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Effective Criminal Enforcement of IP Rights
08 March 2013
A trademark owner’s fight against the unauthorized use of its trademark does not end with registration of the mark. Registration only provides valid rights in a mark. However, the real challenge lies in being able to protect its mark against counterfeiters despite registration.
While in most Asian jurisdictions, the trademark law generally provides both civil and criminal remedies against counterfeiting, criminal remedies are generally not adopted by most proprietors owing to the inherent difficulties in police procedures in this region. However, it seems that Singapore is an exception considering that criminal procedure in enforcement of trademark rights is widely used by proprietors and to great success.
Applying criminal enforcement measures in Singapore is fast and effective. The only prerequisites are a valid registered trademark and appointment of a local law firm holding authority on behalf of the trademark proprietor. Such authority can be provided in the form of a simple signed letter and does not require legalization or notarization.
Enforcement generally adopts a four-step approach beginning with conducting a field investigation or market survey to identify the sources of counterfeit goods, and making trap purchases. This is followed by an evaluation or comparison of the differences between the genuine and counterfeit products. It is important to note that since the success of the enforcement action depends a great deal on the accuracy of the investigation results, it is prudent to devote sufficient resources in ensuring good quality of the investigation. Once the proprietor is convinced that the trap purchases yielded counterfeit products, they may proceed to submit this information, upon oath, with the court, and seek a warrant authorizing the police to raid the premises or conveyance and seize any infringing goods, material, article or document.
If found guilty, the infringer may be fined up to S$100,000 (US$81,000) or be imprisoned.
The court system and ensuing enforcement procedure in Singapore is fairly swift and efficient. This is clearly evident from the below statistics on raids and total value of seizure as available in the public records at http://www.ipos.gov.sg/AboutIP/IPResources/Statistics/IPRStatistics.aspx.
The efficacy of the criminal enforcement mechanism in Singapore finds its origin in the government’s commitment in keeping IP rights sacrosanct and in promoting Singapore as an IP hub with strict enforcement of laws. The government’s determination to clamp down on piracy of intellectual property rights is indeed praise worthy.
Number of Raids and Total Value Seized by Singapore Authorities
| Year |
Copyright Raids |
Trademark Raids |
Total Raids* |
Total Value Seized |
|
2004 |
126 |
190 |
316 |
S$12,665,969 |
*Total raids include police-led raids and collaborate raids Source: Intellectual Property Rights Branch, Singapore Police Force
patrick mirandah co. (s) pte ltd
1 Coleman Street
#07-08 The Adelphi
Singapore 179903
T: +65 6336 9696
F: +65 6338 3739
E: singapore@mirandah.com
W: www.mirandah.com
