Second Reading Speech on Trade Marks (Amendment) Bill 2004 by Professor S Jayakumar

Second Reading Speech on Trade Marks (Amendment) Bill 2004 by Minister for Law, Professor S Jayakumar

Mr Speaker, Sir, I beg to move that the Bill be now read a second time.
Apart from this Bill, there are 3 other Bills in this House today which relate to the protection of intellectual property, or IP, rights. Let me first make some general observations on all four Bills, which my colleague, Senior Minister of State Ho Peng Kee, and I, will take through, before going into the details 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 commendable strides; our companies are investing in branding and going international; and the government has committed further funds to grow our media industry. Now, as Singapore moves 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 Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights, or the TRIPS agreement in short, 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, or the 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 that are relevant for us.
But while we aspire to higher standards, we are also 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.
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, and we have incorporated some of the suggestions..
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, and enable the Registry of Trade Marks to be more efficient. The Bill also implements certain of Singapore's commitments 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. So 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 firstly, the definition of trade marks; secondly, well-known marks; thirdly, trade mark licensees; fourth, civil remedies; as well as border enforcement measures.
If I may take these in turn, first, the expansion of the trade mark definition. Today, Singapore trade marks are commonly associated with signs. Signs that we can all see. But Sir, 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. Sir, 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.
I turn to the expansion of rights for well-known marks. Sir, 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 the well-known mark. Sir, unfortunately, there can be situations where the reputation and value of a 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 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 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.
I turn 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, the courts will still have the discretion to involve the owner if appropriate.
Turning to improved remedies in civil actions. The Bill refines the remedies available to trade mark owners when instituting civil action. Currently, in an infringement suit, a trade mark owner can either obtain damages or he can obtain an account of profits from the infringing party. Clause 14, Sir, 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 the damages.
We have also proposed, for infringement cases that involve the use of a counterfeit trade mark, the 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).
This Bill also deals with border enforcement measures. Sir, 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 rights holders.
As we strengthen the trade marks regime to provide greater protection for 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.
Let me add, Sir, 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.

Conclusion
To sum up, Sir, 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.

Sir, I beg to move.