SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
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 IP 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 proceedings are heard by the General Division of the High Court at first instance. An appeal against the General 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 repre - sentation. A company must engage legal repre - sentation 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 Singapore 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 implement - ed in April 2022, which prioritises efficiency and cost-effectiveness. Under this process, there are limits to the monetary relief and recoverable costs. 7.8 Effect of Trade Mark and Copyright Office Decisions The Registry of Trade Marks is a low-cost tribu - nal that is subordinate to the courts. The Regis - try is bound by the courts’ decisions and not the other way around. 7.9 Counterfeiting and Bootlegging Counterfeiting Under Trade Mark Law A counterfeit trade mark is a sign which is: • identical with or so nearly resembling of the registered trade mark as to be calculated to deceive; and • applied to goods or services without the proprietor’s consent and to falsely represent those goods/services to be the genuine or actual goods/services of the proprietor or a licensee.
524 CHAMBERS.COM
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