President's Report

Dear fellow members,

Six months have passed since I assumed office as President and it has been a whirlwind period of packed activity. First, I am glad to inform the Society that our membership has increased to more than 80 members over the last few months. On a personal note, I wish to thank Alex and Rosa for showing me the ropes in these first few months after taking over the baton. At this juncture, I wish to introduce to you once again the current Executive Committee of LES Singapore:-
 

We had an excellent turnout at our first networking session held at Brewerkz on 17 August 2007. Many thanks to the gang from A-star and Exploit who turned up in full force and drank some of us under the table. We all made some new friends that evening.

Thereafter we conducted the Basic Licensing Course at York Hotel on 18 to 19 October 2007. I cannot thank the various trainers enough for having put in their time for the course. Edward rightly suggested that the participants adjourn to Mezza9 for drinks after the course was concluded. Edward, thanks for introducing the lychee martini to us there!

Turning to a more elegant networking event, we recently had a wine appreciation networking session on 12 December 2007 at Cornerstone, where the participants sampled 8 different excellent wines with fine food.

Recently, Wilson and I hosted lunch for Tim Jones, the President of LES (Western Australia) who was in Singapore for a visit.

The new year will see a couple of new exciting events. The LESI Winter meeting will take place in Tokyo Japan from 25 to 28 January 2008.

LES Singapore will also be supporting BioLicensing Asia at Suntec City which promises to deliver some interesting content in April 2008. Look out for the e-mail blast on this event.

We will likely have another final networking event before we meet at the AGM in May next year.

Finally I wish to thank Wilson for his article contributed with this newsletter. It’s an interesting read in the midst of our feasting on turkey, sharing presents and celebrations. Here’s wishing all the members of our Society a Merry Christmas and a Joyous New Year ahead. Talk to you all real soon.


Warmest wishes

Daniel Koh
President, LES Singapore 2007/2008
 

Court explains bad faith and corroborative evidence

The jurisprudence in Singapore in the area of intellectual property continues to develop and expand, even as awareness of the importance of intellectual property and corresponding recognition of the need to protect and manage intellectual property assets continues to grow in the business community.

What is significant is a corresponding growing maturity in intellectual property laws, where sound, well-reasoned judgments are contributing to the domain knowledge and interpretation of intellectual property laws in Singapore. In this article, we look at developments in 2 areas in trade mark and patent law.


Bad Faith in Trade Mark Disputes

One of the more interesting developments in trade marks law this year in Singapore is the ground of bad faith in trade mark disputes.

Under Section 7(6) Trade Marks Act, a trade mark may be opposed on the ground that the application is made in bad faith. This is generally regarded as conduct that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular commercial area under consideration. Recently, there have been a series of cases that clarified the extent of bad faith, starting with Rothmans of Pall Mall Limited v Maycolson International Ltd [2006] 2 SLR 551. The Rothmans case endorsed the principle that an application may be refused on the ground of bad faith even if the trade marks are not confusingly similar. The court in that case found that in order to uphold the sanctity of the trade marks register, an applicant has a positive duty to investigate into the bona fides of a mark before seeking registration. It encompasses conduct which could be morally but not legally reprehensible or in breach of the law. Hence, if the circumstances justified leading a reasonable person to harbour suspicions as to the proprietorship of the trade mark, then further inquiries should be made. This appears now to be the settled position in Singapore.

These principles were subsequently applied in Nautical Concept Pte Ltd v Jeffery Mark Richard and Another [2006] SGHC 239. This time, the High Court had to consider whether the Assistant Principal Registrar refusal of the appellant’s registration of the mark “JWEST” in Class 25 in respect of “shoes, boots, slippers, sandals, sports shoes, sports boots, gymnastic shoes, athletics shoes, sneakers, shoes and boots for walking and climbing; socks, stockings and soles for footwear” was correctly made. The respondent were the registered owners of the mark “Jeffrey-West” in Class 25 covering “articles of clothing, footwear and headgear”, who had opposed the JWEST trade mark..

Whilst the court found that the marks were not confusingly similar, the court also found that the application was made in bad faith and dismissed the appeal. Although the two marks were not immediately identical, the court took into account various factors, namely that the appellant had full prior knowledge of the existence of the respondent; the appellant’s previous attempts to register other similar marks without permission of the respondent, and the fanciful accounts of how the JWEST name was conceptualized. The failure by the appellant to disclose that he had previously worked for the Singapore licensee of the respondent and his direct involvement in importing the respondent’s products into Singapore were also taken in account against the appellant.

In Weir Warman v Research & Development Pty Ltd [2007] 2 SLR 1073, the court had to consider whether the defendant had any general duty to disclose the contractual relationship between the defendant and the plaintiff to the Registrar of Trade Marks Plaintiff. The court found that imposing a general duty to make full disclosure would be unrealistic and contrary to commercial practice, since that would create uncertainty as to the information that should be disclosed on registration. In other words, the ground of bad faith did not extent so far as to include a general duty of full disclosure. On the facts of the matter, the court found that defendants had equal right to seek registration of the disputed mark as the plaintiff arising from their previous contractual relationship and there was no bad faith. Neither was there was any additional duty to disclose since the defendant was justifiably entitled to seek the application of the trade mark.

These cases demonstrate that the ground of bad faith should be fully explored in determining the strategy to oppose or revoke a trade mark application or registration. The court’s approach in these cases seems to reflect recognition that some measure of reasonable fairplay and honest standards should be expected of parties in commercial relationships.


Assessing Oral Evidence Of Prior Use in Patent Proceedings

The recent case of Main Line Corporate Holdings v UOB & First Currency Choice [2006] SGHC 233 concerning infringement of a patent for a point-of-sale currency-conversion system threw up interesting issues concerning the weight to be attached to oral evidence from interested third parties.

The plaintiff sued a local bank for infringing its patent for a system for automatic currency conversion for credit, debit or charge card payment at the point of sale between a merchant and the card holder, without the need for manual selection or intervention to determine the card’s operating currency. The bank had obtained the system from the 2nd Defendant, which was added as a party to the action.

Apart from disputing infringement, the defendants challenged the validity of the patent on the ground of lack of novelty and inventive step. Particularly, they cited alleged instances of prior use made by third parties to invalidate the patent. Evidence of these alleged prior use was adduced by oral evidence.

The court sensibly approached the oral evidence concerning alleged prior user with caution and relied on the case of of Woodland Trust v Flowertree Nursery Inc 148 F 3d 1363 (Fed Cit, 1998), a US Court of Appeals Federal Circuit case. In that case, the court found that there is a very heavy burden to be met by a party challenging validity where the only evidence is the oral testimony of interested persons and their friends, particularly as to long-past events. Corroboration of oral evidence of prior invention is the general rule and in assessing corroboration, the following criteria should be followed, namely, (a) relationship between the corroborating witness and the alleged prior user, (b) time period between the event and trial; (c) the interest of the corroborating witness in the subject matter in suit; (d) contradiction or impeachment of the witness’ testimony; (e) extent and details of the corroborating testimony, (f) witness’ familiarity with the subject matter of the patented invention and the prior use, (g) probability that a prior use could occur considering the state of the art at the time; and (h) impact of the invention on the industry, and the commercial value of its practice.

The court noted that Judge Fysh QC. in Kavanagh Balloons Pty Ltd v Cameron Balloons Ltd [2004] RPC 5 had agreed that the Woodland Trust criteria provided good, practical guidance when it comes to assessing the value of evidence of prior user in patent cases. The court also echoed Fysh QC in requiring that such evidence be “clear and satisfactory”. The court went on to find that the evidence of prior user was not clear or satisfactory, expressing doubts that the instances of prior user had in fact occurred.

Whilst the reasoning of the court is sensible, especially since the competing commercial interests at stake in patent cases requires the court to view claims of prior use carefully, the standard of proof required may seem daunting or prohibitive in practice. Aside from having to show that the oral evidence is credible, free from bias, clear and satisfactory, the standard of the corroborative evidence is pitched at a high level. In another recent case Aia Co Ltd v Mariwu Industrial Co [2007] SGHC 51, the court similarly dismissed the defendant’s claims of anticipation, which was based on certain admissions made of prior user, finding that the prior use was not sufficiently proved. This case and the Main Line case are reflective of the challenging task that a defendant in patent litigation should expect to face. At the time of writing, the Main Line case is pending a decision of the Court of Appeal.


Winnie Tham & Jason Chan
Directors, Amica Law LLC