Digital economy agreement poised to strengthen UK, Singapore as digital hubs15 August 2022
According to Lim Siau Wen, director for intellectual property at Drew & Napier in Singapore, the United Kingdom - Singapore Digital Economy Agreement strengthens both countries’ positions as regional digital hubs.
Fashion world more ready now for metaverse IP issues, says expert19 May 2022
Prof. Dr. Irene Calboli, professor of law at Texas A&M University School of Law in Fort Worth believes the fashion industry is more ready now to face intellectual property issues arising from the metaverse than it was in pre-pandemic times.
Singapore youth aware of IP, but knowledge of IP protection limited, says survey03 May 2022
Seventy percent of youths in Singapore know about intellectual property. Of all the IP assets, copyright is the most familiar to them. However, knowledge of IP protection for content is low.
Vink, Tang urge INTA attendees to seek out innovation02 May 2022
Brands are always big business at the International Trademark Association’s Annual Meeting Live+, so it was no surprise when much of the meeting’s open ceremonies were devoted to what brands can do in today’s world.
IPOS increases funding for IP dispute parties opting for mediation with REMPS19 April 2022
The Intellectual Property Office of Singapore (IPOS) has made its Revised Enhanced Mediation Promotion Scheme (REMPS) available to business enterprises beginning on April 1, 2022.
Singaporean tech startup tries to register bird logo, loses trademark battle against Twitter08 April 2022
Singaporean technology startup VV Technology lost its trademark battle against Twitter after principal assistant registrar of Trade Marks Mark Lim ruled on March 11, 2022 that the mark it was trying to register is visually similar to that of the globally popular social media service.
Singapore rejects Prosecco wine GI registration upon appeal by Australian group06 April 2022
The word “Prosecco” cannot be registered as a geographical indication (GI) in Singapore to label wines exclusively originating from certain regions in Italy, according to the latest decision of the High Court of Singapore.
IP Amendment Bill announced at Singapore Parliament14 January 2022
Minister Edwin Tong SC, Singapore’s Minister for Culture, Community and Youth, Second Minister for Law announced the Intellectual Property Amendment Bill (IPAB) at the Singapore Parliament on January 12, stressing that economic growth is increasingly being driven by innovation.
IPOS rejects tech company’s application to register mark after Louis Vuitton opposition15 December 2021
Computational data analysis exception in Singapore’s Copyright Act 2021 a game changer07 December 2021
People and places
Amendments to Singapore’s Copyright Act came into effect in November 2021. Included are major updates to the wording of the act to make it easier to read and understand. However, the exception for computational data analysis is one of the key changes in the act, making it one of the few pieces of legislation in the world with such exception. The computational data analysis exception means that, as long as they are lawfully accessed, copyright works may be used by commercial and non-commercial organizations to extract data for computational data analysis without consent of the copyright owner, subject to certain conditions.The new IP Rules came into force in April 2022. The rules propose to implement a simplified process for certain intellectual property claims. It also seeks to consolidate procedural rules in relation to IP rights currently under different statutes – such as the Geographical Indications Act, Patents Act, Registered Designs Act and Trade Marks Act. One of its key features is the Fast-Track System which provides a mechanism for parties to accelerate the resolution of lower value disputes filed by an originating claim involving IP rights. One of its salient points is the fixed cap on costs and recoverable damages, as well as a cap on the length of trial, which is limited to two days. A new IP filing system was launched in May 2022. Called IPOS Digital Hub, it provides analytical insights for better decision-making and pre-emptive assistance to guide users in the process.Policies are constantly being reviewed to support emerging technologies including big data and artificial intelligence.
Allen & Gledhill provides advice on both contentious and non-contentious matters including prosecuting, enforcing and defending IPRs worldwide. Partner Stanley Lai heads the IP department with well-known clients such as Turner
Broadcasting System, Pfizer, Inland Revenue Authority of Singapore, Nanyang Technological University and Singapore Telecommunications. Other leading practitioners at the firm include Pei Lin Low for patents and trademarks and Kok Leong Tham for copyright matters. Partners Leong Yi-Ming, Liew Wan Lin and Toh Jia Yi are new hires. The firm was named Singapore trademark firm of the year at the 2021 Asia IP Awards. In one of its more recent trademark litigation work, the firm advised Orchard Turn Developments, operator of the ION Orchard shopping mall in Singapore, in a dispute where the defendant used and sold room fragrance under the name “ION.” Orchard Turn was the first in Singapore to feature fragrance as part of the shopping experience inside ION Orchard. The company developed the fragrance exclusively for the mall.Established in 2006, Amica Law is a specialist intellectual property and technology practice with patent and trademark practitioners, attorneys and associates. Cofounder and director Jason Chan and Jo-Ann See respectively lead the litigation and enforcement team as well as IP protection and management matters. The firm, which was named Singapore copyright firm of the year at the 2021 Asia IP Awards, has advised many clients on copyright issues, especially safe-harbour provisions, infringement matters, and the changes to Singapore’s Copyright Act which came into force in November 2021; and was involved in drafting documentation for copyright protection and transactions as well as issuing and defending against copyright infringement claims. The firm manages the worldwide patent portfolio of Accelerate Technologies, the commercialization arm of Singapore’s Agency for Science, Technology and Research and the regional trademark portfolio of Amazon.com. Wilson Wong is a key lawyer; Yee-Swan Boo has joined the firm as director. Previously a partner at Lee & Lee, Boo has more than 30 years of experience in IP work.
With more than 30 years of experience operating in Singapore, Baker McKenzie Wong & Leow provides full IP services including enforcement and litigation, patent transactions as well as portfolio management. Walt Disney and Ralph Lauren are clients. Managing principal Andy Leck has more than 20 years of experience in contentious and non-contentious IP matters and currently heads up the firm’s IP practice. In April 2021, Leck was appointed by IPOS to its panel of IP adjudicators. Principal Celeste Ang leads the litigation team.
Bird & Bird ATMD opened in Singapore in 2009 and has since represented high-profile clients, including Nestlé and Fox Network, in infringement disputes as well as BBC, Discovery and La Liga in securing site blocking orders in Singapore, among others. More recently, the firm has acted for Novartis Singapore in an action for prospective patent infringement action brought in the Singapore High Court by Millennium Pharmaceuticals and Johnson & Johnson; Chanel in trademark opposition matters in Singapore; and Fox Networks Group, for which it successfully acted against a copyright infringement claim brought by a music collecting society. The firm also handles global brand management and IP advisory work for one of the largest operators of serviced apartments in Singapore with a global presence. Partner Alban Kang is well-known for his significant expertise in representing major companies in complex litigation, while joint managing partner Lorraine Tay is noted for her experience in international and cross-border issues. Anan Sivananthan is a top practitioner for patent and copyright matters. Bird & Bird ATMD was named Singapore patent firm of the yearat the 2021 Asia IP Awards.
Davies Collison Cave, one of Australia’s oldest and largest intellectual property law firms, has opened an office in Singapore. The office is led by four partners with over 70 years combined experience in IP law. This depth of experience ensures clients are well-equipped to safeguard their IP in Australia, Singapore and New Zealand.
Global law firm Dentons and venerable Singapore firm Rodyk & Davidson formalized their combination on April 25, 2016. In Singapore, the firm operates as Dentons Rodyk, and the IP practice was rebranded as Rodyk IP. Key contacts include Woon Chooi Yew, Gilbert Leong and Catherine Lee The firm offers transactional and contentious services as well as portfolio management. It successfully acted for Bavaria (Swinkels Family Brewers), manufacturer of the popular Bavaria Holland Beer, in its opposition to a Singapore trade mark application for “BAVARIAN BEER”, a collective mark used by members of the Bavarian Brewers Federation to indicate the origin of beer made in Bavaria according to the specified regulations.
Established in 1874, Donaldson & Burkinshaw is the second-oldest law partnership in Singapore and has seven decades of experience in providing a full range of IP services to multinational corporations and businesses. Managing partner Michelle Ng is a key specialist who leads a team of professionals that have served clients including Coca-Cola, Nestlé, Colgate-Palmolive, GlaxoSmithKline and Red Bull.
Drew & Napier is a full-service firm with expertise across the range of contentious and non-contentious IP work including litigation, trademarks and service marks, copyright and designs, licensing, distributorship, franchising and confidentiality agreements. The firm is acting for an international tech startup – an applicant of various trademarks in Singapore and around the world for an up-and-coming super mobile app – as well as for Royal Caribbean Cruises, Henkel AG & Co. KGaA and its group of companies, Victoria Beckham Limited and others. The firm accounts for approximately 20 percent of all patent filings in Singapore with the largest IP department. Director of IP Yvonne Tang is a key contact. Tang successfully acted for Teraoka Seiko in opposing Digi’s application for a similar trademark in respect of similar goods and services; successfully represented Adidas in an appeal to the High Court, against the opposition decision of the Trademarks Registry; and successfully defended McDonald’s in an appeal to the Court of Appeal involving an application to register “MacCoffee” by another party and McDonald’s own registered mark “McCAFE”, among others.
Ella Cheong’s Singapore office handles IP work, particularly trademark, patents, registered designs, and copyright matters; dispute resolution and enforcement; corporate and commercialization; and data protection for clients across Southeast Asia and the Indian sub-continent. The firm’s client base, includes start-ups, SMEs and leading multinational players in the aviation, manufacturing, luxury, FMCG, cleantech, pharmaceutical, education and F&B industries. Managing director Soh Kar Liang and director Kevin Wong are key contacts.
Francine Tan Law Corporation may be a small firm, but it is well-respected by both local and international clients. Managing director Francine Tan has practiced in the IP field, particularly with regards to trademark portfolio work, for numerous clients over the past two decades. Services include trademark prosecution, dispute resolution and clearance searches; brand protection strategies; patent drafting and prosecution; registered designs; domain name disputes and online infringement; enforcement and anti-counterfeiting and others. The firm is one of only a few SmartLaw-certified practices in Singapore, reflecting its commitment to harness the power of technology to deliver more efficient services with less paper wastage.
Gateway Law Corporation is a regional legal practice with particular strength in the areas of intellectual property, advisory and enforcement, franchising, technology and communications, and media and entertainment law. The firm has acted for Formula One Licensing against the registration of the trademark F1H2O. It also successfully acted for Bosch in a private prosecution and a civil claim against an infringing company and its two directors for trademark infringement and passing off. Managing director Max Ng heads up the firm’s IP law practice.
George Hwang specializes in intellectual property, information technology, entertainment and media law. The firm, led by George Hwang, is particularly known for its work in the entertainment, information technology and engineering industries, as well as its work assisting clients in commercializing their IP. His portfolio includes IP infringement proceedings, brand management and transfer of technology transactions. In May 2019, he was appointed as vice chair for the copyright committee of the Licensing Executive Society International (LESI).
Singapore firm Harry Elias Partnership was founded almost 30 years ago; after a merger with Eversheds Sutherland in 2017, the firms amicably demerged in June 2020.Itassists clients with defending and taking action against offenders in trademark infringement and passing-off claims as well as in patent, design and copyright litigation. The firm has an advance system that enables it to manage the filing and registration of large trademark, design and patent portfolios in a timely and cost-effective manner. The firm was instructed by Cedele Holding to take over representation of its entire global portfolio pertaining to CEDELE marks in more than 10 countries. It also advised Dr.stretch Singapore on its claims against several ex-employees who were suspected to have infringed the client’s intellectual property in connection with employment with other competing businesses, among other recent notable works. Esther Wee is of counsel at the firm and head of IP; her expertise lies in devising and managing comprehensive IP filing and protection strategies.
Holborn Law is a member of CMS Holborn Asia, a Formal Law Alliance with CMS Cameron McKenna Nabarro Olswang (Singapore). It provides advice on dispute resolution, corporate transactions including fund raising and mergers and acquisitions as well as regulatory affairs. The firm services the technology, media and telecommunications industries. Heading up the IP practice of CMS Holborn Asia is Sheena Jacob, who has 25 years of experience as an international IP attorney under her belt.
Infinitus Law Corporation is a medium-sized full-service law firm advising on a wide range of IP issues. These include trademark protection, copyright, passing off, registered designs, patents, interface of different IP rights, domain names, technology and the enforcement of such rights including infringement and anti-counterfeiting. Apart from non-contentious prosecution work, the firm also handles trademark anti-counterfeiting and patent and trademark litigation. Teresa O’Connor, who led the firm’s IP practice from its founding until April 2022, has left the firm for Ghows, as has associate director Patsy Koh.
Joyce A. Tan & Partners is a business-centric commercial law practice with particular strengths in intellectual property, technology, telecommunications, media and privacy. Its IP practice focuses on trademarks, domain names, patents, copyright, designs and trade secrets. The firm also routinely undertakes audit, due diligence and health-check services to verify the integrity of IP assets. Local and international conglomerates, government-linked companies and agencies, small and medium-sized enterprises, as well as startups make up its clientele. Director Daniel Lim’s practice focuses on dispute resolution and advisory work, with particular strengths in intellectual property, information technology and telecommunications matters.
Regional commercial law firm Kelvin Chia Partnership has a strong IP and IT practice. The firm was among the very first law firms to open in Vietnam and Myanmar. Managing partner Kelvin Chia oversees IP registration matters and seasoned litigation attorney Yee Ming Lim takes the lead on the contentious and opposition actions. The IP/IT team boasts more than 160 people spread out in the firm’s nine offices: Singapore, Shanghai, Bangkok, Hanoi, Ho Chi Minh City, Jakarta, Mandalay, Phnom Penh and Yangon.
Co-founded in 1955 by Lee Kuan Yew, the late prime minister of Singapore, Lee & Lee is a comprehensive law firm that also provides an integrated service advising on both contentious and non-contentious IP matters. The firm’s trademark opposition and revocation actions and pharmaceutical patent prosecution work are also recognized. Leading practitioners include Tee Jim Tan. Yee Swan Boo has left the firm to join Amica Law as Director.
Marks & Clerk comprises 15 attorneys and seven patent trainees in Singapore. The patent attorneys and patent trainees all have technical degrees, and most of the attorneys are qualified in two jurisdictions or more. Their strategy is to not only provide expertise in the law but also technical proficiency across a range of technologies. Managing partner Jim Greene-Kelly and head of trademarks Candice Kwok are key contacts.Boutique firm McLaughlin IP has significant experience and expertise of drafting and prosecuting patent applications in a wide range of areas. It also practices patent litigation and provides technical and legal support to advocates and solicitors. In 2015, Michael McLaughlin acted as the patent attorney in the team which successfully defended a patent infringement claim brought by local company Mobilestats against the Attorney General of Singapore for an alleged patent infringement by the Ministry of Defense Singapore.
Mirandah Asia (Singapore) coordinates the activities of the firm’s other Asian offices and thus provides one-stop services for all IP matters in Southeast Asia and Indian sub-continent. The firm has represented United States Polo Association before IPOS against a trademark opposition from The Polo/Lauren Company. The opposition was ruled invalid and the firm’s client was awarded costs. Other clients include Facebook and Salvatore Ferragamo, for which the firm secured registration for the 3D shape mark of a plate used on the brand’s product offerings. Director and patent agent Gladys Mirandah is a key contact in Singapore. Mirandah was involved in the successful cancellation case of a patent in the Philippines owned by a large pharmaceutical company. The independent claims of the patent were deemed poorly drafted. Arguments on the novelty and inventive step of the claims were also put forward.
OC Queen Street, the Singapore office of Osborne Clarke, is a full-service firm with particular strengths in IP, tech and cybersecurity matters. At the forefront of that practice area is director Chia-Ling Koh, whose online bio describes him as a “tech lawyer” – which is an understatement if we’ve ever heard one, because if you’re looking for a FinTech lawyer, Koh is probably your best starting point. He has acted in a number of high-profile IT/IP disputes, including PropertyGuru Pte Ltd v. 99 Pte Ltd, a copyright infringement case, and Main-Line Corporation v. United Overseas Bank Ltd, a patent infringement case.
Orrick, Herrington & Sutcliffe announced plans in late August 2021 to open an office in Singapore. The office, which replaces the office it closed in Hong Kong in mid-2020, will initially focus on energy and infrastructure, according to a Reuters news report. Although the firm hasn’t publicly announced plans for an IP practice in Singapore, intellectual property figures prominently in the firm’s other Asia offices, located in Tokyo, Beijing, Shanghai and Taipei.
Rajah & Tann’s IP team in Singapore handles contentious and non-contentious aspects of intellectual property law, with a special focus on the IT, entertainment, sports and media industries. Head of the team Kok Keng Lau’s main practice areas are IP law, gambling law and sports law. Some of the firm’s clients include the Singapore government, Sony, Lenovo and Nanyang Technological University. Wern-Jhien Yam has been promoted to partner in the firm’s commercial litigation practice group.
Founded in 1993, IP boutique Ravindran Associates handles patent, trademark and design filings and prosecutions. It also drafts agreements and provides opinions on IP matters as well as pleading in courts. Partner Paul Teo has represented Kimanis Food Industries before the High Court and successfully defended its “Angry Bite” trademark application against Rovio Entertainment, the creator of Angry Birds. Other key IP legal decisions in which the firm was involved in are: Burberry v. Megastar Shipping, Sunseap Group and others v. Sun Electric and Cicada Cube v. National University Hospital (Singapore), among others. The firm also has a leading enforcement practice dealing with online and offline infringements for clients like LVMH Group, The Polo/Lauren Company, Rolex, NBC Universal, Marvel Entertainment, Chelsea Football Club, Prada and many more. Other top IP practitioners include founding partner M Ravindran and partner Sukumar Karuppiah.
Leading regional firm RHTLaw Asia is a multi-disciplinary law firm, with practices including IP&T, litigation and dispute resolution, corporate and capital markets, financial services, aviation, real estate and tax. Rizwi Wun, one of the firm’s founding partners, currently serves as acting head of the IP&T practice; he advises on a wide variety of matters, including technology, telecommunications, fashion and luxury, food and beverage and games. The firm’s IP&T clients include companies in the advertising, media, tech, manufacturing, F&B, financial services, educational services and other consumer goods sectors. In early 2020, the firm split with its long-time legal ally Taylor Wessing, ending an eight-year relationship between the Singapore- and London-based firms. In May 2021, the firm celebrated the 10th anniversary of its founding in Singapore.
Robinson specializes in intellectual property law, and is particularly noted for its work in IP enforcement, commercialization and registration. The firm’s expertise lies in anti-counterfeiting / anti-piracy matters. Through civil, criminal, customs and other enforcement actions, the team assists clients in combating counterfeits, piracy, and IP infringement in the APAC region, including but not limited to Singapore, Malaysia, Thailand, Vietnam, Indonesia, the Philippines, Myanmar, and Japan. Cyril Chua is the firm’s founder and managing director; over the past two decades, he has advised major clients in the telecommunications, software, luxury goods, automotive parts and IT sectors in relation to IP enforcement and anti-counterfeiting work in Asia. The firm’s capabilities stem from the extensive network of seasoned IP enforcement stakeholders and contacts cultivated by Chua over his decades of experience.
Samuel Seow Law Corporation prosecutes trademark, patent and design applications in Singapore as well as overseas through an extensive network of international affiliates. The firm is also active in enforcement covering a wide range of industries from fashion apparel and F&B to information technology and media/entertainment. In particular, its specialties are entertainment and media law, corporate and commercial law, litigation and dispute resolution, and property, family and probate law.
Shook Lin & Bok boasts of strong cross-border experience and relationships. The diverse legal education and language competencies of its 54 partners, 70 associates and foreign lawyers further solidify the firm’s standing as one of Singapore’s top-notch law firms. Its team of practitioners – many of whom have qualified in China, UK, India, Singapore and elsewhere – advise on protection of trademarks, patents, registered designs, trade secrets, confidential information, copyrights and domain names; online enforcement; dispute resolution; data privacy compliance and risk management; IP audit, strategy & valuation; transfer and assignment of IP; and commercialization, among others. Partner Jevon Louis is a key practitioner. He is acting for a U.S. technology company in the prosecution of patent applications related to harnessing the power of data and advising on the amendments of specifications to comply with the requirements in Singapore, and is also acting for a major American multinational financial, payment and fintech services in prosecuting patent applications to grant concerning software in the electronic funds transfer space and advising on the amendments of specifications to comply with the requirements in Singapore.
The TMT practice – the IP portion of that practice, in particular – at Simmons & Simmons was strengthened by the arrival of partner Yingyu Wang, who joined the firm from Taylor Vinters Via, where she was managing director. Wang specializes in technology transactions, IP, regulatory matters and funding/M&A of technology companies. She has also developed a niche in the metaverse and NFT space, drawing from the combination of her experience in the IT and media sectors and her multi-jurisdictional experience in protecting, commercializing and enforcing a variety of IP rights.
Israeli firm Soroker Agmon Nordman is recognized for its patent and trademark prosecution services. In Singapore, the firm’s niche expertise lies in the medical and software fields, and it continues to expand into the cryptocurrency and NFT spaces. The team has handled hundreds of trademark applications, representing numerous clients in various fields, prosecuting before the IP office of Singapore, the USPTO, the Chinese trademark office and the Israeli trademark office, among others. This year, the firm has also drafted and prosecuted several of hundreds of patent applications for medical devices, computer and hardware, telecommunication, materials, defense, blockchain and business methods. The year also saw the firm completing a multi-million dollar licensing transaction between a large pharmaceutical in the U.S. and the licensing arm of the Zurich University; and negotiating a multi-million dollar license and collaboration agreement between a Singaporean manufacturer and government entities in Singapore. Principal lawyers are Jocelyn Toh, Edy Rusbandi and Jonathan Agmon, who has served as arbitrator over some 30 domain name disputes.
With a strong group of qualified patent attorneys and technical specialists, Australia-listed IP firm Spruson & Ferguson maintains a strong position in Singapore for patent and design filing and prosecution. The firm houses many professionals with various technical backgrounds and files more than 20 percent of patents in Singapore. Kristian Robinson is the managing director and as a qualified patent agent in Singapore, he is primarily involved in the preparation, drafting and prosecution of patent applications and also provides advice in all patent matters. It remains the top filer in Singapore in fiscal year 2018 according to search data from IPOS. It was the number one filer of patents (by total volume) and also the number one filer of PCT applications in Singapore. Other leading practitioners include principals Choo Chiou Yu, Le Hong Minh and Amy Chan. The firm is part of IPH Limited, the IP company holding company.
Taylor Vinters Via closed its office in Singapore in May 2022, following the departure of its last lawyer to Simmon & Simmons. TMT lawyer Bryan Ghows had left the firm in 2019 with a team of lawyers to set up local boutique Ghows. Taylor Vinters is a now a UK-domestic firm, with offices in London, Cambridge and Oxford.
Boutique firm That.Legal demonstrates its highly-sought expertise culled from the strong international experience of its legal team as it delivers its services. These are: intangible asset (IA) protection and international IP portfolio management, IA/IP exploitation and commercialization, dispute resolution and others. The firm jointly acted for international hotel chain The Ritz-Carlton Hotels (Marriot Group) and The Ritz Hotel in a trademark infringement and passing off matter. It has also commenced legal proceedings on behalf of Eco World International and Eco World Development Group against EcoWorld Inc for passing off relating to the unauthorized use of EcoWorld. Managing director Jonathan Foong and executive director Mark Teng are key practitioners.
Munich-based Viering, Jentschura & Partner has been providing patent advisory and filing services in Singapore since 1997. Some of its notable clients include Singapore Health Service, Nanyang Technological University, OSIM International and Davos Life Science. Managing partner and Singapore patent attorney Adam Bogsch established and has since run the Singapore office. Other key practitioners include partners Audrey Goh and Peter Lian.
WongPartnership advises on the full spectrum of IP matters. Its IP team specializes in transactional, enforcement and advisory work including IP investment agreements, research & development collaborations, joint venture agreements, franchising and IP due diligence. Since its formation in 1992, it has worked with some of the best-known brands and IPR owners in the region. The firm acted for The Football Association Premier League Limited as well as for seven leading South Korean broadcasters and/or production houses on their copyright site blocking actions before the Singapore courts. The group also advised GovTech in relation to the phased roll out of the wearable devices to facilitate Covid-19 contact tracing in the country which involved IP issues, among others. Partner and patent agent Chung Nian Lam heads the firm’s intellectual property practice.