"Dear fellow members and friends,

"It is my pleasure and honour to be writing to you as President of LES Singapore.

"LES Singapore held its Annual General Meeting in May 2002. The new Executive Committee elected for the term 2002-2003 are:

"After the AGM, three committees were formed to carry out the activities of the society. The three committees are Membership, Education & Training and Publicity. Under the chair of Audrey Yap, the Education & Training committee will organize the programmes for the society. The Publicity committee under the chair of Ms Ang Su-Lin is in charge of the electronic newsletter and web-page.

"In July 2002, the Education & Training committee under Audrey Yap jointly organized a talk on "Recent developments in patents law in US" with IPOS and the speaker was Wendy Buskop of Buskop Law Group PLC. This will be the start of other talks in collaboration with IPOS on IP topics.

"This newsletter has been prepared by Su-Lin and her committee and I thank Su-Lin and her committee for their great work.

"As training in licensing skills and knowledge is part of the society's objectives, the society will organize a training course in licensing and a Licensing Course committee has been formed to organize this.

"LES Singapore endorsed and supported the Inaugural Singapore Promising Brand Award and Singapore Brand Festival organized by the Association of Small and Medium Enterprises and Lianhe ZaoPao. I was invited to sit in the panel of judges for the Singapore Promising Brand Award 2002 and also received the token of appreciation on behalf of the society on 25 August 2002.

"The society plans to organize regular meetings for members and to collaborate with other organizations on talks, seminars so as to promote its objectives. Information will be sent to members by email, so look out for it. It is my pleasure and honour to be writing to you as President of LES Singapore.

"With best wishes and yours sincerely,

"Tan Kee Leng"

(Editor’s Note: Extracted from an article entitled "The new law of registered designs in Singapore - a brief survey" by Mr Tan Tee Jim, SC, of Allen & Gledhill. Part 1 was published in Issue 1 and Part 3 will be published in the next issue.)

"New" Design

To be registrable, a design must be "new". A design is not new if it is the same or substantially the same as a design which has been registered or published in Singapore or elsewhere in respect of the same or any other article or differs only in immaterial details or in features which are variants commonly used in the trade. The novelty is to be assessed as at the date of the application for registration.

Publication may be oral, by way of prior use or in documents. The publication need not be to a large number of the public. If there has been a disclosure to any member of the public who is not under an obligation as to secrecy, there will be publication. If the publication of a design or use of it would be contrary to public order or morality, the design is not registrable.

The novelty of the design is not destroyed if the publication was made in breach of good faith, to a Government department to consider the merits of the design, at a display at an official international exhibition with the owner's consent if the application is made within 6 months after the opening of the exhibition or in an acceptance of a first and confidential order for goods bearing a textile design.

Additionally, if an application for registration of the design has been made in a member country of the Paris Convention or the World Trade Organisation within 6 months of the application in Singapore, the novelty of the design is not destroyed.

Authorship/Ownership

The Act stipulates that the designer of a designer is the owner of the design. Where the design is created pursuant to a commission for money or money's worth, the person commissioning the design shall be treated as the owner of the design. Where the design is created by an employee in the course of his employment, his employer shall be treated as the owner of the designer.

In the case of a design generated by computer in circumstances such that there is no human designer, the person by whom the arrangements necessary for the creation of the design are made shall be deemed to be the designer.

A largely self-assessment system

The Act creates a new Registry of Designs which shall maintain the Register of Designs containing particulars such as the names of registered owners, dates of registration and particulars concerning of transactions affecting rights in registered designs. The Registry's role is to examine an application to determine whether it satisfies the formal requirements (including filing procedure). In particular, it is not required to consider or have regard to the registrability of the design, whether the applicant is entitled to any right of priority or whether the design is properly represented in the application.

The Registry may however refuse an application if, on the face of the application, the design is not new or is not registrable for any other reason.

Period of protection

The maximum period of protection is 15 years from the date of the application for registration. The registration must be renewed after the first and second period of 5 years upon payment of the prescribed extension fee (S$300 and $400 respectively).

The Act provides for 2 situations in which the period of protection may be shortened, namely,

(1) where the design corresponds to a copyright artistic work, the period of protection expires on the date when the copyright expires; and

(2) where the design is similar to a prior design registered for one or more other articles, the period of protection expires on the date when the prior registration expires.

Rights in registered designs

The registration gives the registered owner the exclusive right

(a) to make in Singapore or import into Singapore -

(i) for sale or hire; or

(ii) for use for the purpose of trade or business; or

(b) to sell, hire or offer or expose for sale or hire, in Singapore

any article bearing the registered design or a design not substantially different from the registered design.

The right in a registered design is infringed not only by any of the acts mentioned above but also by doing anything in relation to a "kit" (meaning a set of components intended to be assembled into an article) that would constitute an infringement of the design if it had been done in relation to the assembled article.

The principles which have been applied by the Singapore courts when making the comparison between the registered design and the design applied to the defendant's article are as follows:

(1) The eye to judge the differences and similarities is the eye of the customer or potential customer: Risis Pte Ltd v Polar Gems Pte Ltd & Ors; Sebel Furniture Ltd v Tiong Hin Engineering Pte Ltd.

(2) The court must bear in mind the doctrine of 'imperfect recollection' (except in cases where the customer is a specialist in the industry): Sebel Furniture Ltd (above); Essen System Builders (S) Pte Ltd & Anor v Essential Roofing Systems Pte Ltd & 2 Ors.

(3) It is the general impression of the articles as a whole which is important: Risis Pte Ltd (above); Sebel Furniture Ltd (above).

(4) Where the design is a common article, there is no infringement if there exist minor differences between the two designs: Risis Pte Ltd v Polar Gems Pte Ltd & Ors (above); Essen System Builders (above).

(5) Where there is a 'striking feature' in the registered design, and this feature is absent from the defendant's design or has been altered such that it is not recognised, it is impossible to say that one is an imitation of the other: Sebel Furniture Ltd (above).

The following acts would not infringe:

(1) an act done for a private non-commercial purpose or for the purpose of evaluation, analysis, research or teaching;

(2) a reproduction of any feature of a design which is

(a) a method or principle of construction; or

(b) feature of shape or configuration of an article which

(i) is dictated solely by the function which the article has to perform;

(ii) is dependent upon the appearance of another article of which the article is intended by the designer to form an integral part; or

(iii) enables the article to be connected to, or placed in, around or against, another article so that either article may perform its function.

Further, the Act allows parallel imports, stating that

"The right in a registered design is not infringed by the import, sale, hire, or offer or exposure for sale or hire of any article to which the design has been applied, or which has been placed on the market, whether in Singapore or elsewhere, by or with the consent (conditional or otherwise) of the registered owner."

Tan Tee Jim, SC
Allen & Gledhill

When IPOS was converted into a statutory board on 1 April 2001, it entered a new phase in its evolution. Its conversion into a statutory board in the new millennium was timely, as Singapore had now also evolved into a knowledge economy where ideas and innovations have become the key drivers.

IPOS has as its mission "to provide the infrastructure, platform and environment for the greater creation, protection and exploitation of intellectual property". With the over-arching responsibility of the promotion and protection of our nation's IP, IPOS undertook new responsibilities in developing the nation's IP capabilities, in providing platforms and services for the IP community and in driving public awareness programmes encouraging respect of IPRs.

With IP fast becoming a critical resource in today's new economy, IPOS' vision is to foster a creative Singapore where ideas and intellectual efforts are valued, developed and exploited. In its drive to achieve its goals, IPOS adopts a multi-partner approach, seeking the collaboration of partner agencies and associations.

In education

With our partners we have set about the task of establishing education programmes under the umbrella of the IP Education and Resource Centre (iperc) to foster and support a vibrant IP services industry in Singapore and an innovative IP savvy society where intellectual property is an asset to be nurtured, valued and cultivated for the nation's wealth.

iperc houses the IP library holding information materials on aspects of intellectual property law, technology transfer, innovation and unfair competition. We hope this comprehensive collection can provide a font of knowledge that can be leveraged on by the emerging IP services industry. Visitors may access iperc's collection of current periodicals, reference collection, manuals and audio-visual collection relating to all matters of intellectual property.

iperc runs a number of education programmes, such as IP clinics for the public, roundtables for the professionals, workshops and seminars at its training unit on the 6th floor.

Come visit us at #06-01 Plaza by the Park. Opening hours are from 9.00am to 5.00pm (Mondays to Fridays), 9.00am - 1.00pm (Saturday and eve of public holidays). Check out IPOS' calendar of events for upcoming activities at www.ipos.gov.sg.

A Special Project by IPOS - www.surfip.gov.sg

SurfIP, an award-winning portal, is a special project initiated by IPOS providing a comprehensive suite of IP related services for both the businesses and the IP professionals. Developed with the 3-M methodology (Mine, Manage, Market), SurfIP provides you with the mining capabilities to research into the vast information on IP, the online functionalities to better manage your IP portfolio and the global marketing platform for you to reach to the right audience.

SurfIP Defined:

SurfIP Research /sûrfip rsûrch/ n. [U] A dynamic engine that searches and aggregates results from over: 90 informational databases around the world, designed to better facilitate your research and development activities at the inception stage: mine n.[U]

SurfIP Services /sûrfip sûrvs/ n [pl] [C] A comprehensive suite of services that include access to SurfIP's IP directory, IP news and articles, SurfIP's panel of advisors, specific IP activities monitoring facilities, multilingual translation tools and online IP portfolio management: manage n. [C]

SurfIP Marketplace /sûrfip märkt-pls/ n. [U] 1 An automated online platform to facilitate IP related transactions for IP owners to licence, exploit and commercialize their IPs. 2 Positioned as the IP gateway to the world, SurfIP Marketplace equips your business with the necessary tools to reach out to the targeted audience in the regional markets and beyond: market n.[U]

Rose Hanna Ramli
Intellectual Property Office of Singapore

Polo Player trade mark opposition
(Editor’s Note: This article was previously published by the International Law Office's online Legal Newsletter on 4 February 2002.)

The Singapore High Court recently dismissed an appeal filed by The Polo/Lauren Company L.P. against the decision of the Singapore Registrar of Trade Marks in allowing the registration by the United States Polo Association of its device mark consisting of a polo player on horseback swinging his club at a ball on the ground together with the words “USPA”, for clothings.

The Polo/Lauren Company L.P. in relying on its existing registrations of its polo player device mark which consisted of a polo player on horseback holding his club on the upswing argued that members of the public would be confused between the 2 polo player device marks. The United States Polo Association disputed the allegation of public confusion claiming that the respective polo player device marks were sufficiently different and sought to also rely on the letters “USPA” which accompanied its polo player device mark.

The High Court agreed that there were enough differences between the respective polo player device marks and that the presence of the letters “USPA” removed the likelihood of confusion. The court also noted that there had been no evidence of consumers being confused despite the fact that both marks had been in the market for a number of years.

P Sivakumar
Ella Cheong & G Mirandah

Trade mark owners alert!

Did you blow your nose on a KLEENEX while you walked to the XEROX machine? If you did, chances are that you did not use products belonging to the trademark owners of these brands, but that you used Watsons tissue paper and a Canon photocopier. These are examples of trademarks which have become generic in usage.

The latest to join the ranks of the generic seems to be the WALKMAN. The INTA bulletin, vol. 57 No. 15, reports that the Austrian Supreme Court has ruled that the term WALKMAN has been transformed into an everyday common term or transactional designation from the view of the public. After an 8 year court battle between the Sony Corporation and the Austrian retailer Timetron, in which Sony sued Timetron for describing portable cassette players made by other companies as "walkman" in one of its sales catalogues, the Court found that "walkman" had become a common term in the German language for portable cassette recorders. The term "walkman" appeared in one of the leading German dictionaries and the Court's reasoning for its ruling was that Sony did not take any steps to prevent or correct the entry, and furthermore, the electronics industry had no alternative description for the product.

Trademark owners, take note that the onus is upon you to object vehemently against the inclusion of your trademark in a dictionary, or risk losing your rights!

Ang Su-Lin
Harry Elias Partnership

IP legislation update

The aim of this contribution is not to provide a comprehensive listing of all IP legislative enactments this year. In particular, there have been many changes and new enactments in relation to patents law and procedure, all of which cannot be covered in a short article. This note serves only to feature and summarise some of the main IP legislative provisions coming into force from January to July this year which are likely to have the most impact on practitioners and users of IP law.

Patents (Amendment) Act 2001

While most provisions of the Patents (Amendment) Act 2001 came into force on 17 October 2001, two provisions became effective only this year.

I shall only comment on the first (the second being a clarifying amendment), which provides for the repeal and re-enactment of Part XIX of the Patents Act in relation to Patent Agents, which came into force on 2 January 2002. Part XIX comprises 2 sections:

Patents (Patent Agents) Rules 2001

The Patents (Patent Agents) Rules 2001 came into operation from 2 January 2002 and sets out detailed rules in three main categories:

(1) Registration of patent agents and practising certificates, including qualifying criteria and conditions for registration;

(2) Disciplinary proceedings, including appointment of the Disciplinary Committee, the grounds on which complaints may be made against registered patent agents and procedure by which such complaints may be initiated, heard and resolved; and

(3) Transitional provisions.

Under Rule 6, an individual is entitled to be registered as a patent agent if he -

(a) is resident in Singapore;

(b) holds a university degree or equivalent qualification approved by the Registrar;

(c) has passed the course specified in Part I of the Third Schedule, being the Graduate Certificate in Intellectual Property Law course conducted by the Faculty of Law, National University of Singapore (but see Rule 8(a) below);

(d) has passed the examination specified in Part II of the Third Schedule, being the Patent Agents Qualifying Examinations conducted by the Registrar comprising Papers A to D (but see Rule 8(b) below; and

(e) has completed internship in patent agency work under the supervision of a registered patent agent, or an individual registered as a patent agent or its equivalent in a country or territory, or by a patent office, specified in the Fourth Schedule, for -

(i) a continuous period of at least 12 months; or

(ii) a total period of at least 12 months within a continuous period of 24 months (but see Rule 8(c) below).

Rule 7 sets out the required documents and information for registration, including 2 certificates of good character. It also provides that the Registrar may require further evidence or information or impose further conditions for registration.

Rule 8 provides that the Registrar may, upon the written request of an applicant for registration, register the applicant as a patent agent -

(a) notwithstanding Rule 6 (c) if he is satisfied that the applicant is sufficiently proficient in the law of intellectual property;

(b) notwithstanding Rule 6 (d) if he is satisfied that the applicant is sufficiently proficient in the law of patents and has the necessary knowledge and practical experience to carry out patent agency work; and

(c) notwithstanding Rule 6 (e) if he is satisfied that the applicant has the necessary knowledge and practical experience to carry out patent agency work, gained from carrying out such work under the supervision of a registered patent agent, or an individual registered as a patent agent or its equivalent in a country or territory, or by a patent office, specified in the Fourth Schedule.

Trade Marks (Amendment) Rules 2001

(i) Rule 15(1) (application for registration - Form TM 4);

(ii) Rule 22(2) & 44(1) (amendment of application or particulars - Form TM 26);

(iii) Rule 24(2A) (applications for extension of time - Form TM 49);

(iv) Rule 49 (application for renewal of registration - Form TM 19).

Secondly, Rule 13 amends Part II of the Third Schedule by deleting Class 42 of the Classification of Goods and Services and substituting the following new classes:

Class 42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

Class 43 Services for providing food and drink; temporary accommodation.

Class 44 Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45 Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.

Wilson Wong
Allen & Gledhill

Intellectual Property Licensing Basic Training Course
LES (Singapore) is planning to run its first Intellectual Property Licensing Basic Training Course in February 2003. The course is aimed at being practical and will consist of 5 modules covering the basics of Intellectual Property and licensing, licensing assessment and strategies (including valuation of IP), dealmaking and post-deal making techniques and pointers. The course will focus on a "hands-on" approach, with participants working on case studies guided by trainers, culminating in a role-play negotiation on the final day. Look out for further information.

LES Korea's International IP conference
Seoul, 12-14 October 2002

Upcoming LESI meetings
2003 - Oslo 15-23 June 2003
2004 - Cairo 9-14 May 2004