Criminal Enforcement
In the highly publicised and controversial case of SM Holdings Ltd -v- Business Software Alliance ("BSA"), the Court was asked to rule on the legality of 3 search warrants obtained by the BSA for alleged trade mark and copyright infringement by a local CD manufacturer. BSA raided the manufacturer's premises pursuant to 2 search warrants granted under S. 62 of the Criminal Procedure Code ("CPC") for trade mark offences and S. 136(9) of the Copyright Act for copyright offences. These 2 warrants only allow for the seizure of infringing articles but not incriminating documents. In the course of the raid, BSA obtained a third search warrant under S.61 of the CPC to seize documents from the premises. The Chief Justice quashed the third search warrant on the ground that it was issued by a High Court judge instead of a magistrate. A High Court judge has no jurisdiction to issue a warrant for alleged trade mark and copyright infringements. The other 2 warrants were not quashed but the judge ordered the return of all documents seized under all 3 warrants. He also questioned the methods and practice of obtaining and executing search warrants in IP cases. It is expected that guidelines will be issued shortly on the conducting of such raids.
InChallenger Technologies -v- Dennison Transoceanic Corporation, the plaintiff who was allegedly dealing in counterfeit AVERY labels brought an action for malicious prosecution against the defendant after the search warrants obtained by the latter were quashed when the labels were found to be genuine. The Court dismissed the claim for malicious prosecution as there was an absence of malice on the part of the defendant. This was notwithstanding the fact that the Court found that the defendant acted without reasonable and probable cause. Although the defendant had not conducted tests to verify that the goods were genuine, it took action in the honest belief in the defendant's guilt and therefore could not be said to have acted maliciously. The decision has been appealed.
Registered Design Rights
Singapore does not have its own independent design registry. The rights conferred upon the proprietor of a United Kingdom design registration extend automatically to Singapore. In Solite Impex Pte Ltd -v- Ang Lay See, the Court of Appeal in deciding on the validity of a UK design registration, ruled that the publication of a design in Singapore prior to the date of registration in the UK would invalidate the design registration in Singapore for lack of novelty.
Copyright
On the issue of fair dealing, the Court of Appeal in Aztech Systems Pte Ltd -v- Creative Technology Ltd ruled that the defendant could not avail itself of the defence of fair dealing for decompiling the plaintiff's computer software program in its computer sound cards, for use in commercial research. The defence applies only when the work is copied for the purpose of research or private study. It excludes commercial research or private study for commercial purposes.
The fair dealing defence has now been re-defined by the Copyright (Amendment) Bill 1998. It now extends to persons undertaking research whether or not commercial, so long as their dealing with the copyright is fair.
Passing Off
In Pontiac Marina Pte Ltd -v- CDL Hotels International Ltd, the plaintiff, a developer of a shopping/office/hotel complex named MILLENIA, was able to stop the defendant from using the name MILLENNIUM for its hotel chain notwithstanding the fact that the plaintiff's hotel, "Ritz Carlton, Millenia, Singapore", had not actually opened for business at the commencement of the action. The Court of Appeal agreed with the High Court that the extensive pre-trading marketing efforts by the plaintiff created sufficient goodwill and reputation for it to succeed in a passing off action. (The plaintiff spent approximately S$1 million on promotion and advertising). The Court recognised that whilst goodwill is normally acquired by trading, trading activity is not a pre-requisite for goodwill and pre-trading advertising and promotional activity may in some instances be sufficient.
What next?
Both the Copyright and Trade Marks Acts will be amended in 1998 to enable Singapore to give effect to its obligations under TRIPS. It also appears likely that legislation will be passed to allow for Singapore to have its own independent design registry.
Karen Fong-Lupi is an advocate and solicitor admitted in Singapore working in Rouse & Co International's London office.
The content of this article is to provide only a general information on the subject. Legal advice should be sought for any specific circumstances.
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