TRADE MARKS (AMENDMENT) BILL

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TRADE MARKS (AMENDMENT) BILL: Order for Second Reading read.

The Minister for Law (Prof. S Jayakumar): Mr Speaker, Sir, I beg to move, "That the Bill be now read a Second time."

If I may give an overview, Sir, of this Bill and three other Bills in this House today which relate to the protection of intellectual property (IP) rights which my colleague, Senior Minister of State Ho Peng Kee, and I will take through. Let me first make some general observations on these four Bills, before I go into the specific provisions of the Trade Marks (Amendment) Bill.

These four Bills are to support Singapore 's ongoing transition into a knowledge-intensive and IP-rich economy. In recent years, there has been a tremendous growth of IP-rich activities in Singapore : Private and public sector R&D activities continue to bear fruit; the biomedical industry is making

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commendable strides; our companies are investing in branding and going international; and the Government has committed further funds to grow our media industry. As Singapore moves forward towards an IP-rich economy, our IP legislation must likewise move in tandem.

At the same time, the global IP landscape is changing. The standards set by the World Trade Organisation's Agreement on Trade-Related Aspects of Intellectual Property Rights, or TRIPS agreement, have become a minimum standard which businesses and investors expect. We reached the TRIPS standard in 1999. Five years on, it is timely to update our IP legislative framework, to ensure that we meet the needs of the new industries we are grooming, as well as remain competitive in this fast changing IP landscape.

Several amendments in the Bills are also connected with our obligations under the US-Singapore Free Trade Agreement (USSFTA). When we started FTA talks with the United States in late 2000, we decided to carry out an extensive review of our IP legislation in conjunction with those talks. It gave us an opportunity to study the key features of the US IP framework, and to examine which are the ones relevant to us.

But while we aspire to higher standards, we also need to be mindful that Singapore companies are at different stages of development. The concerns of our companies will be different, depending on whether they are or are not predominantly owners, or users, of IP. We have given special consideration to this. Therefore, let me assure the House that as we provide greater incentives for innovation by strengthening the rights of IP creators and holders, we will also consciously provide safeguards to balance the needs of IP users.

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Let me also stress that the proposed amendments were finalised after extensive discussions with numerous industry constituents, IP professional groups, and relevant Government Ministries. These discussions lasted almost two years. In addition, the IP Office of Singapore (IPOS) made available the draft Bills on its website for consultation and conducted a public engagement seminar for interested parties. All these have generated useful feedback, which we have incorporated some of the suggestions.

Trade Marks (Amendment) Bill: overview

I now turn to the specific provisions of the Trade Marks (Amendment) Bill. This Bill will improve and provide more clarity on certain aspects of trade mark law, to enable the Registry of Trade Marks to be more efficient. The Bill also implements certain commitments of Singapore under the USSFTA.

In 1998, we took a significant step to amend our Trade Mark regime, to modernise it in accordance with international standards. Trade marks and branding now are recognised as key components in a company's business strategy. The present amendments will further keep pace with international developments, and ensure that trade mark owners will continue to enjoy a high standard of protection here.

Key features of the amendments

The key amendments in the Bill are to improve the trade mark regime to (a) the definition of trade marks; (b) well-known marks; (c) trade mark licensees; (d) civil remedies; and (e) border enforcement measures. If I may take these in turn.

[Mdm Deputy Speaker (Mrs Lim Hwee Hua) in the Chair]

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5.25 pm

Expansion of trade mark definition

Today, Singapore trade marks are commonly associated with signs that we all can see. But there are also marks that cannot be seen, but can be just as important in marketing and distinguishing products, for example, the Intel chime and the MGM lion roar. Several countries, such as the US , UK and Sweden, already recognise non-visual marks. Singapore too must keep up with these new techniques in marketing and branding. Hence, clause 2(e) will remove the requirement that a trade mark be visually perceptible. Of course, non-visual marks must still satisfy the same registration criteria as more traditional trade marks.

Expansion of rights for well-known marks

Madam, the Bill will give better protection for well-known marks. These are marks which are famous and known to many people. Their owners would have invested substantial amounts of time and money, to generate the high levels of recognition and goodwill

associated with these marks. Well-known marks are already recognised in our laws. For example, an owner of a well-known mark can stop another party from registering or using an identical or similar mark, if the use is likely to cause confusion with a well-known mark.

Madam, unfortunately, there can be situations where the reputation and value of the well-known mark is diluted by blurring or tarnishment, even though there may not be consumer confusion, for example, if someone uses a well-known mark on inferior quality goods or on goods, say, of an obscene nature. Therefore, clauses 5, 9 and 26 amend sections 8, 23 and 55 so that the owner of a well-known mark can stop a party

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from registering or using an identical or similar mark which dilutes or takes unfair advantage of the distinctive character of the well-known mark. In addition, clause 26 allows the well-known mark owner to stop a third party from using a business identifier, such as a company name, that is identical or similar to the mark in certain circumstances.

With these amendments, we will also give effect to the Joint Recommendation Concerning Provisions on the Protection of Well Known Marks (1999), which is an international standard adopted by the Assembly of the Paris Union for the Protection of Industrial Property, and the General Assembly of the World Intellectual Property Organisation, on the level of protection for well-known marks.

Improved protection for trade mark licensees

I turn now to the improved protection for trade mark licensees. The Bill will give trade mark licensees more flexibility to enforce their rights. This can save time and costs, especially where the trade mark owners are overseas. Clause 17 amends section 39 so that a licensee no longer needs to register his licence with IPOS before suing an infringer for damages or an account of profits. Clause 20 of the Bill amends section 45 so that an exclusive licensee no longer has to involve the trade mark owner before proceeding with legal action to enforce his rights. Of course, Sir, the courts will still have the discretion to involve the owner if appropriate.

Improved remedies in civil actions

Turning to improved remedies in civil actions, the Bill refines the remedies available to trade mark owners when instituting civil actions. Currently, in an infringement suit, a trade mark owner can either obtain damages or he can obtain an account of profits from the infringing

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party. Clause 14 will amend section 31 so that, where the court awards damages, the court is also empowered to make an order for an account of any profits attributable to the infringement that have not been taken into account in computing damages.

We have also proposed, for infringement cases that involve the use of a counterfeit trade mark, a new remedy of statutory damages that will complement the current process of assessing damages. This is because, in certain cases, it may be difficult to prove actual losses or obtain an account of profits. For example, some infringers may not keep clear records of their sales. Hence, a new section 31(5) provides that the trade mark owner can seek statutory damages. In such a situation, the court will assess the quantum of statutory damages on compensatory principles, taking into account the guidelines in section 31(6).

Border enforcement measures

The Bill also deals with border enforcement measures. Madam, it is not enough just to put in place good legislation. There must also be a suitable enforcement environment. We will be making several amendments to enhance our border enforcement measures. For example, clause 30 amends section 82 to make it easier for the owner of a registered trade mark to rely on the enforcement mechanism under section 82. The new section 93A will confer additional powers on enforcement officers. Customs officers will be empowered to take immediate action if they detect any counterfeit goods in the course of their duties. These powers will be exercised judiciously by our enforcement authorities and they will continue to work in close partnership with the rights holders.

Revised "Fair Dealing" provisions

As we strengthen the trade marks regime to provide greater protection for

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trade mark owners, we must also maintain the balance between trade mark owners and users. We have taken the opportunity, therefore, to review and clarify that certain uses of a registered trade mark will not amount to infringement. As stated in clause 12, fair use in comparative commercial advertising or promotion, use for a non-commercial purpose, or use for news reporting or news commentary will not constitute an infringement of a trade mark.

Streamlining administrative procedures

Let me add, Madam, that we are also taking steps to refine some administrative procedures to improve the overall operational efficiency of the Trade Marks Registry. Some measures are geared towards harmonising administrative procedures to be in line with international standards, such as the Trademark Law Treaty. In addition, the Registrar of Trade Marks is authorised to prescribe forms and issue practice directions on certain administrative matters.

To sum up, Madam, while many of the amendments are technical in nature, this Bill will further strengthen Singapore 's intellectual property regime in the area of trade marks.

Madam, I beg to move.

Question proposed.

Assoc. Prof. Chin Tet Yung: Mdm Deputy Speaker, I rise to speak in support of this Bill. As the Minister has explained, this Bill, together with the next three Bills, is intended partly to implement the obligations undertaken by Singapore in the USSFTA. The US has always been crying out for more intellectual property protection and enforcement in Southeast Asia, which is perceived to be a region rife with pirates not just of the maritime kind but also of the digital kind. So, it is

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no surprise today to see that several Bills are introduced to shore up the laws protecting intellectual property rights. It brings us closer to the international conventions on intellectual property as well as the US on intellectual property.

Since the Minister has discussed the general concept of intellectual protection in Singapore, I would just like to direct a question to him. Will the new laws be readily understood not just by MNCs and foreign investors but rather by our local companies and individuals? Will they work for our local companies and individuals' interests rather than MNCs' interests? Do our own consumers know why we are implementing such strict laws on intellectual property protection while Singaporeans can actually obtain pirated software at a fraction of the cost from shops just across the shores of Singapore? The need for respecting intellectual property rights is not so instinctively felt as, say, the right of an individual to be protected from physical harm or theft. What can be done to increase the awareness of Singaporeans to respect intellectual property rights even when it hurts their pockets?

Mdm Deputy Speaker, these Bills are very technical in nature, so I shall restrict myself to a very simple point on the Trade Marks (Amendment) Bill. I would like to ask the Minister whether the concept of well-known marks is really relevant to Singapore or will it result in giving more protection to foreign marks, making it more difficult for our own businessmen, as it were, to build new products based on well-known marks. Are these amendments more relevant to the big MNCs I have referred to just now rather than our smaller local businesses?

On that note, I support the Bill.

Prof. Jayakumar: I thank Prof. Chin for his support of the Bill.

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He has raised two main points. One is a general point, applicable to all these Bills, whether the average consumer or small company would be familiar with the rationale for these Bills and what more could be done to make them understand the concept as well as the need for such laws. I take the Member's point. This is something that both my Ministry and IPOS are mindful of. But as I have said in my main speech, we have taken care over a period of two years or so to have a fairly comprehensive consultation process with the industry, and it was not just with the big players, we also had discussions with the relevant people in the market. But the education process has to go on. It is a task which both the industry as well as IPOS and other authorities have to be engaged in continuously. People need to understand why a breach of intellectual property has to be treated in the same way as theft of physical property. It may not be immediately grasped by all, but the consequences are similar.

Apart from individual victims, the broader consequence is that we will not be able to compete with countries in attracting the kind of new businesses and investments we need if we do not have the kind of intellectual property legislative framework which is essential to attract the investors. And investors, especially those involved in the knowledge industry, will not go readily to a place which does not have the necessary legal norms and legislative framework as well as the necessary enforcement mechanisms. But let me assure him that we are mindful of this and that we will continue to be involved in this process of consultation and dissemination, particularly as I have indicated that there are other Bills and, as I will mention later in moving another Bill, that these Bills are not the sum total of all the amendments that we are going to make. Later on, in the course of the year, we may have other amendments.

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The second point that he has asked is whether the changes that we are introducing would really be for the benefit of the bigger companies. I do not think so, and my response to that is that all companies, whether big or small, should pay attention to how they brand themselves, and trade marks are an essential component of any branding strategy. The amendments in this Bill, in my view, should benefit all companies, whether they are SMEs or big MNCs. Protection of well-known marks is an existing concept in Singapore and, with these amendments, what is it really we are trying to do? I believe what we are trying to do is to give enhanced protection for well-known marks. And it is not just enhancing the protection to marks from a foreign company. Enhanced protection is given to a mark that is a well-known mark in Singapore. So a Singapore mark that meets the relevant criteria will qualify as a well-known mark and benefit from enhanced protection. And let me say in this connection that there are Singapore companies which are putting in substantial investments to develop their brands. Well-known examples, of course, are Singapore Airlines, Tiger Beer and Tiger Balm, which are household names in Singapore and many other countries. But if we want to do more, to encourage more companies to invest and create new products, then I think it is timely to have a regime that will give greater recognition to these brands and to future brands.

Question put, and agreed to.

Bill accordingly read a Second time and committed to a Committee of the whole House.

The House immediately resolved itself into a Committee on the Bill. - [Prof. Jayakumar].

Bill considered in Committee; reported without amendment; read a Third time and passed.