1618493 Tan Khang Hou
1743696 Leow Yong Zheng
1642641 Matthew Yeo
1728035 Neo Lok Jun
Submitted to:
Kah Hong the Ho
Date: 4/7/2018
Introduction During points in our lives, we may have wondered what it was like to be a boss of a company, where we sit at the top of the company hierarchy, overseeing thousands or maybe even hundreds of thousands of subordinates and multiple branch companies all while swimming in a pile of wealth. A life like that sounds easy and luxurious, but it comes with its own set of headaches. WIthout the proper legal processes, other people may reproduce and sell your product at lower prices, others may exploit your fame and try to mimic your logo in hopes that others might mistake it for your company, as well as a whole lot of other complications. That’s why companies make sure to trademark their logo, patent any unique products they designed and are selling and copyright any performances, novels, and software programmes.
Background Intellectual property, or also known by its abbreviation: IP, refers to a creation born from one’s ideas, such as inventions, brands, literature or art and plays a heavy factor in ensuring that creators earn fairly for their creations. Creations refer to anything from new industrial machines to videos, as long as the creation is original. Rights to intellectual property can be assigned ownership to or licensed to third parties in exchange for royalties. Intellectual properties can be granted 8 types of rights:
copyrights, patents, trademarks, industrial designs, trade secrets, geographical indications, plant varieties and layout designs of an integrated circuit.
Copyrights Copyrights protect an author’s rights to his original work. They cover a broad range and protect many creative industries like film, publishing, music, broadcasting, IT, etc. Copyrights provide owners monopoly of that product, meaning they are the only ones who have the right to exploit the product and can prevent others from doing the same. Original does not mean that the work has to be unique and creative, but rather it means that there is a sufficient degree of independent effort put in by the author to the work.
Copyrights are unable to protect facts, ideas, systems or methods of operation, although they may protect the way ideas are expressed. The lifespan of a copyright vary depending on the type of creation it is protecting. Copyrights for:
1.
Literary, musical and artistic works last for 70 years after the author’s death 2.
Published editions for literary musical and artistic works last for 25 years after publication 3.
Sound recordings last for 70 years after first being published 4.
Broadcasts and cable programs last for 50 years after first being made 5. Copyrights for performances last for 70 years after the first performance.
An author does not have to register for a copyright, because it is automatically granted to him the moment he materialises his idea into a tangible form. Generally, owners of the copyrights are the authors of the work, however there are several exceptions to this:
1. Employers own copyrights and the work that his employees create 2. Commissioned works and its copyright belong to the commissioner
The copyright symbol © indicates that a work is copyrighted, however, the absence of the symbol does not mean that a work is not copyrighted. The symbol is simply an indicator, and the author will have the same amount of rights whether the copyright symbol is present or not. To use copyrighted resources from third parties, one must obtain a license by either:
1. Contacting the copyright owner directly 2. Contacting a collective management organisation -- a collective management organisation s is a middle-man that handles licensing of rights, collection of royalties and enforcement of rights on behalf of the copyright holder
The copyright owner can decide whether he charges a fee for licensing his copyrights or not. If someone uses copyrighted material without permission from the author, he is infringing on the owner’s copyright and can be charged as a criminal. Examples of copyrights include YouTube videos and self-published novels.
Patents Patents protect how a product works, what the product does, how the process is done or what the product is made of. Like copyrights, patents grant exclusive rights to the owner so that he can exploit the product, however, unlike copyrights, patents must be registered for. In order to register a patent, the product being applied for must usually satisfy 3 criteria 1. New -- meaning it is unknown to the public 2. Innovative -- meaning it is an improvement over an existing product and the improvement must not be obvious to those with the technical expertise in the field of the product 3.
Industrial application -- the product must be useful and have some sort of practical application and be able to be produced in any industry
Patents have a maximum lifespan of 20 years and must be maintained yearly starting from the 5th year. Annuities must also be paid prior the beginning of the 5th year and every subsequent year after that until the 20th year in order to maintain the patent. Patents can be licensed to third parties on mutually agreed terms or be sold to third parties, who then becomes the new owner of the patent. Examples of patents include a system for shorter flight times or steel kidneys.
Trademarks Trademarks refer to signs that can be used to distinguish company’s products from another company. This can either come in the forms of a logo, slogan or design. Trademarks protect unlawful use of registered trademarks and no one is able to use them unless they are the owners of the trademarks. Trademarks maximum lifespan is indefinite, however, it must be maintained every 10 years. A registered trademark, however, it may be revoked if there has been no genuine use within 5 years and if there is no proper reason for not using it. Trademarks can also be licensed to third parties or be sold to third parties for a sum.
Marks can be registered as long as it is easily distinguishable and can be in the form of letters, words, names signatures, labels, devices, tickets, shapes and colour or a combination of any of these elements.
A trademark has to not fall under the following categories:
1. Descriptive -- use of adjectives like ‘best’ or ‘super’ 2. Non-distinctive -- marks that are common in your trade, like trademarking AntiSeptic as a pharmaceutical company, or marks that are non-distinctive and do not separate the goods or services you are offering from others 3. Against public order and morality 4.
Deceptive marks -- marks that misrepresent the nature of goods or services, such as the quality or nature of them.
5. Marks that are identical to previously registered trademarks
The symbol ® shows that a trade mark has been successfully registered. The TM symbol indicates that a logo or name is being used as a trade mark, however, it does not mean that it has been registered as a trade mark. Since trademarks help customers identify your product, it becomes possible to build customer loyalty and reputation as customers are able to recognise and remember a company through its branding, it is vital for a company to trademark its branding. Example of a trade mark is Coca-Cola’s signature cursive white letters against a red background.
Industrial Designs Industrial design refers to the external appearance of a product, which can range anywhere from colours to shapes to the texture of a product. An industrial design right protects the visual appearance of a product, whether the overall appearance or just a part of it.
The owner of the registered design is granted the exclusive right of commercially exploit the product and can prevent others from using your registered design.without permission.
These rights can also be licensed or sold to third parties for a sum.
The maximum lifespan of an industrial design is 15 years and must be renewed every 5 years.
In order for a design to be registered, the design must:
1. Not have been registered or published anywhere in the public domain 2. Not be solely functional 3. Abide by public order or morality.
An example of an industrial design is the Coca-Cola bottle.
Confidential Information Confidential information refers to information unknown to the public and may include trade secrets of a business.
Since confidential information cannot be registered as it requires divulging said information to third parties, it is up to the owner of such confidential information to enforce secrecy of those who know by:
1. Limiting the number of people with knowledge of confidential information 2.
Keeping track of business transactions that may contain confidential information 3.
Using non-disclosure agreements (NDA) to bind people by law to keep confidential information to themselves
If confidential information contains copyrighted material, it will be protected by both copyright and confidential information law.
Examples of confidential information are recipes, methods and techniques Geographical Indications Geographical indications refers to signs to identify products that come from a certain location. Geographical indication rights protect the use of a geographical indication to ensure that use of it does not mislead the public of its country of origin or use of it is not dishonest or unfair. Well-known examples of geographical indications are Champagne and Darjeeling, which are both named after their countries of origin. Champagne can only be called Champagne if it was produced in France, Champagne. Anywhere else and it would simply be called sparkling wine, same goes for Darjeeling tea, which must be produced in Darjeeling, India, to be called Darjeeling tea. There is no need to register for geographical indications to obtain protection of geographical indications in Singapore as traders and producers of any geographical indication enjoy automatic protection as long as the 1. Product is protected in its country of origin 2.
Country of origin is a member of the World Trade Organisation (WTO) 3.
Geographical indication does not fall under any of the categories a.
Immoral or against public order b.
It has become the common name in Singapore for the goods and services which it identifies c.
It is confusingly similar to a trade mark for which rights had been acquired before the geographical indication was protected in its country of origin d.
It is the name of a person Plant Varieties Plant varieties rights protect the discovery of a new plant species. With these rights, the plant breeder has the right to exclude others from exploiting the plant variety without his permission. The plant breeder can also license the rights or sold to a third party. The maximum lifespan of a plant variety protection right is 25 years and must be renewed every year. To register, the plant variety must be:
1. New -- the plant variety must remain in the plant breeder’s possession as of registration 2. Distinct -- the variety is distinguishable from any other variety 3. Uniform -- the variety is similar enough characteristics in relation to plants of the same variety 4. Stable -- the plant retains its relevant features for more than a few generations 5.
Denomination -- denomination refers to the unique name or identification of the plant variety.
The breeder of the new variety has to propose a suitable denomination as its designation for approval.
Unacceptable denominations include denominations that are:
a. Numbers only b. Misleading or confusing c. Against public order and morality d.
Confused with registered trademarks Layout Designs of Integrated Circuits Layout designs of integrated circuits refer to the three-dimensional characteristics of the elements and interconnections of an integrated circuit.
The owner of the design has the authority to prevent others from commercially exploiting his design.
Any integrated circuit that has been created after 15 February 1999 will be protected for 10 years if it is used commercially within five years of creation of the design, in other cases, it will be protected 15 years after creation.
In order to register an integrated circuit design it must be original, in other words, the design must come from designer’s own ideas and effort. An example of an integrated circuit design is an operational amplifier.
Singapore Trade Marks Act Also known as the Trademark Act, this act was established to grant protection to the originality of Trademarks and their usage to companies and industries. The act also criminalises the illegal usage of a Trademark that is not owned by the offending brand or product.
Interpretations In this act, several interpretations are made. To summarise:
· A Trademark is considered to be a unique feature/mark/sign that is used to distinguish a product/service from other similar products/services (if applicable) · Trademarks refer to:
o International Trademarks that are registered in countries which signed the 1989 Madrid Protocol (Convention Countries), which are granted protection in Singapore.
· A well-known Trademark is defined as:
o The Trademark is well known and registered in Singapore OR o A Trademark that is well known but not registered in Singapore AND belongs to a person who 1. Is a national of a Convention Country; or 2. Has an industrial or commercial establishment in a Convention country Whether or not that person carries out business or has interests in Singapore.
· In reference to the earlier point, in deciding if the Trademark is well known, the following are taken into account, if applicable:
o The degree/extent of which the Trademark is known to relevant public of Singapore;
o The duration, extent and geographical area of the usage and promotion (including advertising, representation/exhibition of the service/product which the Trademark is applied to);
o Any registration and subsequent enforcement of the Trademark in a country · For the purposes of this act:
o Infringing goods/materials/articles are construed as such if they bear a sign that is the same or similar to a registered Trademark and are knowingly used or proposed to be used in a way that would infringe upon the registered Trademark;
o Counterfeit goods/Trademarks are construed as such if they are infringing on a registered Trademark and are knowingly used to deceive and/or falsely represent genuine goods/services of the owner or a licensee of a registered Trademark.
Rights under Trademark Act The person(proprietor) of a registered Trademark has, under this act, exclusive rights to the use of the Trademark and to authorise others to use the Trademark in relation to the goods/services which the Trademark is registered for.
i.
The use of the Trademark would indicate a connection between the goods/services and the proprietor;
ii.
There would likely be confusion on the part of the Public because of such use;
and iii. The interests of the proprietor would be damaged from such use Actions available to proprietor under Trademark Act Under the Trademark act, a Court may provide the following actions to the proprietor:
· An injunction (subject to terms as the Courts see fit) · Damages · An accounting of profits from said infringements · In the case of counterfeit goods/services, statutory damages i.
Not exceeding $100,000 for each type of goods or services which the counterfeit mark was used;
and ii.
Not exceeding an aggregate of $1 million, unless the proprietor proves his actual loss from such an infringement exceeds $1 million.
Offences under the Trademark Act The following table collates the various offences under the Trademark Act and the punishments levied under them Offences Description Punishments
Section 46:
Counterfeiting a Trademark A person who, without the consent of the proprietor,
Makes a sign identical or nearly resembling a registered Trademark as to be calculated to deceive;
OR Falsifies a genuine registered Trademark, regardless of the method
Section 47:
Falsely applying a registered Trademark to goods or services Any person who, without the consent of the Proprietor,
Applies the trademark or a sign likely to be mistaken for that Trademark to goods and services;
AND In the case of an application to goods, the goods are not the genuine goods of the proprietor or licensee of the registered Trademark
Section 48:
Making or possessing of article for committing offence
Any person who, knowing or having reason to believe that it has been, or is to be used for the committing of any offence under sections 46 or 47, Makes an article specifically designed or adapted for making copies of a registered Trademark or a sign likely to be mistaken for that Trademark;
OR Has such an article in their possession, custody or control
Section 49:
b) Sells or offers or exposes for sale;
or c) Has in his possession for the purpose of trade or manufacture, Any goods to which a registered Trademark is falsely applied.
Section 50:
Any person who a) Makes, or causes to be made, a false entry in the register;
b) Makes, or causes to be made, anything false purporting to be a copy of an entry in the register; or c) Produces or tenders or causes to be produced or tendered in evidence anything referred to in (b), Knowing or having reason to believe that the entry or thing, as the case may be, is false.
Section 51:
Falsely representing Trademark as registered Any person who
a) Falsely represents that a mark is a registered Trademark; or b) Makes a false representation as to the goods or services for which a Trademark is registered, Knowing, or having reason to believe that the representation is false.
Fine not exceeding $10,000
Source:
Importance of Protecting Intellectual Property There are various reasons why an owner should protect their Intellectual Properties, most of them financial or economic in nature.
Inherent Monetary value of Intellectual Property This is the most obvious reason; the Intellectual Property itself, as the name implies, is legally recognized as property of the owner. Like most properties, it has value that arises from the nature of its utility, rarity or uniqueness. As such, it can be traded for money through sale or it can be used as security for loans.
Intellectual Property as a Continuous Revenue Stream Other than by direct sale of the Intellectual Property, an owner may also collect revenue by licensing the use of Intellectual Property to specific parties. By doing this, the Intellectual Property owner can collect royalties.
Intellectual Property as a Marketing tool The protection of Intellectual Properties helps to ensure the owner’s sole right to use, make, sell or import related products (unless a third party is otherwise given permission by the owner). Therefore, an Intellectual Property can be used to set the owner’s business apart from others, as the relevant product can only be bought from and is unique to their company. This helps focus the attention of consumers towards the owner’s company.
Intellectual Property as a Method of Protecting Consumer Interests Some third parties may attempt to take advantage of consumers by selling seemingly-identical but actually-substandard products. These are sometimes counterfeit products that market themselves as being genuine. Other than the consumers experiencing losses due to incompatibility with their use cases (when the counterfeit product they paid for lacks the advertised capabilities or reliability), businesses who use the Intellectual Property legally may also experience losses when incidents with low-quality counterfeit products tarnish the public image of the genuine products and of the businesses themselves.
Intellectual Property laws indirectly give IP owners the power to take action against third parties who are selling such counterfeit products, because the unlicensed usage of Trademarks on the counterfeit product claiming to be genuine, for example, would be violating Section 46 and Section 47 of the Trade Mark Act. Although businesses are not strictly required to report such cases, it would be the ethical for them to do so.
Similar trade infringement cases (refer to https://www.straitstimes.com/singapore/nestle-loses-appeal-in-trademark-case-over-kit-kat-shapes) In this article, Nestle is said to have tried to receive trademark protection for Kit Kat’s two-finger and four-finger shapes. Having registered the shapes as trademarks in Singapore, Nestle sued Petra Food over an alleged trademark infringement case, as Petra has made chocolate wafers of similar shapes. However, Petra counter-sued with an argument that under the law, they cannot be considered trademarks. Nestle’s claim was eventually dismissed in 2014 and even though Nestle appealed, the appeal was dismissed in an 85-page judgment made by Chief Justice Sundaresh Menon. This is because Nestle's shapes lacked inherent distinctiveness and had not acquired distinctiveness through use. The court said Nestle had failed to show that the average consumer treated the shapes as a guarantee of origin, even though the average consumer recognised the shapes and associated them with Kit Kat. Also, the court ruled that the shape is required to obtain a technical result, such as for efficiency when producing in huge quantities.
In this trade infringement case, we can see that trademarked shapes must clearly represent the company it belongs to, such that upon seeing it, one can confirm that it definitely belongs to the company. Although the shape may be registered as a valid trademark, the company must be able to make the shape distinctive through use, otherwise it would not be used as a trademark, and the trademark may be revoked eventually.
(refer to https://www.bbc.com/news/business-39948718) In this article, Nestle tried to sue Cadbury for having products with similar shapes as Nestle’s Kit Kat. Nestle has made claims that the shape of Kit Kat should be of uniqueness, hence deserves law protection. However, their cases have failed multiple times before, which are not in anyway given support by the fact that there is a similar chocolate bar known as Kvikk Lunsj that had came into existence since 1937. However, Nestle still believes that the shape of Kit Kat deserves protection of law as a trade mark, with reasons such as how it is registered as a trademark in multiple countries.
In 2015 in the month following August and preceding October, Nestle failed to win the favor of the European judges to the side of their arguments. The European court said that Nestle has to show that the public can rely on Kit Kat’s shape alone to find the identity of the snack through demonstration. They also said that it is tough to provide evidence whether or not the goods showed a brand name.
From this 2 articles, we can come to a conclusion that certain trademark types, such as shapes, can be difficult to use as a tool for claims in law cases, as it can be difficult to provide evidence that a person can derive the identity of the trademarked object from its shape alone. Henceforth, the use of shapes as trademarks must be taken into serious considerations, because shapes are all around us in great varieties, and the trademarked shape must really stand out from the rest to represent the identity of the product. Otherwise, the registering of the trademarks will be useless, or of incredibly low overall usefulness in attempts to protect the shape.
All in all, from this trademark infringement cases, one should take extra caution when registering trademarks as they may not be useful in protecting one’s work. One should do their own research on similar trademark infringement cases before coming to a decision to create a trademark of the work. One should also consult legal experts, and go through deep considerations before coming to a decision, so as to avoid any sort of unexpected losses.
Conclusion In a nutshell, Intellectual Property protections are vital to maintain the fair usage of creations that are not tangible. It helps ensure that individuals and businesses will not lose the right to benefit from their creations and protects them from third parties who might undercut them or otherwise decrease the unique value of the creation. It helps maintain the ability for IP owners to profit from their creations. It is evident that the Singapore Parliament recognises this significance, as they amended the Copyright Act among others in 2004 to criminalize it.
However, one should be prudent when officially registering trademarks and other intellectual properties, as doing so may not necessarily guarantee that the work will be protected. Due to Singapore law, which provides automatic application of IP protections, the party that first created said content gets the protections, regardless of whether they were the first to register it. This was mentioned in the conclusion drawn from case comparisons.
References
Sources:
1. UpCounsel.
What Does a Trademark Protect:
Everything You Need to Know [online]. Available from: https://www.upcounsel.com/what-does-a-trademark-protect [Accessed 3 July 2018] 2. GuideMeSingapore. An Introduction to Copyright Law in Singapore [online]. Available from:
https://www.guidemesingapore.com/business-guides/managing-business/trademark-registration/an-introduction-to-copyright-law-in-singapore [Accessed 3 July 2018] 3.
TradeMarkAdmin (2014).
What Are The Types Of Intellectual Property Rights In Singapore?
[online]. Available from: http://trademarkyourbiz.com.sg/types-intellectual-property-rights-singapore/ [Accessed 3 July 2018] 4. IPOS.
Understanding Innovation and IP [online].
Available at:https://www.ipos.gov.sg/understanding-innovation-ip 5.
Singapore Legal Advice (2018).
How Do I Register a Trade Mark in Singapore?
[online]. Available from: https://singaporelegaladvice.com/law-articles/how-do-i-register-a-trademark-in-singapore/ [Accessed 3 July 2018]
Appendix Example of Counterfeit products causing injury of Consumer ◀ What a mobile phone looks like when it’s battery spontaneously combusts (image provided by AndroidAuthority[footnoteRef:1]) [1: Image sourced from https://www.androidauthority.com/busting-the-myth-yes-cell-phones-can-explode-42582/ ]
“Nokia and Motorola warn of dangerous fake batteries made in China” Article quoted: https://www.nytimes.com/2007/07/06/technology/06iht-06battery.6532265.html The article mentions that “Foshan Weierrui Telecommunications Equipment”, a business in China, was selling two models of batteries advertised as being suitable for Motorola phones. The batteries were even branded as being made by Motorola, which is a trademarked name, despite the business not being licensed to manufacture such batteries. The article also suggests that these batteries were made in a substandard manner and would be prone to explosion, causing harm to an unwitting mobile phone user.
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