Você está na página 1de 16

Patents

- Monopoly right over invention (product or process)


- Registration requires:
o File application at IPOS (s 25) or under PCT (Singapore can s 85)
- Patentability (s 13):
o Must be a product or process (see TRIPS 27)
Now repealed, previously there were clear exceptions under s 13(2):
- a discovery, scientific theory or mathematical method;
- a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever (cf. protection under
the law of copyright);
- a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a
computer;
- the presentation of information (cf. protection under the law of copyright or the law of confidence)
They may be guidance as to whether it can qualify as product/process, but is no longer a clear
bar.
OncoMouse allowed patenting of mouse with increased susceptibility to cancer.
27(3)(b) of TRIPS: Members must allow patenting of microorganisms, and plant varieties.
They may choose to exclude plants/animals, and essentially biological processes to make
plants/animals.
First Currency
1

o Novelty (s 14)
Must not be part of state of the art/public
Publicness of info before priority date (date of filing, s 17(1)). Unless that info was filed as
application in paris convention/wto country within 12 mths
Prior art all matter made available to public whether written/oral (s14(2))
Anywhere in the world
S(2)(1) published if it can be inspected as of right anywhere in Singapore by public,
whether on payment of a fee or not.
Also includes prior patent applications, even if the contents not yet published. S 14(3)
Exceptions to prior art (s 14(4) ) (that occur within 12 mths before filing)
information disclosed obtained unlawfully/in breach of confidence
disclosure made in consequence of international exhibition
disclosure made reading a paper before a learned society (object of which is
science/learning etc. s 14(5))
Question is whether the prior art anticipated the invention
must contain clear and unmistakable directions to do what the patentee claims to have
invented
2

Anticipation by disclosure
3
- 2 step Synthon test
o 1) The invention must be disclosed
o 2) The information disclosed must be sufficient to enable a person skilled in the
art to make the invention
4


1
First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd (SG): Bank currency system patent was allowed Basically
looked at a table of banks/currencies and matched them to the card numbers (first 3 digits)
2
A signpost, however clear, upon the road to the patentees invention will not suffice. The prior inventor must be clearly
shown to have planted his flag at the precise destination before the patentee. General Tire v Firestone Tyre (UK CA)
3
Synthon BV v Smithkline Beecham plc
4
Merck v Pharmaforte: Product was a chemical with certain degree of purity. Failed to show that prior art would allow the
production of that chemical with that degree of purity, so argument on novelty failed. (but otherwise it failed on inventiveness
because standard procedures would purify it so)
Anticipation by prior use
o Prior use of product anticipates invention only if such prior use makes available the
necessary information that enables the skilled person to work the invention
o Windsurfing International Inc v Tabur Marine (GB)
5

o Merrell Dow v Norton
6

Self-anticipation inventor anticipate himself
o Fomento v Mentmore: Inventor of ballpoint pens gave them out to random people,
and this was enough to destroy novelty
Genelabs Diagnostics v Institut Pasteur (SG)
7

Cannot mosaic/combining prior art to claim it already existed under novelty: FE Global
Electronics Pte Ltd v Trek Technology (Singapore)
8

Reverse infringement test
If doing what the prior art told you to do would have infringed the patent claim, then the
patent is anticipated.
9

Have to compare the prior art and claim at the same level of abstraction, disregard what
the actual product was (so the inventor should not claim more than what hes actually
making). Focus is on the level of abstraction of the claim: Dien Ghin Electronic
o Inventive step (s 15)
Invention must not appear to be obvious to a person skilled in the art
4 step Windsurfing test (cited in First Currency Choice):
(1) identify inventive concept, (2) assume you are normally skilled in the art but
unimaginative, with common general knowledge in the art [or at least a diligent
searcher
10
] (3) identify what is known/used already vs the invention (4) decide whether
the differences is an inventive step or just obvious
Disregard unpublished patent prior art (s 14(3)) type
Note that individual patent specifications, while they are public knowledge, they are unlikely to
be common general knowledge of the person skilled in the art (unless the knowledge is
widespread)
11

Can mosaic/combine information for obviousness
The hypothetical skilled addressee refers to an averagely-skilled person (workman/technician)
who is generally well acquainted (i.e. competent) with his field (depending on the type of
science or industry) and who possesses common general knowledge (i.e. all information that is
generally known and accepted in the field), but who does not have inventive capacity (i.e.
unimaginative): First Currency Choice (CA)
Will be decided by mainly expert evidence who will give their opinion as to whether or not the
step is obvious
12


5
A surfboard +sail thing was patented, a licensee later found an early newspaper article depicting a young boy with a primitive
floating board+sail. Held that this was prior art and that the conversion to the modern design was obvious to anyone skilled in
the field, so patent invalid.
6
Patent over 1) a anti-histamine drug, and 2) a later patent over the acid metabolite produced by (1). Different time periods, so
question was whether (2) was valid and would prevent the sale of (1) copies because they would inevitably produce (2). Held:
that (2) was part of prior art in (1), even though the exact chemical compound/metabolite was not known and needed research
the disclosure of information about making (1), was sufficient to make (2) state of the art
7
Genelabs Diagnostics v Institut Pasteur: Patented SIV (HIV relative) and antigens that would allow detection of it for purposes
of diagnosing AIDS. There was prior art about SIVs existence, but it did not talk about SIV being capable of causing AIDS. Was
considered a novel patent
8
Patent of thumbdrive there was existing cable-connected storage, and integrated usb devices (nothing to do with storage).
However no one had created a integrated usb storage device before. This was new.
9
The General Tire & Rubber Company v The Firestone Tyre & Rubber Company Ltd: per Sachs LJ
10
Seemed to be generally liked concept in First Currency, citing Technograph Printed Circuits Limited v Mills & Rockley
(Electronics) Limited
11
General Tire v Firestone Tire
commercial success of the invention in issue and whether or not the invention satisfies a long-
felt want/need of the public/consumers may suggest non-obviousness
Trek: Non-obvious if no one had ever taken the step before but weird
o Capable of industrial application (s 16)
Can be used in any time of industry, including agriculture
Method of treatment of human/animal body is excluded (s 16(2))
Product that can be used to treat will not be excluded just because it is used in such a
process (s 16(3))
Human Genome Sciences Inc v Eli Lilly and Company (UK SC)
Allowed patent of a nucleotide sequence of the gene which encodes for a novel protein.
Question was whether it was shown to have industrial application (it was part of a family
of proteins that were known to have certain properties, but this was not shown through
actual tests yet).
Policy reasons dont want to set the bar too high, to promote biotech industry
- Sufficiency of disclosure (s 25(4), 80(1)(c))
o patent specification must disclose the invention in a manner which is clear and complete for the
invention to be performed by a person skilled in the art
- Positive grant system: applicant must receive notice of eligibility (s 29A) after search and examination
report, moved away from self-assessment system
- Duration 20 years (s36)
o Can be extended if there was delay s 36A
- Singaporeans must file in Singapore first (or seek approval) or face criminal sanctions s 34
- International protection:
o Paris Convention for the Protection of Industrial Property 1883 File in one country is treated as
having filed in another
o Patent Co-operation Treaty 1977 File with the Receiving Office in a country = application in all the
desired ones. (Individual patents, so can reject individually)
- Infringement
o Depends on the patent claim, as interpreted by the description and any drawings s113
The drawing/specifications depict what is the invention, the patent claim is what the scope of
the monopoly entails.
13

o There is textual infringement if df duplicates every feature of the claimed invention
o Otherwise, if there is some variance, adopt the purposive (or pith and marrow) approach; whether
each essential integer/elements/functions was duplicated
Catnic Components Ltd v Hill & Smith:
14
Patent over steel lintel (something to carry weight).
Claim referred to a steel bar extending vertical, but df made a bar that was 6 degrees off from
vertical. Court endorsed pith and marrow approach, and found there was nevertheless
infringement. Question was whether a person skilled in the art would understand the vertical
claim to be so strictly construed that being slightly off would fall outside.
o 3 questions:
15

(1) Does variant have material effect upon way invention works?
If yes, the variant is outside the claim. If no
(2) Would variant have been obvious at date of publication to reader skilled in the art?
If no, the variant is outside the claim. If yes
(3) Would reader skilled in the art nevertheless understand from language of claim that
patentee intended strict compliance as an essential requirement of the invention?

12
Mlnlycke AB v Procter & Gamble Limited, cited in Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting
13
First Currency citing Merck & Co Inc v Generics (UK)
14
Endorsed in First Currency
15
Improver Corp v Remington, endorsed in Genelabs Diagnostics Pte Ltd v Institut Pasteur
If yes, the variant is outside the claim.
If no, suggests that the patentee intended the phrase to have a figurative meaning,
denoting a class of things including the variant, the literal phrase being perhaps the most
striking example of the class.
- Infringing acts done in Singapore, [s66(1)]
o Viz product - make, dispose of (e.g. sell), offer to dispose of, use or import an infringing product, or to
keep it for disposal or otherwise [s66(1)(a)]
o Viz process use or offer for use the process, if obvious to a reasonable person that it would be an
infringement [s66(1)(b)]; sell etc. the product of the process [s 66(1)(c)]
- Contributory/indirect infringement?
o 60(2) UK Patents Act 1977 - infringement to supply a person with the means, relating to essential
element of invention, for putting invention into effect when obvious to reasonable person, those
means are suitable for putting the invention in effect in UK
o Section 60(3) UK Patents Act - if staple commercial product supplied, no liability unless supply/offer
made for purpose of inducing person supplied, to infringement
o Singapore no similar section, but cf s66(1)(b), to offer/use process that he knows would be
infringement
- Defences
o s66(2)(a) Private user defence infringing act is ok if done privately, non-commercially
o s66(2)(B) Experimental use infringing act ok for experimental purposes
Can extend to commercial purposes (Monsanto v Stauffer)
experimental purposes includes trials to discover something unknown, or to test an
hypothesis, or even in order to find out whether something which is known to work in specific
conditions ... will work in different conditions. (Monsanto v Stauffer)
Emphasis is on acts which generate new knowledge, eg clearing up uncertainties or bringing
out new discoveries about the invention.
16

making and experimenting merely for purposes of getting official approval would not fall within
exception. However, samples produced during course of genuine experiments ok
17
; cf 66(2)(h)
for pharmachem
o s66(2)(g): Parallel importation of genuine products
Does not extend to parallel import of pharmaceutical products 66(3)
Cf International exhaustion doctrine rights are limited to first sale
o S 71: Prior user defence
If before priority date person does in good faith acts which would be infringement, or prepares
to do so, they may continue to do so
Cannot license others to do the same, unless its a partner/successor in course of business
o S 82(1)(a): can challenge validity of patent in any infringement proceedings
- Remedies
o [s 67(1)] (a) injunction, (b) deliver up or destroy infringing stuff, (c) damages, (d) account of profits, (e)
declaration that patent is valid and has been infringed
[s67(2)] may not ask for damage + account of profits together
*s69(1)+ no damages/account against innocent infringer who didnt know
Objective test (Lancer Boss Ltd v Henley Forklift Co Ltd)
Whether they did the necessary investigation which a prudent man of business in
the same circumstances would have made
18


16
Klinische Versuche (Clinical Trials) II
17
Auchincloss v Agricultural & Veterinary Supplies
18
John Khalil Khawam and Company v K Chellaram & Sons (Nig)
[s69(2)] Unless patent number stated, just saying a product is patented on the product
does not make a person reasonably know it is. However it seems it would be very difficult
for such person to discharge the burden of proof that they did not know in such a case.
o Groundless threat of infringement s 77. Declaration threats unjustifiable, injunction against more
threats, and damages.
- Law of Confidence
- 3 elements (Coco v A N Clark (Engineering)): (1) Information of confidential nature; (2) Communicated in
circumstances importing obligation of confidence; (3) Unauthorized use of information
o Confidential nature
Should not be mere trivial tittle-tattle (mere trivia); the idea ought to be sufficiently
developed, so that it would be seen to be a concept which is capable of being realised as an
actuality.
19

Cannot be in the public domain already, publishing it in a patent application makes it public
domain: QB Net Co Ltd v Earnson Management
Information does not have to be marked confidential, question is whether the information
looks like it is property of the pf
20

Springboard doctrine - Terrapin Ltd v Builders Supply Co (Hayes): Portable toilets on the market,
df had gotten the confidential blueprints. While the toilets could be reverse engineered, df had
an unfair headstart in time saved, so should be injuncted for that time.
Chiarapurk Jack v Hwa Par Brothers International: Have to be specific in pleading what is the
confidential information, else df dunno what not to do
o Communicated in circumstances importing an (equitable) obligation of confidence
whether any reasonable man standing in the shoes of the recipient of the information would
have realised that upon reasonable grounds the information was being imparted to him in
confidence: Coco v Clark
No need to have a prior confidential relationship eg obviously confidential document that flies
out of window: AG v Guardian Newspapers Ltd
Malone v Metropolitan Police Commissioner: telephone tapping case - said that for police
phonetapping its ok if a) there was just cause to prevent/detect crime, b) no use of material
other than for those purposes and c) knowledge was limited to minimum number of people
needed.
Where there is a risk of an unknown overhearing, inherent in the way the information is
conveyed, then there will not be an obligation arising
This seems like a bad test, because there is almost always a risk
Francome v Mirror Group Newspapers: Newspaper illegaly got tapes of telephone conversations
it claimed implicated the plaintiff in a crime. Pf wanted to restrain publication pending
disciplinary charges. Held that it was a matter of balancing justice, and in this case the public
interest should be carefully separated from private interest publishing at large would only
benefit the newspaper vs giving the tapes to the police
X Pte Ltd v CDE: Info about sexual relations is confidential, and secretary snooping bosses
phone etc was sufficient to found the obligation
Vestwin Trading Pte Ltd v Obegi Melissa
Facts: Wanted to enforce a foreign judgment so needed to find out whether there are
assets to enforce. Went dumpster diving.
Putting documents in the rubbish does not count as abandonment
Doesnt matter information not directly communicated, as long as its through illegal
(dumped in private property trespass) means also have obligation of confidence

19
per Hirst J in Fraser v Thames Television Ltd
20
Vestwin Trading Pte Ltd v Obegi Melissa
Qn: Does what you use the information for matter? Compare stealing trade secrets to get
profits, vs trying to get information to enforce judgment etc.
o Unauthorised use/disclosure of information
- Public interest defence for breach of confidence
o When disclosure of information justified in the public interest
Distinguish between information public like to know vs have right to know
o Lion Laboratories Ltd v Evans: Pf manufactured devices that detected drink driving (used by police), dfs
were ex-technicians in the company that left the firm and gave information to newspapers concerning
possible inaccuracies with the devices. Held there was public interest in publishing the confidential
information (people were charged based on the devices readings, and they might be wrong)
o Francome v Mirror Group Newspapers ( see above)
- Remedies
o Injunction
o Damages or Account of profits
o order for delivery-up and destruction of articles made using confidential information.
- Employer-employee situations
o express term (confidentiality clause) in employment contract
o implied duty of fidelity (good faith)
o After contract of employment ends, employee only expected to keep confidential his employers trade
secrets and such other information which is of a sufficiently high degree of confidentiality as to amount
to a trade secret.
Consider (1) the nature of the employment, (2) the nature of the information itself, (3) whether
the employer had impressed upon the employee the confidentiality of the information, and (4)
whether the relevant information can be easily isolated from other information which the
employee is free to use or disclose: Faccenda Chicken Ltd v Fowler
o Where there is a contract of employment, obligations determined by the contract (Faccenda)
In absence of express terms, use implied terms
While in employment, there is implied obligation of goodfaith and fidelity (ambiguous, but
copying or memorizing customer lists while in employment for use after employment is breach)
Implied term governing conduct after employment ends is less onerous. Things like trade
secrets still cannot disclose, but more general stuff (that might have been a breach while
employment) will cease to be.
- Right to privacy? (UK)
o Douglas v Hello! Suggested such a right existed. Wainwright v Home Office rejected the existence of
such a tort of invasion of privacy. Campbell v MGN Limited Found there was infringement to a right to
privacy (publishing details about someones drug addiction treatment by going to selfhelp groups)
o Note that UK has the ECHR which has art 8: right to respect for private/family life. Sg no equivalent

Trademark
Indicators of trade origin; guarantee quality of goods/services; communication, investment and advertising/publicity
- [s 2(1)]: any sign capable of being represented graphically and which is capable of distinguishing goods or
services dealt with or provided in the course of trade by a person from goods or services so dealt with or
provided by any other person
o sign: any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape,
colour, aspect of packaging or any combination thereof
Sound/smell?
- Absolute grounds for refusal [s 7]:
o do not satisfy the definition of a trade mark in Section 2(1);
lower threshold of capable of distinguishing: mark must be not incapable of fulfilling this
distinguishing role: AD2000 Trade Mark
o trade marks which are devoid of any distinctive character;
P.R.E.P.A.R.E. Trade Mark: the string of letters P.R.E.P.A.R.E. not distinctive enough, tendency
of people to associate it as simply a dictionary word
FROOT LOOPS Trade Mark: Froot loops is like fruit loops and therefore a loop made of fruits and
is not distinctive enough
Love & Co Pte Ltd v The Carat Club: word LOVE in jewelry lacks distinctive character used by
many ppl in the jewelry trade, its related to the purpose of jewelry (to indicate expression of
love), was not used much in the registered form and would not allow consumers to recognize it
to be from a particular seller.
s 7(2) - De facto distinctiveness, sign not inherently distinctive becomes so through use
o trade marks which consist exclusively of signs or indications which may serve, in trade, to designate
the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of
goods or of rendering of services, or other characteristics of goods or services;
o trade marks which consist exclusively of signs or indications which have become customary in the
current language or in the bona fide and established practices of the trade
o [7(3)]: limitation on shape mark functionality
Philips Electronics NV v Remington Consumer Products: 3headed rotary shaver, mark was
triangle with rounded corners rejected because 3 headed shaver logically made in a triangle
o [s7(4)]: Contrary to public morality or to deceive the public
o [7(5)]: Its use is Illegal
o [7(6)]: Made in bad faith
Mall Limited v Maycolson International Ltd: person attempting to register trademark had no
place of business/was not retailing products seemed like a shell company
Nautical Concept Pte Ltd v Jeffery Mark Richard: Existing trademark of Jeffrey West, and
applicant wanted JWest. Applicant had past history of trying to use Jeffrey-west etc. Held
JWest different enough to not fool average Singaporean, but disallowed on bad faith alone.
Combined test for bad faith subjective knowledge of facts + objectively whether a person
with proper standards would think its bad faith
21

- Relative grounds for refusal [s 8] conflicts with earlier marks
o Earlier trade mark either earlier registered in SG, or well known s 2(1)
o [8(1)]: Identical mark on identical goods element of confusion is presumed
o [8(2)]: Identical/similar mark on identical/similar goods prove likelihood of confusion by public
o [8(3)]: Legacy well known trade marks for applications before July 2004
8(3)(ii) connection is not the same as confusion, as confusion is (iii). Connection implies some
sort of connection as to trade origin, quality or as to business. A business connection suggested

21
Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd
some business relationship between the owner of the earlier trade mark and the goods or
services covered by the opposed trade mark. Mobil Petroleum Company Inc v Hyundai Mobis
Excludes dmgs for dilution
o [8(4)]: Well known marks
If well known in SG, indicates connection + damage OR
Show (1) Well known; (2) Confusing connection, and (3) damage to interests of proprietor
Well-known see s2(7) (9)
Must show likelihood of confusion (Novelty Pte Ltd v Amanresorts Ltd)
22

Damage - Staywell Hospitality: consider proprietors ability to expand into related market
Well known to public at large, and cause dilution or takes unfair advantage
Rare and exclusive class, entitled to protection from use on dissimilar goods or services
even in absence of a likelihood of confusion
Recognised by most sectors of the public but not all sectors of public
23

Dilution (s2(1) useless defn): (Novelty Pte Ltd v Amanresorts)
o dilution by blurring slowly erode the distinctiveness of the mark (if it is used
everywhere then it no longer gets associated with the original good)
o dilution by tarnishment damage the reputation of the thing (eg by using it on
inferior goods)
o dilution in an unfair manner ride on their success/reputation
Focus on unfair advantage gained, no detriment to proprietor needs to be
shown: LOreal SA v Bellure NV
Ferrero SPA v Sarika Connoisseur Caf 5 factors to consider: (1) strength of
the marks reputation and the degree of distinctive character of the mark;
(2) degree of similarity between the marks at issue, (3) nature and degree
of proximity of the goods or services concerned, (4) immediacy and
strength with which the mark is brought to mind by the sign, but most
importantly (5) that there was an unfair advantage
o Nevertheless earlier user can consent to registration: [8(9)]. Can also raise honest concurrent use [s 9]
(this is if Registrar wants to block registration the prior user can still defeat honest concurrent use)
factors include the extent and honesty of the concurrent use, the degree of confusion, relative
inconvenience to public if both marks are registered etc., per Re Club Europe Trade Mark
- Similarity in marks
o British Sugar 3 step approach: (1) Similarity of mark, (2) similarity of goods/services, and (3) whether
(1) and (2) will give rise to likelihood of confusion
o Visual similarity; Aural similarity; Conceptual similarity; Distinctiveness of the registered trade mark
the more distinctive the earlier the mark, the greater the degree of protection
o Factors to consider (Staywell)
24

(1) Those intrinsic to the nature of the goods (2) those that affect the impact that the similarity
has on the consumers
Differentiating factors created by the trader are not to be included eg pricing differentials,
packaging and other superficial marketing choices which could possibly be made by trader.
However can consider purchasing practices and degree of care by consumer (ie super expensive
stuff will take a long time for consumer to consider vs cheapo shirts; also nature of consumers
likely to buy the goods)

22
This case related to s 55(3)(a), but the wording is the same so probably can apply the same rationale. Cf though that granting a
trademark allows someone to use it freely, vs an anti-infringement claim which may have a lower threshold?
23
City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier
24
Cf Polo/Lauren Co where the court considered extraneous factors such as cheapness of goods and being sold in cheap
location this is probably bad law after Staywell
o Confusion is different between application and infringement proceedings. In application you must
consider the notional fair use of the mark, in infringement look at how the mark was actually used.
- Duration 10 years, and renewed for 10 year periods forever
- Application Apply in SG, get 6mths to make a priority claim in Paris convention countries. Must declare
intention to use the mark/actually use, and it must be in relation to specific class of goods
- Revocation
o If within 5 yrs no genuine usage + no excuse, may revoke. [22(1)(a)]
1 use can suffice, but would require overwhelming proof that it did occur Nike v Campomar
Must be used in the trade mark sense to denote trade origin, but its effectiveness is
irrelevant
Token use to just preserve the mark would not be genuine Wing Joo Loong Ginseng Hong
o It has become a common name in the trade for the product or service [s 22(1)(c)]
o Obtained via fraud/misrep [s 23(4)]
o In breach of s 7 [s23(1)]; s 8 [s 23(3)]
o There is no residual discretion for Registrar not to revoke if the grounds made out: Wing Joo Loong
- Exclusive right of proprietor to use the trade mark, or to authorise its use: 26(1) use defined in :S27(4).
Infringement [s 27]
- 27(1): Identical mark + Identical goods, confusion presumed
- 27(2): Identical/similar mark + Identical/similar goods, + proof of likelihood of confusion
- 27(3): Identical/similar to well known mark + dissimilar goods+connection+likelihood of confusion + damage
- s 55(3)(b): Well known mark dilution/unfair advantage
- 27(4): Contributory/secondary infringement.
o Cf 27(5): If he doesnt know its not usage
- To determine similarity, similar to opposition proceedings above. British sugar applies
o Whether goods are similar, consider:
(a) the respective uses of the respective goods/services;
(b) the respective users of the respective goods/services;
(c) the physical nature of the goods or acts of service;
(d) the respective trade channels through which the goods/services reach the market;
(e) in the case of self-serve consumer items, whether in practice they are respectively found or
likely to be found in supermarkets and in particular whether they are, or are likely to be, found
on the same or different shelves;
(f) the extent to which the respective goods/services are competitive.
Matter of perception/feeling rather than science: The Polo/Lauren Co
- Use of trade mark need not be in trade mark sense: Arsenal Football Club
25
. As long as the use affects
essential functions of a trade mark.
o Laddie J Arsenal used as badge of allegiance; ECJ subsequent sales cant have the disclaimer as
well as other people who see the goods; CA overruled Laddie J and said that the use affected the
ability to guarantee trade origin; cos knockoff Arsenal stuff in circulation/market, so this affects the
ability of the term Arsenal to guarantee it came from them.
o Cf defence of descriptive use: British Sugar treat used as descriptive word infringe but defence
Arsenal Football overrules this point descriptive use is not an infringement at all
o LOreal SA v Bellure NV: Other functions: guarantee quality, communication, investment or advertising
o Nation Fittings (SG HC): Preferred Laddie J approach, that use must be in a trade mark sense

25
Arsenal logo used, made it clear they were knockoffs. Nevertheless there was infringement
o City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier (SG CA): Flower trade mark used in decorative
manner, did not infringe. Also stated that it preferred the approach that use must be in a trade mark
sense, but that the outcome would be the same
Defences
- 28(4): Fair use in comparative commercial advertising or promotion, for a non-commercial purpose, or for
news reporting/commentary
o O2 Holdings Ltd v Hutchinson 3G UK: Use of rival mark to compare vs self, it was clear it was a
competitive thing, and not connected. Defence successful.
o LOreal SA v Bellure NV: Perfume smell-alike products, although clearly distinguished and no
confusion, is infringement via free-riding fame
(ECJ binding decision) criticized by the court of appeal for creating a pointless monopoly,
muzzling honest/truthful statements about lawful products, preventing consumer choice and
restricting competition. Suggested drawing a line btw permissible/impermissible free-riding.
- 28(1): Not infringement if you use your own name, descriptive about kind quality etc, indicate intended
purpose of the goods, as long as in accordance with honest practices
- Prior user (28(2))
- Exhaustion doctrine: s 29, unless goods condition has changed, or there is dilution
Groundless threats of proceedings: s 35
Remedies (s 31):
- Injunction
- Damages
- Account of profits
- Statutory damages
26

- Order to get rid of the trade mark (32), goods (33)
- Criminal actions 46, 47
Passing Off
- Inverse Passing off: Say the other persons goods are your own
- Extended passing off: Stuff like champagne name, (which is a region) being used in other stuff like spanish
champagne, to misrepresent about the quality and make ppl think its the same as champagne
- Classic passing off
- 3 elements (Jif Lemon): (1) Sufficient goodwill within the jurisdiction, (2) Misrepresentation that goods are
associated with the pf, (3) Damage suffered (or likely to) because of the misrepresentation
- Goodwill
o It is the attractive force which brings in custom goodwill is worth nothing unless it has power of
attraction sufficient to bring customers home to the source : IRC v Muller
o Query: Foreign business with reputation?
Hard-line vs soft-line approach, SG according to Staywell sticks with the hard-line approach that
there must be business in the jurisdiction. However, allows consideration of pre-trading activity
Consider volume of sales/trading (annual turnover), volume of advertising (media coverage)
and promotion expenditure - > indications of goodwill

26
Statutory damages are generally available to the plaintiff (who must make an election between three possible remedies)
where, in any action for infringement of a registered TM, the infringement involves the use of a counterfeit trade mark (defined
in Section 3(6)) in relation to goods or services (per Section 31(5) and see also Section 31(6)).
o It is difficult to show sufficient goodwill if name / get-up etc is not distinctive of the plaintiffs goods
and services. Names which are descriptive will probably fail, unless they have been in use for a long
time, or they are fanciful (ie unrelated the the goods)
Lifestyle 1.99 Pte Ltd v S$1.99: The huge turnover of the one.99 shop meant that there was
good will in the business, as people went to buy stuff from it
Nippon Paint: Failed, 3 in 1 paint is also just a descriptive label (Also all the ppl who buy paint
(contractors) tend to know a lot about the different brands)
The Singapore Professional Golfers Association: Non-commercial entities can have goodwill too,
as they attract donations, membership, etc. While the name here was just a description of a
golfers association, its use had nevertheless become associated with the claimant.
- Misrepresentation
o Misrepresentation as to trade origin make people think they originate from pf.
o Misrepresentation as to connection make ppl think they are related so rely on pfs reputation eg
contractual license agreement exists etc
o There has to be likelihood of confusion among relevant sector
Relevant sector actual or potential customers. Those customers must also be buying because
of the goodwill (ie not just buying because cheap etc): Amanresorts
Not concerned with the moron in a hurry, rather its ordinary sensible members of the
public: Tong Guan Food Products
Just have to show there was a real risk that the defendants representation would have
deceived a substantial number of persons: CDL Hotels International; actual confusion is not
necessary but of great evidential value: Amanresorts
Substantial is more than de minimis, doesnt have to be large proportion: Millenia
Shampoo product only had 0.25% of the market, but sufficient: Neutrogena Corporation
Note also the imperfect recollection test, that you wont put the 2 marks side by side, as
people will see them at different times with only part of the mark in mind: Tong Guan
Confusion/deception is usually proved by survey evidence, though court is wary of such
evidence: Asia Pacific Publishing; there may be lack of objectivity in running the survey etc
- Damage
o Actual or probable damage to plaintiffs goodwill
Dilution of brand image; licensing revenue; direct competitors (likelihood): Amanresorts
27

actual damage: loss of business revenue; inferiority of the Dfs goods: Spalding v Gamage
Cf if infringement occurred a while ago: Asia Pacific Publishing
28

- Remedies
o Injunction, maybe damages
Cybersquatting
- British Telecommunications v One In A Million: Cyber squatter registered names and tried to sell it to the
companies (eg marksandspencer.co.uk). committed passing off The URL is itself a misrepresentation, and
the usage of the name will cause erosion of the exclusive goodwill in the name. Also was trademark
infringement mere sale of domain name which is similar to trademark will infringe it



27
Said that buyers of property would not actually be deceived into buying it on the name, but there was nevertheless intangible
loss from dilution. Also noted there was possible loss of licensing revenue
But dont use the word dilution, because under TMA it is used for well known marks
28
period of alleged infringement happened a while ago and wasnt ongoing, court said it should have been possible to show
actual damage if there was any, not sufficient to show probable damage.
Copyright
- Moral (natural rights) justification French idea of extension of self
- Property theory (Locke) justification you own what you make
- Economic/practical justification if you dont give people incentive they wont create
- Utilitarian you want stuff for the good of society
- Weak monopoly over expression (not ideas). Automatic subsistence
- 4 Step analysis: (1) Identify what the work is (classification); (2) Show connecting factor (person is in
territory), (3) Show that work is original, and (4) Work is fixed in material form
- Classification (1) Authors works; (2) Neighbouring rights
o Authors:
o Literary works
s 7A: Includes compilation and computer program
literary in print or writing: University of London Press Ltd. v. University Tutorial Press Ltd.
work has to be more substantial than just a name (eg Exxon, which is more suitable for
trade mark: Exxon Corporation v Exxon Insurance Consultants). However newspaper article titles
suffice - Newspaper Licensing Agency Ltd v Meltwater Holding. Cf notion of jabberwocky
poem, because of the poem then jabberwocky will have copyright, but without the poem there
would not be.
o Musical Works
UK definition: a work consisting of music, exclusive of any words or action intended to be sung,
spoken or performed with the music.
o Artistics works
[s 7(1)]:
(a) a painting, sculpture, drawing, engraving or photograph, regardless of artistic quality
(b) a building or model of a building, regardless of artistic quality;
(c) or a work of artistic craftsmanship to which neither paragraph (a) nor (b) applies
A face painting is not an artistic work because its not fixed temporary
Artistic to be considered in light of the evidence, it does not have to be good art, but it has
to be of a artistic nature. : Hensher v Restawile
29
; A babys cape was not a work of artistic
craftsmanship it was craftsmanship, but it was not artistic. The onlooker derived no aesthetic
satisfaction from contemplating the garment itself: Merlet v Mothercare. Focus may be on the
purpose of making the item - Lucasfilm Ltd v Ainsworth
30

o Dramatic works
a work of action with or without words or music capable of being performed before an
audience
31

TV show format too uncertain to be a dramatic work - Green v Broadcasting Corporation of NZ
o Neighbouring works
o Sound recordings, cinematograph fils, television/sound broadcast, cable programmes, published
editions of authors works
- Connecting factor
o *s 27(1)+(4)+: Unpublished authors works: must be SG citizen/pr
o [s 27(2)]: Published works: Author is SG/PR at time of publication or their death, or published in SG
o [87/88]: Sound recordings/Cinematograph films: Maker is SG/PR/company, published or made in SG
o [89]: Sound/TV broadcast: made from SG by license holder
o [90]: Cable program by SG/PR/Co, unless it is an immediate retransmission of TV/sound broadcast

29
Failed to show that a prototype of a chair which was used to make chairs was of an artistic nature on the evidence
30
Stormtrooper helmet case the helmets were functional in nature (I suppose in making the film), rather than having an
artistic purpose
31
Norowzian v Arks Ltd (No 2)
o [91] Publication of works
- Originality
o Definition of original is controversial.
Originates from an author and not a mere copy is enough: University of London Press, Ltd. v.
University Tutorial Press (sweat of the brow standard d) (UK)
Require some level of creativity - Feist Publications (US)
Must be more than a mere copy, but need not be novel or unique. Must involve exercise of
skill and judgement, but more than a trivial amount - CCH Canadian v Law Society (Canada)
Sweat of brow approach - Real Electronics v Nimrod Engineering (SG), Re AUVI
o In derivative works:
Interlego AG v Tyco Industries
32
must be more than mere copying
o Databases/Compilation:
Can be protected, but must be the product of intellectual creation
Originality flows from a human person, if no author can be identified then it cannot be an
original work (companies never die unlimited copyright): Asia Pacific Publishing
Test is the same, whether there is a sufficient amount of skill, labour and judgment involved in
the creative process: Asia Pacific Publishing
Cf the notion that in modern time, information gathering is computerized and no effort
It is the way information is presented that is protected Ibid
- Reduction to fixed form
o Reduced to material form [s 16, 17]
o Does not have to be fixed by the author himself
33

Duration:
- Authors works(excl photos) lifetime + 70 yrs [28(2)]
- Photos[28(6)], sound recordings[92], cinematograph films [93] 70 yrs from publishing date
- TV/sound broadcasts [94], and cable programmes[95] 50 years from broadcast/ becoming available
- Publication of works, publishers get 25 yrs from first publication
Ownership
- Default, author shall have ownership [30(2)]
- Maker of a sound/film recording will get it [97(2)/98(2)]
- Unless the author is being paid to make it [30(4) newspaper employee, 30(5) commission photo/painting,
30(6) general employment, 97(3) sound recording, 98(3) film]
- Note the distinction between an author and the owner! Asia Pacific Publishing Pte Ltd v Pioneers
Exclusive rights [s 26]
- To reproduce the work see [15]
o Reproduction or record
o Includes transient copies
o Converted to or from electronic medium (see also [17])
o Converted to/from 3d <-> 2D
- To publish if unpublished
- To perform in public

32
Case about lego bricks. Lego bricks were a registered design and thus statutorily excluded from copyright protection. Argued
that the bricks were converted into drawings/specifications, and these drawings had copyright. Failed, because these were just
copying, and minor editing to specifications was not sufficient to constitute originality, even if effort was put into the
conversion/copying
33
Walter v Lane: newspaper reporters had written down the speeches of lord rosebery, and while they did not write the
speeches themselves, this was enough to attract copyright. Note old statute did not have originality requirement
- Communicate to public
o S 7(1) communicate transmit the work by electronic means, including: broadcasting, in a cable
program, making available so anyone can access
o public RecordTV: recording and streaming stuff to individual persons is not a broadcast to the
public, just a lot of individuals.
- Make an adaptation
Primary infringement (copying): 2 elements
- (1) Causal connection
o Causal connection = prior access + objective similarity
o If there is prior access + objective similarity, burden shifts to df to show no copying
34

o Can look for fingerprints deliberate errors in the original
35

o Subconscious copying is also possible and an offence, but have to show familiarity with the work
- (2) Substantial taking
o Substantial relative to where its taken from, not where it is reproduced in: Larrikin Music Publishing
36

o Copying of football betting slip layout/design infringed even if contents original: Ladbroke v William
o Can have substantial copying even if it does not look same: Designers Guild Ltd v Russell William
37

o Copying a few lines of code is not substantial taking. But to get those few lines, in reverse engineering
and disassembly the whole program was reproduced, and that would be substantial: Creative v Aztech
o Look at quality not quantity, and whether its important to the copyrighted work: Virtual Map v SLA
- Copying from 3D <-> 2D can be reproduction: [15(3)]. However, it is not if a non-expert doesnt think so *69+
o Copied 2d popeye comic characters to make 3d models. Infringement. King Features v Kleeman
o Same author copies from previous drawings, each of them is original work: LA Gear v Hi-Tec Sports
Authorisation of infringement [s 31(1)]
- The underlying act of infringement must have occurred in the jurisdiction: ABKCO Music & Records
- Must show that the defendant had control over the means infringement occurred, and had authorised it
- Meaning of authorization controversial
o Moorhouse v University of New South Wales (Aus): Uni had photocopiers but did not do enough to
prevent ppl from infringing copyright, + had power over the photocopiers, was held liable
Cf s 34 have the prescribed notice displayed at the photocopier and no authorisation
o CBS Inc & Anor v Ames Records and Tapes (UK): company lent out tapes and cds that had to be
returned. Even if they knew of likelihood of ppl copying, was not authorizing infringement
o CBS Songs Ltd v Amstrad Consumer Electronics: Sold HiFi systems with highspeed copying
functionality. Noted difference between authorization and facilitation.
o CCH Canadian Ltd v Law Society of Upper Canada: Providing access to photocopiers doesnt suggest
authorization to infringe - Presumption that patrons would use them lawfully. Presumption may be
rebutted if there is a degree of control between the person providing photocopier and user Posting a
notice to say ppl should not infringe copyrights is not an acknowledgement that such infringement
occurred
o Twentieth Century Fox Film Corp v Newzbin: usenet thing, primarily for sharing of copyrighted
materials. Premium service for members and had editors who would create reports of films, assisted
members in infringement and profited. Held this was authorisation
o Roadshow Films Pty Ltd v iiNet (Aus): Case concerning ISP and the lobbies asking them to suspend
accounts of bittorent users. Despite ISP disregarding notices, could not be said to have authorized the

34
LB (Plastics) Ltd v Swish Products
35
Virtual Map (Singapore) Pte Ltd v Singapore Land Authority
36
Copied 2 bars from the kookaburra song out of 4
37
Two textile designs, which were generally similar but had different details
infringement, due to problems of the notices containing insufficient evidence. Safe harbor provisions
would require ISPs to have sufficient policies in place
o Ong Seow Pheng v Lotus Development: Df would sell 1 copy of pirated software and a bunch of
manuals to dealer, and dealer would make extra copies as needed to sell as complete package. There
was no authorization as the dealers decision whether or not to make a copy lay with him, and the
dealer knew df in no position to grant authority to make copies. Cited Amstrad that even
encouragement or conferring the power to copy is not the same as authorisation
o RecordTV:
(a) whether had control over means by which copyright infringement was committed and
power to prevent it; (the difference between the photocopier and tape recorder cases)
(b) nature of relationship btw authoriser and infringer; (not definitive)
(c) whether alleged authoriser took reasonable steps to prevent infringement
(d) whether authorizer had knowledge of infringement/likelihood of infringement (not decisive)
Secondary infringement of copyright exploit it commercially
- Attracts both civil and criminal liability
- [s 32/104] infringement by importing to sell etc, [s 33/105] sale/etc; s 100+ is for neighbouring rights
o Authority depends on (a) copyright owner from where good is made. If none, then owner in SG [25(3)]
o If article made with license, regardless of conditions on it, shall be deemed to have consent [25(4)]
Groundless threats of legal action: [s 200]
- Threaten action. Notification of existence of copyright is not a threat
- May get (1) declaration that threat unjustified; (2) injunction against threats; (3) damages if any suffered
Defences
- Berne 3-step test limitations on IP rights must be for special cases only + not prevent normal exploitation
- General any purpose Fair dealing [s 35]/ s 109 for neighbouring rights
o (a) purpose and character of the dealing, (eg commercial nature or non-profit educational purposes);
o (b) the nature of the work;
o (c) the amount and substantiality of the part copied taken in relation to the whole work;
o (d) the effect of the dealing upon the potential market for, or value of, the work; and
Focus on what happens to the public viz copyright holder (not intermediary if any RecordTV)
o (e) possibility of obtaining the work within a reasonable time at an ordinary commercial price.
o RecordTV (HC): If you distribute copyrighted materials in breach of copyright, you cannot exculpate
yourself because the recipient might have fair use defence
o [35(3)] deemed fair dealing for purpose of research or study, if copy article out of periodical
publication, or reasonable portion [<=10% of pages in book of at least 10 pages or one chapter of
book, whichever is more]: 7(2), 7(2A)
research can include industrial (commercial) research or research carried out by bodies
corporate. CCH Canadian Ltd v Law Society of Upper Canada
38

Study is no longer restricted to private study
- purpose of criticism or review [s 36] / s 110 purpose of reporting current events [s 37]/ s 111
o Hyde Park Residence Ltd v Yelland: Just because the event may have occurred some time ago does not
mean it has lost its currency
39

o Bee Cheng Hiang v Fragrance Foodstuff no clear definition of current event, would depend on
facts. In this case, BCH wanted to publish fragrances logo to say it was different from their own plz

38
The case also stated that fair dealing is a matter of users rights which elevates it to a level of user right vs owner right
39
Princess Diana case, the investigations were still ongoing
dont confuse. As there was evidence of ongoing confusion, the judge accepted that it might
constitute a current event.
o No statutory guidelines on what is a fair dealing for s 36/37. However, see Hubbard v Vosper
it is not fair dealing for a trade rival to use copyright material for own benefit
consider (1) number and extent of the quotations and extracts. Length/number. (2) the way
they are used comment, or to convey the same info? (3) proportions (long extract +short
comment vs short extract + long comment)
o Subjective intent and motives
Objectively ascertain whether the material was used for criticism (and not just dressed up to be
criticism), but subjectively ascertain whether the intentions in doing so were fair dealing
40

Eg Hyde Park Residence: Subjectively ascertain what the intention of using the
information was, ie in the case it was to vilify someone, bad so can fail fair dealing.
Whether an objectively honest person would do what they did to achieve those
subjective intentions
Copyright includes right to prevent publication, publishing in breach of that right is strong
indication that its not fair
- [s 63/64]: No infringement for taking photos of artistic pieces/sculptures/buildings in public
- [65]: No infringement of artistic work by inclusion in film/TV if only incidental
Remedies [119(2)]
- Injunction, damages, account, statutory dmgs
o May get damages + Account for non-overlapping portion
o Statutory - <=10k per item, max 200k unless proven that actual loss >200k
o No damages from innocent infringer, but account available: [119(3)]
o Additional discretionary damages, see (i) flagrancy (ii) benefit defendant got, (iii) anything else[119(4)]
- Delivery up/disposal: [120/120A]
- Criminal liability: [s 136] Primarily for people who profit out of it, though there is also one when extent of
infringement is significant or for commercial advantage (136(3A)).
- Border enforcement, see Div 6 of Part V


40
Pro Sieben Media AG v Carlton UK Television

Você também pode gostar