Intellectual Property Protection Guide

1. Introduction

This Guide is intended to serve as a primer for the designer, the inventor and the entrepreneur on the protection of new ideas and the products that arise from such ideas. Like all publications of this kind, the Guide is not intended as a substitute for the advice of a lawyer on the complexities of intellectual property law.

This Guide is designed to help the designer or the inventor decide which, if any, type of protection is available for a particular design or idea, and whether such protection is worth obtaining. Protecting a new design or idea is often a difficult process. Some designs, ideas and inventions simply cannot be protected, while others are eligible for only narrow or partial immunity from potential competition and imitation. Obtaining even minimal protection can often be expensive and time-consuming, and the ultimate result may be uncertain or even disadvantageous to the designer or inventor.

2. Intellectual Property Rights

Intellectual Property Rights can be divided into:

(a) Copyright

Copyright is the legal exclusive right of the author of a creative work to control the use and exploitation of that work. Original creative works and computer software are protected by copyright. The law of copyright in Singapore is governed by the Copyright Act.

There is no formal registration requirement or any requirement for the work to be marked with a copyright claim in order to secure copyright protection in Singapore. It is worth noting, however, that copyright does not protect an idea, only the expression of the idea. Thus, in order for copyright to subsist in a particular work, it must first be reduced into writing or some other material form.

Copyright protection for published works exists during the life of the author plus 50 years after his death. For works that were only published after the death of the author, it exists for 50 years after first publication.

Generally, a copyright work created by a Singapore citizen or resident is protected overseas through international conventions and agreements signed by Singapore. Member countries are usually required to grant uniform protection for copyright works as laid down in these conventions/agreements. The protection of a work by a Singapore resident would be as though the work was made by those countries’ residents. The protection in most countries is also automatic in that there is no need to register in order to be conferred protection. Singapore is a signatory to the Berne Convention and the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights). There are 151 countries under the Berne Convention.

If an artistic work (such as a drawing or a sculpture) has been applied into a design for a product (like a furniture) with the consent of the original artist, and 50 or more copies have been made, then the work cannot be protected under copyright. However, if a shape, configuration, pattern or ornamental design is novel, it can be protected as a Registered Design under the Registered Designs Act.

(b) Trademark

Trademark is the exclusive right to use a mark or sign that consumers identify with a product or service. Trademarks are words, names, symbols, or devices used by manufacturers of goods and providers of services to identify their goods and services, and to distinguish their goods and services from goods manufactured and sold by others.

Trademarks are protected in Singapore (i) under the common law tort of passing-off and (ii) under the registration system provided by the Trademarks Act. Protection under the Trademark Act is generally easier. For registration under the Act, a trademark must be a visually perceptible sign capable of being represented graphically and must be distinctive. In Singapore, sounds and smells therefore, cannot be trademarked. The trademark is registered for classes of goods or services that must be specified in detail.

From the date of application, protection for a registered trademark can last indefinitely subject to the payment of renewal fees every 10 years.

Trademark protection is territorial in nature. A separate registration will have to be made in each of the countries where protection is desired. To obtain protection outside Singapore, it is necessary to file applications in the countries concerned either individually or via the Madrid Protocol. Under the Madrid Protocol, the applicant has to first register the trademark in his home country. Then in his international application, he designates the country or countries in which he wishes to seek protection for his trademark. The fees payable are dependant on the number of countries designated.

(c) Patents

Patents are the most important form of protection for scientific and technological inventions.

Patent protection is under the Patents Act and confers on the patent holder full monopoly for the exploitation of his invention. In return the patent holder has to fully disclose his invention. The information disclosed can then be used for further research and development.

Patents may be granted for products (“Product Patents”) and processes (“Process Patents”). In order for a subject matter to be protected by a patent, it (a) must be new; (b) must involve an inventive step; and (c) must be capable of industrial application. The first-to-file anywhere-in-the-world regime applies.

Where an invention has to be disclosed before an application for a patent is filed, ensure that such disclosure is made in confidence by having confidentiality agreements in place.

The invention must be something that represents a significant and essential advance over the prior art (ie existing technology). It must be something that is not obvious to a person skilled in that art/technology having regard to the prior art/technology. The invention must be one that is capable of being made or used in any kind of industry. It must not merely be a good idea, but must be a product that can be made or must be a process for making a product or result. The term of a patent is 20 years from the date of filing. Annual renewal fees are payable starting from the end of 4th year from the date of filing, and for every subsequent year thereafter, until the patent expires.

Patent protection is territorial in nature. A separate registration will have to be made in each of the countries where protection is desired. You can also file an international application under the Patent Co-orperation Treaty (PCT). The PCT process is complex and will be discussed elsewhere.

While it is not mandatory to file a patent application in Singapore before filing patents for the same invention overseas, Section 34 of the Patents Act states that all residents in Singapore are required to obtain a written authority of the Registrar of Patents before they file or cause to be filed outside Singapore an application for the same invention. The only exception to this is when a patent application that has been filed in Singapore for more than 2 months and there is no further direction from the Registrar under Section 33 of the Patent Act. Contravention of Section 34 is a criminal offence.

(d) Registered Designs

Industrial Designs can be registered in Singapore under the Registered Designs Act. It protects new designs with an appeal to the eye that are to be used as models for the production of articles, ie capable of industrial process. The visual appearance of the articles must not be due to its function or dictated by other articles. By registering a design, the owner has the right to prevent others from using the design without his permission. The design registration system in Singapore operates on a first-to-file basis. In other words, the first person to file for application will, in general, have priority over others. Registration of designs in Singapore requires one to classify the article or articles to which the design is applied. Hence the design owner has to state the classes of the articles on which the design is to be applied.

A Registered Design can last for an initial period of 5 years. Thereafter, the registration may be renewed every 5 years up to a maximum of 15 years, subject to the payment of renewal fees.

Generally, industrial design protection is limited to the country in which protection is granted. Separate registrations will have to be made in each of the countries where protection is desired. Under the Hague Agreement Concerning the International Deposit of Industrial Designs, a procedure for an international registration is offered. An applicant can file a single international deposit either with WIPO or the national office of a country which is party to the treaty. The design will then be protected in as many member countries of the treaty as the applicant wishes.

Singapore became a signatory to this Convention in 2005.

(e) Confidential Information

This protects all manner of information valuable to its owner if it has been kept secret by the owner and is not generally known to the public. The requirements for confidential information protection are that the information must not generally be known, its owner must gain an economic advantage from the information, and its owner must take steps to preserve the confidential nature of the information.

It can be used to protect commercial/business information (such as customer lists and business methods) and technical/industrial information (such as technological advances and valuable scientific and technological know-how). Ideas per se can be protected as confidential information. Inventions and processes that are not patentable can also be protected under this.

The law of confidential information in Singapore is not codified but is based on the English common law. It prevents an unauthorised person from using the confidential information.

The extent of protection for confidential information is often dependant on what the courts view as reasonable. It can even be indefinite. Often contracts are used to ensure that parties keep confidential information disclosed to them. Again, the enforceability of such contracts depends on the law in each country where protection is sought.

3. Protection Strategies

(a) Copyright

To prove that they are the author of a creative work and when the work was created, authors have resorted to the following:-

  • deposited a copy of their work with their solicitors;
  • sent a copy of their work to themselves by special delivery, leaving the envelope unopened on its return so that the date stamp and the unopened work could establish the date of existence and the work as it existed at the relevant time; or
  • made a declaration stating the facts of ownership and the date of creation before a Commissioner of Oaths.

These are not foolproof methods of proving authorship as they do not prove that the work is original or created by the author. In a dispute, the Court will still have to decide whether there is sufficient evidence to prove the authorship. It is important to maintain an archive of works created, preferably with two copies (one copy if a second copy can be easily reproduced from one copy) of each version of a work. This is so that they can be later used to aid an infringement investigation. The original and each version should be retained in these archives as long as you intend to commercially exploit the work. This could also include works derived from an original work.

Although not mandatory, in order to best preserve the copyright in a work, all publicly distributed copies of the work should have a copyright notice affixed to them. The notice should include the familiar © symbol (or the word “copyright”), the year of first publication, and the name of the owner of the copyright. Thus, a sufficient copyright notice might be: © 2003 Ong Tay & Partners.

Any reproduction of copyright materials without the prior permission of the copyright owner is an infringement, and the mere acknowledgement of the source is not sufficient to constitute the permission of the copyright owner. Intentional or not, it is still an infringement.

It is not necessary to have reproduced the whole copy before it is considered infringing. It is infringing as long as a substantial amount has been copied.

In a dispute, a substantial amount is not measured merely in terms of the quantity that has been copied. The Court also takes into account the nature of the portion that has been copied or reproduced. If the portion copied constitutes the primary part or essence of the copyright material, the Court may construe that a substantial amount has been copied.

Copyright is also infringed if a person:

  • imports for sale, sells or distributes for trade, infringing copies without permission from the copyright owner;
  • falsely attributes the authorship of a work; or
  • falsely removes or alters the rights management information electronically attached to a work. Rights management information is an electronic tag containing information identifying the author of a work, and the terms and conditions relating to the use of the work.

(b) Trademark

The entire purpose of a trademark is to serve as a unique indicator of the origin of a product or service. Thus, members of the public will come to associate a particular trademark with a particular manufacturer of a product and will ask for the product by that particular name, thus giving the trademark great commercial importance. Therefore, when choosing a trademark, one should try to select a name that will lend itself to the task of serving as a unique identifier of a particular manufacturer in a competitive marketplace.

Proper trademark use requires that the mark be placed on the goods directly, or their containers, or displays associated with the goods, or tags or labels that are affixed to the goods. If the mark is used in association with services, the mark must be used or displayed in association with the sale or advertising of the service.

As long as a trademark is being used properly, the trademark rights will last indefinitely, and any registration of the trademark may be renewed indefinitely. Proper use of a trademark requires that it always be used as an adjective, and never as a noun. For example, the word “zipper” was once a registered trademark and denoted a particular type of fastener. Proper use of that trademark would have been to always refer to the fastener as the “zipper fastener” and never simply as a “zipper.” Since this trademark was used improperly as a noun referring to the fastener itself, the word “zipper” lost its trademark status and simply became the “generic” word identifying a product, thereby giving anyone the right to use the word “zipper.”

Although not strictly necessary, when using registered trademarks it is desirable to emphasise that they are registered trademarks by using the TM symbol. The owner should also take reasonable steps to inform the public that the trademark is associated with his goods or services. This is usually done by advertisement in the newspapers. A trademark can be infringed even if the infringer is not using an identical mark. Trademark infringement occurs when another trademark is confusingly similar to the original trademark. Whether the two trademarks are confusingly similar depends on a number of factors, including:

  • The existence of actual confusion in the marketplace between the trademarks;
  • Similarity of the appearance, sound and meaning of the trademarks;
  • Similarity of the goods and services being identified by the trademarks;
  • The degree of secondary meaning acquired by the trademarks;
  • The sophistication of the consumers who buy your products or services (ie. not a moron shopping in a hurry);
  • The similarity of the channels of distribution of the products or services (that is, are they both sold in the same types of stores);
  • The degree of commercial competition between the two trademark users; and
  • The distinctiveness of the trademarks (that is, are they somewhat descriptive or are they arbitrary and fanciful).

Once a trademark owner determines that someone else is potentially infringing his or her trademark, the trademark owner must bear the expense of remedying the situation. Frequently, a simple letter to the infringer requesting that they cease use of the mark is sufficient. However, if the infringing party is not cooperative, the dispute is likely to end up in court. Failure to enforce such rights once the trademark owner knows of the infringement may be taken to mean an acquiesce to the acts of the infringer.

In addition to preventing others from using a confusingly similar mark within Singapore, the owner of a registered trademark may also utilise the Singapore Customs to prevent products bearing confusingly similar trademarks from being imported into Singapore.

(c) Patent

Once the owner had taken reasonable steps to publicise his patent, usually by advertisement, use of the invention without the owner’s consent is an infringement of the patent owner’s rights. This is irrespective of whether the infringer knew or did not know of the patent.

Public disclosure of your invention may destroy the novelty of your invention. An invention that is not new or novel is not a patentable invention. Thus any disclosure prior to the patent application must be made under a duty of confidentiality, either implied by law or under a contract.

(d) Registered Industrial Designs

Infringement occurs when there is a clear use of a Registered Design without the consent of its registered owner. Once a registered owner discovers that his design has been infringed, he can enforce his rights as conferred by the Registered Designs Act. He can take legal action against the infringing party, seek relief in the form of an injunction, demand for the profits gained by the infringing party at his expense and/or seek damages for the loss suffered.

If an artistic work (such as a drawing or a sculpture) has been applied into a design for a product (like a furniture) with the consent of the original artist, and 50 or more copies have been made, then the work cannot be protected under copyright. To be protected, it must be registered as a Registered Industrial Design under the Registered Designs Act.

(e) Confidential Information

Implementing internal and external safeguards to maintain the confidentiality of confidential and proprietary information is of critical importance. Instituting a comprehensive employee program, placing special protective notices and legends on materials which indicate that such materials contain confidential and proprietary information, maintaining physical security measures, and placing appropriate nondisclosure provisions in agreements with third parties are some of these internal and external safeguards.

There are a multitude of internal procedures that a company can adopt to enhance its claim that it is reasonably protecting its confidential information and to demonstrate its intention to keep its confidential and proprietary information confidential. Establishing an employee program to protect confidential information is the most important internal procedure. Such a program includes the following:

  • Requiring all salaried employees to sign written non-disclosure agreements as a condition of their hiring, and
  • Similarly requiring all hourly employees to sign statements reciting the company’s policies with respect to its confidential and proprietary information.

The employee program should also include placing notices of the company’s policies with respect to its confidential and proprietary information prominently on bulletin boards and other areas in which employees would be likely to see them (e.g., the company lunchroom), and disseminating memoranda to employees on an annual basis to remind them of company policies. Finally, a company’s employee program should include the performance of exit interviews when employees leave the company’s employment. During these exit interviews, the employee should be reminded of the company’s policies with regard to its confidential and proprietary information.

In addition to the employee program, there should be a reasonable level of physical security at company offices to physically safeguard its confidential and proprietary information. Some common physical security measures that should seriously be considered include:

  • Keeping all confidential and proprietary information under lock and key (or, if “on-line,” subject to computer security measures to prevent unauthorized access) and restricting access to such information to only those employees who need access to perform their respective jobs;
  • Restricting access to certain parts of company offices to authorized personnel only;
  • Maintaining a register to be signed by all visitors;
  • Requiring that visitors be escorted;
  • Requiring approval of a corporate officer for any office tours and restricting the scope of such tours; and
  • Requiring all employees and visitors to wear distinguishing badges, especially to gain access to restricted areas.

In addition to internal procedures to maintain the secrecy of all confidential and proprietary information, there should also be certain external procedures that will reasonably protect information outside the company. The single most important external procedure that must be adopted is the insertion of non-disclosure provisions in all agreements under which confidential and proprietary information may be disclosed. Without non-disclosure provisions in all agreements with “outsiders” (any non-employees), any information that is disclosed to outsiders could become public domain information free from any confidentiality obligation, thus causing complete loss of the protection with regard to such information. Also, any confidential and proprietary information disclosed to an outsider should contain a protective statement.

Conclusion

It should be clear from this Guide that protection of intellectual property is a complex area where commercial and legal needs are so intertwined that it will be necessary for clients and lawyers to sit together to discuss a balance of these needs.