SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
identifies a copyright work, the copyright owner and/ or the terms and conditions of use of that work. The knowing and unauthorised removal or alteration of RMI, and the commercial dealing in infringing copies of the relevant works, are prohibited. 7.3 Factors in Determining Infringement Trade Mark Infringement To establish infringement, the courts take a step-by- step approach. • First, the parties’ marks must be identical or similar. The assessment is mark-for-mark, having regard to the distinctive and dominant components of each mark. Marks are compared for visual, aural and conceptual identity/similarity. • Second, the parties’ goods/services must be iden - tical or similar. • The final step is to determine whether there is a likelihood of confusion giving rise to infringement. Copyright Infringement To establish primary copyright infringement, first the infringing act must have been done in Singapore. Second, the defendant must have copied, directly or indirectly, the copyright work. Third, there must have been unauthorised taking of the whole or a substantial part of the work. To establish authorising infringement, first there must be an underlying primary infringement. Second, the defendant must have authorised that infringement. As regards secondary infringement, in addition to there being an unauthorised importation or distribu - tion of an infringing article for commercial dealing, the claimant must prove that the defendant knew or ought to have known that the article was infringing. 7.4 Prerequisites and Restrictions to Filing a Lawsuit It is common for rights-holders to issue cease-and- desist letters prior to commencing action. Rights- holders must be mindful of the risks of liability for groundless threats of infringement proceedings under the relevant intellectual property legislation.
Before filing a suit, it is a requirement under the Rules of Court 2021 that the rights-holder make an offer of amicable resolution unless there are reasonable grounds not to do so. The offer must be in writing and must generally be open for at least 14 days. Failure to make the offer may result in the court disallowing or reducing a successful party’s costs or ordering that party to pay costs. 7.5 Lawsuit Procedure Both trade mark and copyright infringement proceed - ings are heard by the General Division of the High Court at first instance. An appeal against the Gen - eral Division’s decision may be made to the Appellate Division of the High Court. Leave of court must be obtained for any further appeal to the Court of Appeal. Any person who is not a minor, not disabled and does not lack mental capacity may carry on proceedings in person and without legal representation. A company must engage legal representation unless the court gives permission for a company officer to act on its behalf. Intellectual property rights are territorial. Foreign rights-holders may bring infringement claims in Singa - pore so long as they rely on their rights in Singapore. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants Where a person has made threats of trade mark or copyright infringement proceedings, an aggrieved person may apply to the court for: • a declaration that the threats are unjustifiable; • an injunction against continuing threats; and • damages for losses arising from such threats. 7.7 Small Claims All trade mark infringement and copyright infringement claims must be brought in the General Division of the High Court. To facilitate access to the court system, a simplified process for intellectual property claims was implemented in April 2022, which prioritises efficiency and cost-effectiveness. Under this process, there are limits to the monetary relief and recoverable costs.
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