11 Mar 2019

Intellectual property (IP) can be an extremely valuable asset to your business – in fact, for some, it is the main asset driving their businesses. This is because owners of IP can exercise their rights to exclude competitors from using their IP or to exploit their IP commercially.

While many businesses might be familiar with the broad notion of IP, it is important to realise that IP is merely an umbrella term – there are numerous rights with different requirements for protection to arise and different terms of protection. Consequently, there are important questions that you must ask yourself when thinking of how to protect your IP: What is the subject matter I am seeking to protect? Can the subject matter be protected? Bearing in mind the various costs and benefits, which is the best way to protect my IP?

In this regard, this article seeks to provide you an overview of the IP regime in Singapore to help you answer these questions.

Copyright

What does copyright protect?

Copyright refers to a bundle of exclusive rights conferred upon owners of the copyright, which may be the authors, employers or enterprises responsible for the creation or commissioning of the works. Copyright only protects forms of expressions; it does not protect ideas. There are two main categories of works or subject matter that are capable of copyright protection: author works and entrepreneurial works that help to distribute the author works. Some examples include books, computer programs, musical compositions, paintings and television broadcast.

When is a work capable of copyright protection?

It is not necessary to register your work for it to be capable of copyright protection. Copyright automatically subsists in the work once it is reduced to a material form (such as in writing) and various legal criteria are fulfilled. It is important to note that for copyright to subsist, your work cannot be mere copies of existing works and you, as the author, must have expended sufficient skill, intellectual effort, creativity or judgment in its creation.

How long does copyright last?

The duration of copyright protection depends on the type of work in question. Notably, on 17 January 2019, the Ministry of Law and Intellectual Property Office of Singapore (“IPOS”) released details of their proposed changes to the Copyright Act. Below is an overview of the existing duration of copyright protection and the proposed amendments.

How do I know if my copyright has been infringed?

In order to establish that your copyright has been infringed, you need to show evidence that the infringer has copied a substantial part of your work. If he or she has independently created it of his or her own accord without reference to your work or the copying was not substantial, there is no infringement.

Registered Designs

What does the Registered Designs Act (RDA) protect?

The RDA protects the ornamental features that give any article or non-physical product its appearance – put simply, the external appearance of an article or non-physical product. Consequently, as the owner of a registered design, you can prevent unauthorised usage, sell or licence the design for profit.

How do I acquire protection under the RDA?

Your design is protected once you successfully register it with IPOS. Except certain bars to registration stipulated by law, a design is registrable if it satisfies the key requirement of novelty. In other words, a design is not registrable if it has been registered or published anywhere in the world before (with some statutory exceptions) or if it differs only in immaterial details from other designs that are commonly found in trade. Further,  the design must not be solely dictated by  its function, dependent upon the appearance of another article or non-physical product, or contain features that enable the article or non-physical product to perform its function.

How long does protection last?

Once registered, the design will be protected for five years from the date of filing. Subsequently, registration may be renewed every five years. The maximum protection is up to 15 years from the date of filing.

Trade Marks

What are trade marks?

Trade marks refer to signs that identify certain goods or services that are provided by a person or an entity (for example, your brand name or logo). In this regard, the owner of a trade mark would want to obtain trade mark protection so that he or she holds the exclusive right to use them to identify the specific goods or services claimed, sell or license the rights to use the trade marks, or use the trade marks as loan collateral.

How do I acquire trade mark protection?

In Singapore, it is possible to acquire trade mark protection by registering your mark under the Trade Marks Act. This can be done by filing an application with IPOS. Registration is prima facie proof of ownership, entitling you the exclusive right to use the registered mark.

If you choose not to register or have forgotten to register your mark, it is still possible to seek recourse against alleged infringers through the common law tort of passing off. Unlike an action for infringement of a registered mark, the tort of passing off can only be established if you prove, among others, that your business has goodwill within Singapore, which may pose some difficulties for newly established businesses.

How long does trade mark protection last?

Under the registered system, trade mark protection is conferred for an initial period of 10 years. This period can be extended indefinitely if registration is renewed every 10 years.

How do I know if my trade marks have been infringed?

Infringement of a registered trade mark may occur when a person or entity uses a sign identical to or resembles the registered mark in the course of trade without the consent of the trade mark owner. In ascertaining whether infringement has occurred, the court may consider a number of factors, such as:

  • Whether the allegedly infringing mark is similar or identical to the registered mark;
  • Whether the allegedly infringing mark has been applied to goods and services which are similar or identical to the registered mark;
  • Whether use of the allegedly infringing mark will cause a likelihood of confusion on the part of the public.

Patents

What is a patent?

When you successfully register a patent, the owner will be granted the exclusive right to use the patent and to prevent others from making, using, distributing or selling inventions without the owner’s consent. Importantly, patents are not limited to technological inventions and have been granted across numerous industries, ranging from human necessities to electricity to textiles and paper.

How do I acquire patent protection in Singapore?

In Singapore, you will need to file a patent application with IPOS in order to obtain patent protection. On a practical note, patent applications are relatively costly and time-consuming. As the state is essentially granting you a monopoly over your invention during the period of protection, your invention must meet stringent requirements. You should therefore ensure that your invention meets the criteria for registration as well as strategically consider your business needs and how you may wish to commercially exploit the patent when (and if) it is granted.

IPOS recommends that any potential applicant takes the following steps before applying for a patent:

  1. Check whether you have disclosed your invention to anyone else: The disclosure of an invention might affect the patentability of an invention. If your invention is publicly known, the invention will not be regarded as being novel (with some statutory exceptions) and hence, will not be patentable.
  2. Check whether there are any existing inventions that are similar to yours: Even if you have created your invention independently, there might be an existing invention that is similar to yours. In such a case, you might be sued and be found liable for patent infringement instead. To this end, there are online databases that are available for you to conduct searches.

Additionally, your invention must reveal an inventive step, be capable of industrial application and must not be offensive, immoral or anti-social.

If you have doubts as to whether your invention can qualify for patent protection, it may nevertheless be protected as a trade secret or as confidential information, which will be elaborated below.

How long does patent protection last?

Once granted, patent protection lasts for 20 years from the date of filing of the patent application, subject to the payment of requisite renewal fee. The protection can be extended for up to 5 years if there was an unreasonable delay in the issue of the patent.

Trade Secrets / Confidential Information

How can I protect my trade secrets/confidential information?

While the other intellectual property rights (IPRs) are mainly statutory in nature, the law relating to confidential information is a common law cause of action that prevents a person from divulging information that was given to him under circumstances of confidence. This is a useful supplement to the other IPRs in that it can step in to protect valuable business information that would not otherwise qualify for any protection under the other regimes.

For instance, recipes are not protected under any other IPR. However, recipes might be crucial to a restaurant’s or franchise’s business. In such circumstances, enterprises can still rely on the law on confidential information to ensure that such information is not leaked to unauthorised parties.

When is information considered confidential?

Generally, you should have a confidentiality clause in the employment contract governing your relationship with your employees and sign a non-disclosure agreement (NDA) with your partners to clearly set out what information is confidential, the scope and obligations of confidentiality. This is helpful in that you may then seek an injunction or damages for any unauthorised disclosures by the other party in breach of contract.

Even in the absence of a contract or NDA, the courts may nevertheless find that the information is confidential if it has the necessary quality of confidence or was imparted in circumstances imposing an obligation of confidence on the recipient, and there was an unauthorised use of the information.

This article was first published by Asia Law Network and authored by Jasmine Toh, Associate of Taylor Vinters Via LLC and co-authored with Joshua and Marissa from Asia Law Network.