SGFI June 27, IP Laws - Trina

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INTRODUCTION TO INTELLECTUAL PROPERTY

27 June 2012



Intellectual Property

Anything valuable that is created from the result of anexercise of the intellect would be within the scope of“Intellectual Property” or “IP”.

Intellectual property rights are monopoly rights conferred asrewards for making intellectual contributions to society.

Intellectual property rights are territorial. There is nointernational intellectual property protection. Mutual

recognition through treaties and conventions.

Intellectual Property Office of Singapore



Branches of Intellectual Property

Rights Conferred by Statute

Copyright

Trade Marks

Patents

Registered Designs

Rights Created under Common Law

Passing Off

Law of Confidence



Copyright



Copyright

Singapore copyright law is governed by the Copyright Act(Chapter 63)

As its name suggests, copyright is a right to prevent thecopying of works or other subject matter

Put another way it is a right to prevent the unauthorisedreproduction by a third party of the tangible form in which aperson has chosen to express his ideas, for example in a book,musical composition, theatre or film script, or acinematograph film

Copyright protects the „form‟ of idea and NOT the idea itself.



Copyright

(a)Originality

(b) Material Form

(c) Must have a separate existence from function

(d) Connecting factor

(e) 2 broad categories of subject matter which are protectedby copyright



Copyright

(e) Different Categories of Works

Author‟s Works

(i) Literary Works(ii) Dramatic Works

(iii) Musical Works

(iv) Artistic Works

Software?

Apps?



Copyright

(e) Different Categories of Works

Subject Matters other than Works / Entrepreneurial Works

(1) Sound recordings;

(2) Cinematograph films;

(3) Television and sound broadcasts; and(4) Published editions of works

No need for originality.

These rights subsist quite independently from any copyright ina work.

Practical result : Multiple copyrights in one work owned bydifferent persons.



Copyright

Rights of Monopoly

The owners of copyright in musical works, dramatic works and literaryworks (and artistic works*) have the exclusive rights, in relation to their works to:

Reproduce their work in material form* - eg. DVD;

Publish their work if the work is not published* - disclosing work tothe world;

Perform their work in public - performance;

Communicate the work to the public* - electronic form;

Make an adaptation of their work;

Do any of the above to an adaptation of their work



Copyright

Duration

For author‟s works, 70 years from the end of the calendar year in which the author dies.

However if the work has not during the author‟s lifetime

been published, publicly performed, broadcast, or sold inthe form of records, 70 years does not start running until theend of the calendar year in which the first of those eventsoccur

For subject matter other than works, 70 years from the endof the calendar year in which the subject matter ispublished.



Copyright

Ownership

Generally whoever creates a “work” owns it.

Therefore the creators of the literary, dramatic, musical or artistic work OWN their works UNLESS

They created their work under a contract ofemployment, or where the work has been otherwiseassigned to another party by agreement



Copyright

Ownership

Generally for a subject matters other than works such as afilm or a game, the person who pays the money tocommission the production of the product, whichincorporates these underlying works, owns the product.

He does not however own the underlying works unless hehas contracted to own it with the creators

Example of the different rights in a computer game.



Copyright

Infringement If any person, without the authority of the copyright owner,does one of the things for which the copyright owner hasthe exclusive right to do, there is direct infringement.

The onus of proving copyright infringement is on the person

who claims copyright and an independent creation, evenif substantially similar or identical, is not an infringement.

It is also a violation of copyright if anyone sells, lets for hire,by way of trade offers or exposes for sale or hire, imports for purposes of sale or trade, any infringing articles which heknows or ought reasonably to know that the making of thearticle constituted an infringement of the copyright residingin that article. This is secondary infringement.



Copyright

Infringement

Infringement can occur without reproduction of the entirecopyright work. It is infringement as long as a substantialamount of the work has been copied.

What is a substantial amount?

Qualitative, not merely quantitative Nature of the portion that has been copied. The

expression of the idea, not the idea itself.

Appropriation of elements or parts which contribute tooriginality are more likely to be qualitatively significant

Does the portion copied constitute the primary part or essence of the work being copied? Does it bring tomind the work being copied?



Law of Confidence

Compare with Copyright. A common law action

Protection of ideas, concepts, information and trade secrets.Not necessary to have been reproduced into a material form.No registration required.

3 essential elements:

The information needs to be confidential, i.e. not in thepublic domain;

The confidential information has been received incircumstances importing an obligation of confidence onthe part of the recipient; and

There needs to have been an unauthorised use of theinformation on the part of the recipient.



Law of Confidence

A Non-disclosure Agreement is very helpful, firstly to identify clearly that the information enclosed

therein is confidential;

secondly to clearly point out that the information is beingdisclosed under conditions of confidentiality; and

thirdly to spell out the conditions of confidentiality.

What if the other party will not sign a non-disclosureagreement?

Processes to maintain confidentiality of trade secrets.



Trade Marks

A trade mark is the means by which a business identifiesgoods or services that are made or provided by thatbusiness; from the goods and services from other businesses

Therefore a trade mark is a way by which customers of abusiness may

learn of its products or services;

recognise its products or services in the congestedmarkets; and

recommend products or services which haveimpressed them; or identify those which havedisappointed them



Trade Marks

A trade mark is a “registered trade mark” in Singapore when itis registered under the Trade Marks Act (Cap. 332).Registration confers certain monopoly rights.

Registration of a trade mark must be distinguished from

registration of the company‟s name at ACRA.Registration of trade marks is administered in Singaporeby the Intellectual Property Office of Singapore („IPOS‟).

obtaining copyright protection over the logo of thecompany. A trade mark is usually attached to goodsand services; whilst copyright must exist in a work whichshall form “separate matter”.



Trade Marks

Under the Trade Marks Act, a “trade mark” means

“any sign capable of being represented graphically andwhich is capable of distinguishing goods or services dealtwith or provided in the course of trade by a person from

goods or services so dealt with or provided by any other person”

“sign” includes any letter, word, name, signature, numeral,device, brand, heading, label, ticket, shape, colour, sound,aspect of packaging or any combination thereof

Besides brands of products or services, titles, names ofcharacters, animated characters can also be registered.



Trade Marks

So when is a trade mark “registrable”?

Section 7 of the Trade Marks Act lists down the “absolutegrounds for refusal of registration” of certain marks

Section 8 of the Act lists down the “relative grounds for refusalof registration”.

The idea is that if a trade mark does not fall within the twosections; it is registrable.



Trade Marks

The scope of a trade mark registration is determined by thegoods or services in relation to which the trade marks isregistered. Under the International Classification of Goods andServices (ICGS), there is a total of 45 classes to register a trademark.

Common classes for the creative industries:

Class 41: entertainment services

Class 9: Software, computer programmes, CD-roms

Class 16: printed material, stationery

Class 25: clothing, footwear, headgear

Class 28: games

Class 38 : telecommunications, internet-related services



Trade Marks

Duration of 10 years, renewable indefinitely.

Registration is territorial.

Registration outside of Singapore: Individual applications in each country where protection is

desired. 6 months priority claim. Madrid Protocol – an international application but in respect

of only a certain number of countries

® indicates that the mark is a registered trade mark and henceprotected under the trade mark law.

™ is just a symbol used to indicate that the mark is being used bythe company as a trade mark. It does not denote that the mark isregistered.



Trade Marks

Registration confers on the owner the right to prevent othersfrom using in Singapore as a trade mark, a mark identical or similar to the mark registered, in respect of identical or similar goods or services.

Well-known marks

Who is the owner of a trade mark?



Trade Marks

A person does not infringe a registered trade mark if such use: Constitutes fair use in comparative commercial advertising or

promotion; is for a non-commercial purpose; or

Is for the purpose of news reporting or news commentary

A person does not infringe a registered trade mark if: he is using his name or the name of his place of business;

he uses a sign to indicate the kind, quality, quantity, intendedpurpose, value or geographical origin or other characteristicof the goods or services; or

he uses the trade mark to indicate the intended purpose of

goods AND such use as stated above must be in accordance with

honest practices in industrial or commercial matters



Trade Marks

What rights do you have if you did not register your trademark?

Common law action in passing off



Patents

A patent is a monopoly right granted to an owner of aninvention to control the use of the invention.

Registration under the Patents Act (Cap. 221)

A patentable invention is one that satisfies all the followingconditions:

(a) the invention is new;

(b) it involves an inventive step; and

(c) it is capable of industrial application



Patents

The invention must be “new”

a patent will be bad for lack of novelty if it has been

anticipated by prior use or publication. This means

anticipation of the whole invention and not just part of it

the test is whether the anticipated product would infringethe invention if it were granted

ignorance of the state of the art is irrelevant



Patents

The invention must be “inventive”

a claim is not inventive if it would appear to be obvious to

a skilled person in the trade who is possessed of the

common general knowledge pertaining to that field

there must be a clearly noticeable distance between thestate of the art and the claimed invention; and this stepmust be significant and essential to the invention



Patents A patent confers on the owner the sole and exclusive right to

exploit the invention for a term of 20 years from the date offiling of patent application. The owner also has the right totake action against any person exploiting his patentedinvention.

Owner may not be the inventor.

Protection is territorial. Registration outside of Singapore:

Individual applications in each country where protection isdesired. 12 months priority claim.

Patent Cooperation Treaty – an international application



Thank You!

No part of this talk may be reproduced without permission of SamuelSeow Law Corporation

No part of this talk shall or is intended to take the place of legalconsultation

Samuel Seow and Trina Ha can be contacted at

Samuel Seow Law Corporation1, Kim Seng Promenade, #15-12, Great World City, Singapore 237994Tel: 6887 3393Fax: 6887 3303

Email: [email protected] / [email protected]

mailto:[email protected]



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SGFI June 27, IP Laws - Trina