) in transit and these goods are consigned to any person with a commercial or physical presence in Singapore. Where goods are in transit and are not consigned to a local party, the Singapore Customs may examine the goods but has no power to detain these goods even when the customs' examination reveals that they are indeed infringing goods.
The right owners or their licensees (the "objector") may also activate the procedure by giving written notification to the customs authority, providing sufficient information which identifies the infringing goods expected to be imported, time and place of expected importation, etc.
The customs authority may refuse to seize goods unless the objector has deposited with the Director-General a sum of money, or has given security, that is sufficient to reimburse the Government for any liability or expense it is likely to incur as a result of the seizure.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
There are no mandatory options or mechanisms.
What options are available to settle intellectual property disputes in your jurisdiction?
Arbitration and mediation are available subject to parties' consent or an agreement to submit their dispute to such procedures. Mediation is available at the World Intellectual Property Organization Arbitration and Mediation Centre ("WIPO Centre"), Singapore Mediation Centre, and Singapore International Mediation Centre. Both the WIPO Centre and the SMC have specialist IP panels of mediators.
For patent disputes, the WIPO Centre also offers expert determination, which is subject to parties' consent.
What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?
Copyright – When a person, without the license of the owner of the copyright, does or authorises in Singapore any act comprised in the copyright; or when a person who trades in an article in Singapore, knowing that it is an infringing article.
Registered designs – When a person makes for sale an article which is substantially similar with the registered design.
Geographical indications – Where the goods, or the packing of which, bear a term identical with a registered geographical indication, but which do not originate from the place indicated by that registered geographical indication.
Layout-designs (topographies) of integrated circuits – Proof of a 'causal connection' (i.e. that the alleged infringing chip was copied from the plaintiff's layout-design).
Patents – When a person makes, disposes of, offers to dispose of, uses, imports, or keeps the product without the consent of the patent proprietor; when a person uses, or offers for use, in Singapore, when he knows that its use without the consent of the patent proprietor it would be an infringement of the patent; or when a person disposes of, offers to dispose of, uses, imports, or keeps any product obtained directly by means of the patented process.
Plant varieties – When a person, who is not entitled to do so, does or authorises the doing in Singapore of the production or reproduction; conditioning for the purpose of propagation; offers for sale; sells or markets; exports; imports; or stocks for any of the aforementioned purposes a registered plant variety.
Trade marks – Where there is identity between marks and between goods/services; confusion caused by similarity between marks and between goods/ services. As for the common law action of passing off, goodwill, misrepresentation, and damage is required.
Trade secrets/know-how – Necessary quality of confidence; obligation of confidence; unauthorised use of information.
What defences to infringement are available?
Copyright – Where the act is fair dealing in relation to works, for the purpose of criticism or review, and for the purpose of reporting current events; reproduction for purposes of judicial proceedings or professional advice from an advocate or solicitor; temporary reproduction made in the course of communication; inclusion of works in collections for use by educational institutions; or accessories to imported articles.
There are also specific provisions for artistic works and buildings. Network service providers are also covered by safe harbour provisions.
Registered designs – Where the act is done for a private, non-commercial purpose, or for evaluation, analysis, research, or teaching. Also, where a person who, before the date of registration of a design, does in good faith in Singapore an act which would be an infringement of the design if registration had been in force at that time, or makes in good faith effective and serious preparations to do such an act in Singapore, has the right to continue to do the act or, as the case may be, do the act.
Geographical indications – Where it is the use of a personal name; where no action had been taken against the person after 5 years; or where a qualified person has continuously used in Singapore that geographical indication in relation to those goods or services for at least 10 years preceding 15 April 1994, or in good faith preceding that date.
Layout-designs (topographies) of integrated circuits – Where copying is part of a protected layout-design that does not comply with the requirement of originality; done for a private purpose and not the purpose of commercial exploitation; done for the sole purpose of evaluation, analysis, research, or teaching, and to use the results of such evaluation, analysis, or research to create a different layout-design that complies with the requirement of originality; or done at the time when the person did not know, and could not reasonably be expected to have known, that the copy was unauthorised.
It is also not an infringement of a qualified owner's protected layout-design for a qualified owner of another independently created and protected layout-design that is identical to the first mentioned layout-design to commercially exploit its independently created and protected layout-design.
Patents – Where the act is done privately and for non-commercial purposes, for experimental purposes, or as extemporaneous preparation of a medicine for an individual; where the use of the invention begun before the priority date; the 'Bolar' defence; or exhaustion of rights in the patented invention.
The use of a patented invention in a relevant aircraft, hovercraft, or vehicle or ship temporarily in territory of Singapore and the use of an exempted aircraft lawfully in Singapore would also not constitute an infringement.
Plant varieties – Where the act is done privately and for non-commercial purposes; for experimental or research purpose; or for the purposes of breeding any other plant variety.
Trade marks – 'Own name' defence; 'descriptive use' defence; 'prior user' defence; use for non-commercial purpose; or news reporting or commentary.
Trade secrets/know-how – Where the information (previously trade secret or confidential information) is already in the public domain or there is a public interest in such disclosure.
Who can challenge each of the intellectual property rights described in questions 1-3?
Any person may challenge the intellectual property rights described above.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
For trade mark and plant varieties, opposition proceedings can be brought during the registration process.
Trade marks, registered designs, and patents can be challenged at any time during the subsistence of the right.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
Registered designs – Any interested person may apply to the registrar of designs or to the High Court for the revocation of a registered design.
For the registration of a design to be revoked, it must be shown that the design, at the time it was registered, was not new or was not registrable; or was a corresponding design in relation to an artistic work in which copyright subsisted, and the right in the registered design has expired.
Patents – The validity of a patent may be put in issue by way of defence, in proceedings for infringement of the patent, or in proceedings that are specifically listed under section 82 of the Patents Act.
For a patent to be found invalid, it must be shown that there is a lack of novelty, an inventive step, or industrial application. A patent may also be invalidated on the ground of insufficiency.
Any person may apply to the registrar of patents to revoke a patent on the grounds that the invention was not a patentable invention; that the patent was granted to a person who was not entitled to be granted that patent; that the specification of the patent does not disclose the invention clearly and completely for it to be performed by a person skilled in the art; that the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent; that an amendment or correction has been made to the patent or the application of the patent that should not have been allowed; that the patent was obtained fraudulently, on misrepresentation, or on any non-disclosure or inaccurate disclosure of any prescribed material information; or that the patent is one of 2 or more patents for the same invention having the same priority date and filed by the same party or his successor in title.
Plant varieties – Any person may apply to the registrar of plant varieties or to the High Court to challenge the validity of the grant of plant varieties protection on the grounds that the plant was not novel and distinct at the time of the grant; was not uniform or stable at the time of the grant; or the protection has been granted to a party who is not entitled to the grant.
Any person may also apply to the High Court to challenge the validity of a registered denomination on the ground that it did not meet the required registration criteria.
Trade marks – Any person may apply to the registrar of trade marks or to the High Court for a declaration of invalidity of the registration of a trade mark.
For a trade mark to be found invalid, it must be shown that its registration was obtained through fraud or misrepresentation, or that it conflicts with earlier rights. A trade mark may also be revoked for non-use.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licences of right?
Save for plant varieties and trade secrets/know-how, declaratory relief can be obtained.
For registered designs and patents, a person can also apply to the High Court for a compulsory licence to remedy an anti-competitive practice.
Specific to patents, a patent proprietor can apply to the registrar of patents for an entry to be made in the register to the effect that licenses under the patent are to be available as of right.
Specific to plant varieties, a person can also apply to the High Court for the grant of a compulsory license to exploit a protected variety in Singapore.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?
Injunction, damages, an account of profits, order for delivery up or destruction of infringing goods
For copyright and trade marks, statutory damages in lieu of damages or an account of profits may also be awarded. Specific only to trade marks, an order may also be made to erase the offending mark.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
The cost of enforcement proceedings will vary, depending on the nature and complexity of the case.
For civil court and arbitration proceedings, a successful party may recover its costs from the losing party, although the quantum of the costs recovered is at the discretion of the court/tribunal and often does not cover all the legal costs and disbursements incurred.
A defendant can invoke the court's jurisdiction under Order 23 of the Rules of Court for security of costs to be ordered, if the court finds it just to do so.