In Conversation with Dr Dong Qiyao

A PDF version of the article may be found here

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IN CONVERSATION WITH DR Dong Qiyao

Interviewer: SHAKTIVEL ARUMUGAM^*

This is the sixth part of a series of interviews that the Intellectual Property Students Association (“IPSA”) has conducted with key players of the intellectual property (“IP”) field in Singapore. These key players represent a diversity of views in the field of IP dispute resolution. The Singapore IP Strategy 2030 Report^[1]has highlighted that Singapore is currently seeking to strengthen its position as a dispute resolution hub for IP disputes. The main purpose of these interviews is therefore to explore and discuss the various strategies that Singapore intends to employ towards advancing its goal as an IP dispute resolution hub.

On 24 November 2021, IPSA had the opportunity to interview Dr Dong Qiyao, the Representative of the World Intellectual Property Office ("WIPO") Arbitration and Mediation Center ("WIPO Center") Singapore Office. The WIPO Center Singapore Office opened in 2010 to promote and provide alternative dispute resolution ("ADR") services, such as mediation and arbitration, in the region.

Q1: From what the WIPO Center has seen around the world, what, if any, is the relationship between the strength of a country’s IP framework and its dispute resolution landscape?

Dr Dong noted that in general, how supportive a country is of its ADR framework influences how widely ADR options will be used in the jurisdiction. This depends on relevant legislations and the attitudes of judges. In a country with open attitudes towards ADR, for e.g., by encouraging the use of ADR options such as mediation, the ADR landscape will be enhanced (particularly for IP related aspects). If the law itself has an open attitude and there are clear instructions in legislation saying that this dispute should be resolved through ADR options, it provides a good opportunity for parties to think about using ADR for IP disputes.

Q2: What changes has the WIPO Center seen in the dispute resolution landscape in Singapore and the region since setting up its Singapore office more than a decade ago? What is the prevalent mindset towards ADR for IP disputes?

Dr Dong made the following observations:

"The dispute resolution landscape is certainly rapidly developing in Asia and Singapore. Singapore holds broader perspectives with respect to ADR. In particular, both the domestic and international dispute resolution legal framework has been robustly developing in Singapore. One example I can think of is the new amendments to the International Arbitration Act 1994 passed by the Singapore parliament in 2020^[2]. Also, I note that Singapore is one of the earliest countries to deposit instruments of ratification for the Singapore Convention on Mediation^[3].

From the perspective of the WIPO Center, we are observing a growing ADR caseload in SG and the ASEAN region. Many IP offices are also collaborating with the WIPO Center to raise the public profile of ADR. In fact, the WIPO Center has collaborated with the Intellectual Property Office of Singapore ("IPOS"), notably in facilitating pending trading opposition proceedings.

From her understanding, the prevalent mindset is that ADR options are already popular amongst parties for disputes concerning investment and finance. However, ADR for IP disputes a.k.a "IP ADR" is a relatively new area. Nevertheless, research has shown that ADR is very suitable for IP disputes. This is because ADR can be used to resolve IP in a cost and time efficient way. Furthermore, as IP disputes usually involve confidential information, the strict confidentiality of ADR proceedings lends itself well to resolving IP disputes and is therefore an important consideration. Other key considerations for parties of IP disputes include the expertise of the mediators or the arbitrators, as well as the international enforceability of a final award."

Q3: What else can be done to encourage greater reception towards ADR for IP disputes? Furthermore, how do you think that the promotion of ADR can interact with litigation to promote holistic dispute resolution options for users?

Dr Dong explained that the WIPO Center does see growing efforts to promote the use of ADR in disputes around the world. As a result, they have observed an increasing receptivity towards ADR. In 2021, WIPO ADR caseload has been increased by 45%. As such, the WIPO Center believes that there should be continued efforts to raise awareness of ADR options. In this regard, the WIPO Center has always welcomed collaborations in a bid to raise awareness. For instance, the WIPO Center has been collaborating with courts, law firms, IP offices for industrial associations to provide information to companies, especially Small-Medium Enterprises, to facilitate the resolution of IP disputes through ADR.

With respect to the second part of the question about litigation, Dr Dong made the following comments:

"I believe that the promotion of ADR can interact well with litigation to ensure efficient resolution of IP disputes, especially for complex IP disputes that are international in nature. ADR options, particularly mediation and expert determination present good opportunities for parties with cases pending if they are willing to settle or seek assistance on technology matters. We note that in recent years, WIPO has seen a growing number of courts referring parties to mediation to settle disputes. Courts are even encouraging global settlements thru mediation in order to end long and costly litigation and avoid further harm of business relationship. Against this backdrop, the WIPO Center has established collaborations with national courts in a growing number of jurisdictions to promote ADR. For instance, based on MOUs concluded between the WIPO Center and the Supreme People's Court of China and the Shanghai High People’s Court, parties can refer to WIPO Arbitration and Mediation Shanghai Service to settle their international IP disputes pending before six courts in Shanghai. So far, the WIPO Arbitration and Mediation Center has received 50[4] mediation cases involving copyright infringement, patent infringement, and trademark licencing disputes. Back to my first point, this is one example of how promotion of ADR can interact with litigation in a holistic way."

Q4: Expert determination is an ADR option WIPO offers in which a dispute or a difference between the parties is submitted, by agreement of the parties, to one or more experts who make a determination on the matter referred to them. What type of IP disputes are particularly suited for expert determination? What are some of the distinct advantages that expert determination offers?

Dr Dong explained that in expert determination, parties submit a specific matter to make a decision or determination on the matter. Expert determination is especially suitable when it is necessary to determine issues that are scientific or technical in nature e.g., the valuation of an IP asset or establishment of royalty rights, or interpretation of the extent of rights covered under a license. In practice, expert determination has been used to resolve life science disputes, FRAND disputes etc. One of the key advantages of expert determination is that parties benefit from specifically focused expertise and time efficiencies.

While expert determination is not commonly offered by IP offices, Dr Dong notes however that IPOS and the WIPO Center have developed an expert determination option for patent proceedings such as revocation and inventorship disputes etc.

Q5: What is WIPO Center’s unique value proposition in Singapore and the region?

According to Dr Dong, the WIPO Center is an international dispute resolution service provider, specialised in IP and technology disputes. It was established in 1994 as an independent and impartial body which forms part of WIPO. The primary goal of the WIPO Center is to offer IP stakeholders a means to resolve their disputes in a cost– and time– saving manner. WIPO ADR proceedings were developed by leading experts in cross-border dispute resolution and WIPO ADR services are recognised as being particularly appropriate for international disputes. With respect to the caseload of the WIPO Center, most of the cases are IP and technology related, covering a wide range of aspects such as patent, trademark, copyright and ICT.

Moreover, WIPO Center also has a growing database of over 2000 mediators, arbitrators and experts from over 100 jurisdictions including highly specialised practitioners, and experts with specialised knowledge in the area of IP. Additionally, the WIPO Center actively collaborates with member states to prevent and resolve IP disputes. For instance, the WIPO Center assisted in the establishment of joint dispute resolution procedures by IP offices in Singapore and the wider Asian region, such as the Philippines and the Republic of Korea to facilitate the use of ADR processes for disputes pending before IP courts.

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* LLB (NUS), Class of 2021.

[1] Intellectual Property Office of Singapore, Singapore IP Strategy (SIPS) 2030 Report, (Singapore: Intellectual Property Office of Singapore, 2021), online: <https://www.ipos.gov.sg/docs/default-source/default-document-library/singapore-ip-strategy-report-2030-18may2021.pdf> (accessed 16 December 2021).

[2] On September 1, 2020, Singapore’s Ministry of Law introduced an International Arbitration (Amendment) Bill that proposed two changes to the International Arbitration Act, which governs the conduct of international arbitrations seated in Singapore. The first change is the addition of default processes and timeframes for appointing arbitrators in multi-party situations where the parties’ agreement does not specify an appointment procedure. The second change would explicitly recognize the powers of an arbitral tribunal and Singapore’s High Court to enforce confidentiality obligations. Singapore is a world class international commercial arbitration hub, and these changes aim to further enhance its legal framework for international arbitration.

[3] The Singapore Convention on Mediation, formally the United Nations Convention on International Settlement Agreements Resulting from Mediation which was adopted on 20 December 2018 and opened for signature on 7 August 2019, is an international agreement regarding the recognition of mediated settlements.

[4] So far, the WIPO Arbitration and Mediation Center has received 50 mediation cases. This number is correct as of publication and was provided by WIPO Arbitration and Mediation Center. At the time of the interview, the original figure provided to Shaktivel was 40.

In Conversation with Justice Simon Thorley QC

A PDF version of this article is available here.

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In Conversation with Justice SIMON THORLEY QC

Interviewers: Bryan Ong Junyu* & Shaktivel Arumugam**

This is the second part of a series of interviews that the Intellectual Property Students Association ("IPSA") has conducted with key players of the intellectual property ("IP") field in Singapore. They represent a diversity of views in the field of IP dispute resolution. As the Singapore IP Strategy 2030 Report highlights, Singapore is currently seeking to strengthen its position as a dispute resolution hub for IP disputes. The main purpose of these interviews is therefore to explore and discuss the various strategies that Singapore is intending to employ towards advancing its objectives.

On 30 June 2021, IPSA was given the opportunity to interview the learned Justice Simon Thorley QC, who sits on the panel of the Singapore International Commercial Court (SICC). Justice Thorley provided invaluable insights on issues ranging from confidentiality to enforceability and dove deeper into the landmark case of B2C2 Ltd v Quoine Pte Ltd, which was upheld on the breach of contract claim but reversed on the breach of trust claim by the Singapore Court of Appeal (SGCA).

Q1: You’ve served as an International Judge of the SICC since 2015. Would you be able to share, from your experience, some reasons that parties have for preferring SICC dispute resolution over international arbitration (or even mediation)?

Justice Thorley prefaced his response with a disclaimer that his perspective is based on anecdotal evidence. He pointed towards four differences in procedure in the SICC and the Singapore International Arbitration Centre (SIAC): (i) the right of appeal; (ii) privity; (iii) confidentiality; and (iv) the difference between judges and arbitrators.

(i)      Right of Appeal

The SICC is part of the Supreme Court and thus, cases heard before the SICC have an automatic right of appeal. Conversely, the rights of appeal are limited in the SIAC. (An SIAC award can only be set aside in exceptional circumstances.)

     Justice Thorley pointed out that “[t]he SICC does acknowledge that there are human frailties in judges who do on occasion get things wrong and all national systems have systems of appeal to ensure that justice is done and errors can be corrected.”

     In addition, given that there is only one tier of appeal in Singapore, up to 5 judges can be on the bench where necessary. The ability to appoint an amicus curiae further buttresses this appeal mechanism.

(ii)      Ability to order third parties to be joined as parties to the action

Given that the SICC is part of the Supreme Court and governed by the Rules of Court in the Supreme Court of Judicature Act[1], the SICC is empowered to order third parties to be joined as parties to the action.[2] Here, Justice Thorley acknowledged one of the weaknesses of arbitration— third parties affected by a contractual dispute who are not signatories to the contract are unable to seek relief.

(iii)    Confidentiality

With regards to confidentiality, arbitration appears to be the preferred option, given that arbitration is almost always conducted under an obligation of confidence. In comparison, SICC operates on the basis of open justice, although there are procedures for elements of confidentiality.

     Here, Justice Thorley pointed out that the procedures implemented by the SICC do not suggest a “one-way street kind of confidentiality”. Instead, he notes that “[t]he oxygen of publicity does encourage people to be far less aggressive in their litigation stance. [W]hen [litigation is] public, [parties] have to be more reasonable [and] the court can compel them to be reasonable.”

(iv)    Judges vs Arbitrators

Justice Thorley observed that “[t]he benefit of the SICC is that they have appointed International Judges with significant expertise in particular areas of law and litigation. For example, construction disputes, shipping disputes, and in my case, IP disputes.”

     In essence, the benefit of the SICC is that the judge that is appointed will have a background in the field the dispute concerns. There is also greater certainty in terms of scheduling since the docket system utilised by the SICC ensures that the judge will see the case from start to finish. This system allows for case management to be confirmed within two weeks from when a judge is given a case. It also enables parties to agree on when the trial is going to be conducted and thus, work backwards from there.

     In contrast, delays can happen in arbitration since the appointment of arbitrators takes time. The selected arbitrators may also be less experienced in the field. However, Justice Thorley reiterated that the SICC is not trying to subsume the functions of the SIAC, but to complement it.

Q2: Do you think concerns of international enforceability might make arbitration more attractive compared to the SICC as a platform for IP dispute resolution, especially since the 1958 Convention on the Recognition and Enforcement of Foreign Arbitral Awards[3] has extensive global reach consisting of 150 countries? We note, in this connection, that in 2018, the Supreme Court of Judicature Act was amended to, among other things, clarify that the SICC’s supervisory jurisdiction extends to international arbitration disputes seated in Singapore.[4] How have developments such as these had an impact on Singapore’s position as an international dispute resolution forum in general, and IP/Information Technology (IT) disputes in particular?

The short answer is yes. In principle, the SIAC is more attractive in terms of enforceability (due to the presence of the New York Convention). Nonetheless, Justice Thorley highlighted that, in reality, there are not many drawbacks in getting a judgment from the SICC enforced as opposed to the SIAC. There are three basic ways to enforce a SICC judgment internationally.

     First, Singapore has treaties with 10 other jurisdictions, including India, Pakistan, and Brunei, amongst others. These treaties mean that a judgment can very easily be enforced in these jurisdictions, assuming that the usual requirements to enforce such a judgment are fulfilled (eg, a court of competent jurisdiction, no indication of fraud, process of natural justice and not against public policy).

     Second, such judgments are enforceable by virtue of the Convention of 30 June 2005 on Choice of Court Agreements.[5] This is the equivalent of the New York Convention for courts. All 27 European Union countries are covered by this convention, while the United States and China have signed but not ratified it.

     Third, judgments are enforced through the principle of reciprocity. This covers countries like Japan and China. In fact, there is now a memorandum of guidance (MoG) between Singapore and China setting out the documents that need to be filed to enable reciprocity. However, the MoG does not explicitly include IP. This is because there is still significant national influence when it comes to enforcing IP rights.

     Justice Thorley highlighted that the International Judges of the SICC are also experienced arbitrators. This means that “anybody arbitrating before the SIAC will know that there is going to be an appeal to the supervisory court (ie, the Supreme Court). Such appeals can be listed in the SICC. Hence, the parties know that any appeal will be dealt with efficiently by somebody who knows what they are doing and understands the arbitration system.”

Q3: Singapore employs various strategies to become a leading IP dispute resolution centre such as strengthening its legislative framework (eg, by introducing amendments to the Arbitration Act[6] and the International Arbitration Act[7] in 2019, which clarify that IP rights disputes are arbitrable in Singapore) and developing its capabilities through training and professional development (eg, by cultivating a pool of expert witnesses). What else can Singapore do to strengthen its position as a choice location for IP dispute resolution, in particular for IP litigation?

Preliminarily, Intellectual Property Rights (IPRs) do cause difficulty for international tribunals of any sort, given that they are the result of a registration process on a national basis—commonly referred to as the principle of territoriality. This is evident from the provision which is present in various international conventions regulating patent law which states that only the granting state can revoke a patent in question. Justice Thorley noted that “[t]his leads to, in the case of Europe, for example, the need for multiple litigation.” This is because getting an injunction in one European jurisdiction does not have extraterritorial effect.

     Justice Thorley pointed out the difficulties in setting up an international court which could declare that IPRs are invalid on an international basis. While this has been attempted in Europe in the form of a central court litigating patents granted by the European patent office, the German Constitutional Court has had difficulty with this because it was handing over jurisdiction to an international tribunal.

     Simply put, one has to accept that there are limits to extraterritorial effect. Despite this, the SICC is still an attractive forum for resolving IP licensing disputes. Justice Thorley identified patent infringement disputes that surface under the guise of a breach of contract, where the issue is “whether a modification to a previously infringing product on which a royalty is payable has the effect of making it non-infringing so that no royalty is payable”.

     In order to be an attractive forum for resolving such IP disputes, one must have experienced judges—both in IP Law and those “with a technical bent” who can understand the technology.

     For completeness, Justice Thorley acknowledged the assistance rendered by expert witnesses. He is “personally… in favour of parties appointing their own experts… The parties can ensure the experts understand the technology. The process of cross examination ensures that they are independent.” To ensure that the expert reports remain relevant in assisting the judge, Justice Thorley also shared that it is common practice for him and his colleagues to narrow down and agree on the legal issues that the expert report should address before the expert witness is cross examined.

Q4: Your decision in B2C2 Ltd v Quoine Pte Ltd[8], which was upheld on the breach of contract claim but reversed on the breach of trust claim by the SGCA[9], has been recognised as one of the first instances to apply contractual principles and trust law to a cryptocurrency trading case. Is there anything in particular that you would like to highlight about this case?

Justice Thorley said “[y]es! It was very hard work. As the trial judge, it was factually extremely complex. We had to work out how two computer algorithms worked and were interrelated to each other. This emphasises the need for expert evidence that is focused, comprehensible and objective. I was fortunate to have two experts, both of whom knew their subject matter and were very balanced. They were able to assist me in determining how exactly the two algorithms worked.”

     Justice Thorley further emphasised that the need for confidentiality also compounded the complexity of the case. The defendant not only ran an exchange for bartering cryptocurrencies and fiat currencies, but also they traded on that exchange. This meant that they were in direct competition with B2C2. B2C2’s algorithm worked extremely well and hence, they obviously did not want Quoine to find out what it was. The experts thus had to work within many constraints such that the confidentiality of B2C2’s algorithm would not be breached. They had to work within a closed facility and could not take photographs. Any notes that they took were effectively sterilised. However, Justice Thorley admitted that at least one representative of the defendant would need to know, to some degree, how the algorithms interacted so that further commercial decisions can be made. This led to a need for further checks and balances tailored specifically for the case.

     Finally, the complexity of the case was also compounded by the fact that, prior to the case, the law of unilateral and mutual mistake had never dealt with computer programmes. Usually, two people trade under a misapprehension and a judge is able to set in stone what everybody knew at a particular date. However, in this case, the computer programmes were working twenty four-seven. They were programmed to do certain things in the event something unplanned happened. Justice Thorley observed that “[b]oth programmes worked as intended. The question was whether the plaintiff's programme was intended to take advantage of such a mistake or to protect the plaintiff from such a situation.” Justice Thorley shared that he “adopted an objective approach, writing wholly new law. Thus, it was not very surprising when the SGCA… sat as a bench of five [when the case went on appeal].” The SGCA had three local judges, two overseas judges and the benefit of an amicus curiae.

     The Court of Appeal upheld Justice Thorley’s decision on the breach of contract issue, but overruled the decision on the breach of trust issue by a majority of four to one. This illustrates the benefit of parties using the SICC as a forum of dispute resolution where difficult legal matters are concerned. Justice Thorley notes that “if this had been an SIAC case, I doubt the supervisory judges would have set the award aside on the basis of either limb and certainly not on the breach of contract. Moreover, the case would not have had the investigation of five judges and an amicus.” Judge Thorley quips that he will “never forget B2C2… It was hard work writing the judgment but it was a satisfying exercise.”

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* LLB (Candidate) (NUS), Class of 2022.

** LLB (NUS), Class of 2021.

[1] Cap 322, 2007 Rev Ed Sing, s 80.

[2] Ibid at O 4, r 1; O 15, r 4.

[3] 10 June 1958, 330 UNTS 3 (entered into force 7 June 1959) [New York Convention].

[4] Supreme Court of Judicature Act, supra note 1.

[5] 30 June 2005 (entered into force 1 October 2015), online: <https://www.hcch.net/en/instruments/conventions/specialised-sections/choice-of-court>.

[6] Cap 10, 2002 Rev Ed Sing.

[7] Cap 143A, 2002 Rev Ed Sing.

[8] [2019] 4 SLR 17 (HC(I)) [B2C2].

[9] [2020] 2 SLR 20 (CA).

In Conversation with Justice Dedar Singh Gill

A PDF version of this article is available here.

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In Conversation with Justice Dedar Singh Gill

Interviewers: Bryan Ong Junyu* & Shaktivel Arumugam**

This is the first part of a series of interviews that the Intellectual Property Students Association ("IPSA") has conducted with key players of the intellectual property ("IP") field in Singapore. They represent a diversity of views in the field of IP dispute resolution. As the Singapore IP Strategy 2030 Report highlights, Singapore is currently seeking to strengthen its position as a dispute resolution hub for IP disputes. The main purpose of these interviews is therefore to explore and discuss the various strategies that Singapore is intending to employ towards advancing its objectives.

IPSA had the honour of interviewing Justice Dedar Singh Gill, who was sworn in to the High Court (SGHC) as Judicial Commissioner in August 2018 and Judge in August 2020. He touches on significant judgements in the IP and Information Technology (IT) domain, the strengths of Singapore’s judiciary, and key reforms that are in the process of being implemented.

Q1: An interesting feature of Singapore’s legal system is the option for the court to appoint amicus curiae or court-appointed legal experts. Could you share, for our readers’ benefit, how these options have been employed by the courts in IP/IT cases? Could you please discuss unique features of Singapore’s system that benefit litigants in IP/IT legal proceedings in Singapore?

Justice Gill observed that:

“An amicus curiae is usually appointed by the Court of Appeal (SGCA) where a case raises a novel or complex question of law, or where the appeal will benefit from specialised legal knowledge. Leading IP academics, such as Professor Ng-Loy Wee Loon and Professor David Llewelyn, were appointed as amicus curiae in recent SGCA decisions concerning IP law (eg, Burberry Ltd v Megastar Shipping Pte Ltd[1], Société des Produits Nestlé SA v Petra Foods Ltd[2], and Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc[3]).

At the General Division of the SGHC, junior advocates can also be appointed as young amicus curiae (YAC) to assist the court in a similar manner. In the recent case of Bellingham, Alex v Reed, Michael[4], a YAC was appointed to assist the court in interpreting the scope of section 32(1) of the Personal Data Protection Act 2012[5]. The appointed amicus curiae and YAC will address issues specified by the court, thereby assisting the judiciary in developing the law and enriching local jurisprudence for the benefit of future litigants.

Apart from the amicus curiae and YAC schemes, Singapore’s judiciary also taps on the expertise of renowned IP practitioners through the Singapore International Commercial Court (SICC). B2C2 Ltd v Quoine Pte Ltd[6], an SICC case involving a contractual dispute arising from a glitch on a currency exchange platform that used deterministic algorithms, was heard by Simon Thorley IJ, a leading Queen’s Counsel in the field of IP Law.”

Q2: Singapore enjoys a reputation for a strong rule of law, supported by a highly skilled judiciary that is well regarded internationally. We understand that the General Division of the SGHC has had an IP/IT list since 2002. The list presently features 11 judges (including 3 Judicial Commissioners). In addition, in recent years, the SGCA has handed down a number of important decisions in this field. What do you think are the key strengths of Singapore’s judiciary and legal system in the field of IP/IT? Furthermore, in recent years, there have been substantial developments in Singapore’s IP/IT law and the SGCA has handed down a number of significant judgments in this field.[7] Some of these cases were heard by a five-judge panel in the SGCA (instead of the usual three) and amicus curiae were appointed. In many of these cases, the SGCA undertook a comparative analysis of the approaches taken in various foreign jurisdictions (eg, United Kingdom (UK), European Union (EU), United States (US), to name a few). Would you be able to share your observations and comments in this regard?

Justice Gill noted the three key strengths of the SGCA when it comes to decision-making: (i) sensitivity to the policy considerations underpinning IP regimes; (ii) willingness to adapt the law, where appropriate, to better cater to an increasingly digitised world; and (iii) readiness to review settled positions and change the law where it is desirable as a matter of logic and principle.

(i) Sensitivity to the Policy Considerations Underpinning IP Regimes;

Justice Gill highlighted the SGCA’s independent and careful evaluation of the policy considerations that have led to the departure from established positions in the EU, the UK and the US. He demonstrated his point with reference to the landmark case of Staywell[8]. He shared that:

“In Staywell, after considering the doctrine of initial interest confusion in the US, UK and EU, the SGCA decisively concluded that this doctrine ought not to be introduced into Singapore trade mark law.[9] The effect of introducing this doctrine into Singapore trade mark law, is that confusion which arises initially, but which would have been dispelled by the time of the purchase, can constitute confusion for the purpose of sections 8(2) and 27(2) of the Trade Marks Act[10]. The court found that this doctrine is inconsistent with the purpose of sections 8(2) and 27(2) of the TMA: while the doctrine of initial interest confusion seeks to protect the reputation of a well-known mark, sections 8(2) and 27(2) of the TMA are concerned with the origin of goods. Further, if the initial confusion has been dispelled by the time of purchase, the function of the trade mark as a ‘badge of origin’ is not undermined. As a result, the court declined to import the doctrine of initial interest confusion into Singapore trade mark law.”

(ii) Willingness to Adapt the Law, Where Appropriate, to Better Cater to an Increasingly Digitised World; and

On this point, Justice Gill mentioned that:

"In I-Admin (Singapore) Pte Ltd v Hong Ying Ting, the court recognised that advances in modern technology make it significantly easier to access, copy, and disseminate confidential information almost instantaneously, often without the plaintiffs’ knowledge.[11] To better protect owners from loss, the court modified its approach towards breach of confidence claims: now, claimants only need to prove that the information possesses the quality of confidentiality and was imparted in circumstances which imported an obligation of confidence. Thereafter, the burden is shifted to the defendant to prove that his conscience is unaffected.[12]”

(iii) Readiness to Review Settled Positions and Change the Law Where it is Desirable as a Matter Of Logic And Principle.

Justice Gill returned to the case of Staywell, a case “emblematic of the judiciary’s willingness to refine the law where necessary”.

Prior to Staywell, the court in The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd held that the confusion inquiry requires the court to consider all the circumstances, including extraneous factors which go beyond matters relating to similarity of marks and goods.[13] Guided by the underlying aim of the trade marks regime—to prevent confusion, Polo found that the law ought not to extend protection in cases where extraneous matters indicates that the confusion is merely imaginary.

However, Justice Gill pointed out the following:

“In Staywell, the court observed that even though the risk of origin-based confusion is the primary interest sought to be protected by trade mark law, the proprietary rights of a trade mark owner must also be vindicated.[14] A liberal approach towards the admissibility of extraneous factors would enable a subsequent trader to enter the market using a trade mark that is very similar to the senior mark and applied to similar if not identical goods, and yet avoid liability by means of an express disclaimer or by selling his goods at a much lower price, on the basis that confusion has been dispelled due to these differentiating steps. Allowing extraneous factors to readily displace a finding of likely confusion would not meaningfully uphold property rights represented by the trade mark.

Accordingly, the court in Staywell held that there must be a limit to the range of external factors.[15] Departing from its previous decisions starting with Polo, the court held that extraneous factors in the confusion inquiry are only permissible to the extent that they are: (a) intrinsic to the very nature of the goods and/or (b) affect the impact that similarity of marks and goods has on consumers; extraneous factors consisting of differences created by a trader’s differentiating steps (eg, pricing differentials and packaging) are impermissible in the confusion inquiry.[16] The change was brought about after a detailed consideration of the case law from the UK and EU.”

Justice Gill also noted Singapore’s IP legislation is updated regularly to keep abreast with international developments. For instance, as a result of the United States-Singapore Free Trade Agreement[17], Singapore amended the TMA in 2004 to accord a higher standard of protection to well-known trade marks in response to the Joint Recommendation adopted at the 34th World Intellectual Property Organisation Meeting.[18] At the same time, Singapore directly imported the definition of “dilution” set out in the US Trademark Act of 1946 into its local trade mark legislation. Another example would be the enactment of the Geographical Indications Act[19] in 2014 as a result of the European Union-Singapore Free Trade Agreement[20], which established a system of registration of geographical indications (GI). More recently, the GI Act was further amended in 2020 to improve the running of the GI Registry and provide greater clarity to traders and producers.

Q3: A key aspect of ensuring Singapore becomes a hub for IP Dispute Resolution is ensuring that such dispute resolution is cost effective. One such mechanism is encapsulated in the proposed reforms to allow for a new “track” that places restrictions on the length of trial, the quantum of damages recoverable, and the amount of costs awarded. While we understand that these reforms are still in the process of being implemented, what would be the key benefits that litigants can look forward to?

Justice Gill commented that:

“This new “track” provides a simplified process for IP claims. Modelled after the UK Intellectual Property Enterprise Court (IPEC), this track enables litigants to resolve their disputes in an expeditious and cost-efficient manner. This is significant, given that IP litigation tends, in general, to be more expensive than other types of litigation by virtue of the highly technical nature of the dispute which often calls for expert evidence. It is hoped that the simplified process track will play an important role in ensuring that litigants with more limited budgets can still access justice through the courts, notwithstanding the consolidation of civil IP disputes at the SGHC.

The introduction of this track, alongside existing procedures and timelines that apply to disputes presently on the SGHC IP list, gives litigants control over the costs of proceedings. The Minister of Law has indicated that litigants will generally be able to choose between the simplified process track and the normal track. Litigants with greater financial resources can opt for the normal track while cost-sensitive litigants can choose the simplified process track, which limits the length of proceedings and caps the costs and damages recoverable. Although it is ultimately for the court to decide which court the case is heard, the UK courts generally endeavour to accommodate parties’ agreement to use the IPEC. It remains to be seen if similar weight would be given to parties’ agreements in Singapore.”

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* LLB (Candidate) (NUS), Class of 2022.

** LLB (NUS), Class of 2021.

[1] [2019] 1 SLR 536 (CA).

[2] [2017] 1 SLR 35 (CA).

[3] [2014] 1 SLR 911 (CA) [Staywell].

[4] [2021] SGHC 125.

[5] No 26 of 2012, Sing.

[6] [2019] 4 SLR 17 (HC(I)).

[7] Andrew Phang, Goh Yihan & Jerrold Soh, “The Development of Singapore Law: A Bicentennial Retrospective” (2020) 32:2 Sing Ac LJ 804 at paras 94-100.

[8] Staywell, supra note 3.

[9] Ibid at paras 105-116.

[10] Cap 332, 2005 Rev Ed Sing [TMA].

[11] [2020] 1 SLR 1130 at para 55 (CA).

[12] Ibid at paras 61-62.

[13] [2006] 2 SLR (R) 690 at paras 8, 28-32 (CA) [Polo].

[14] Staywell, supra note 3 at paras 78, 95.

[15] Ibid at para 90.

[16] Ibid at para 95.

[17] United States and Singapore, 4 September 2003 (entered into force 1 January 2004).

[18] Trade Marks (Amendment) Act 2004 (No 20 of 2004, Sing).

[19] No. 19 of 2014, Sing [GI Act].

[20] European Union and Singapore, 19 October 2018 (entered into force 21 November 2019).