LEGAL Lecture 6 Handouts IP TM PO Copyright

Lecture 6: IP - Passing-off, Trademark, Copyright
AY 2011 Oct Semester
Legal Framework for Social Enterprise
Learning objectives:
By the end of this lecture, you will Have basic knowledge about business organisations Know the difference between the law of passingoff and rights under the Trade Marks Act Be familiar with copyright laws as it applies to Classical Rights and Entrepreneurial Rights.
1 AY 2011 Oct Semester Ngee Ann Polytechnic - Patrick Seong 2
Lecture 6 Business organisations Law of Intellectual Property Passing off Trade marks; Copyright
AY 2011 Oct Semester Ngee Ann Polytechnic - Patrick Seong
Inthecontextofbusinesslaw,thelaw
andliabilities. Createsanartificialpersonintheformofan incorporatedentity company,corporation, statutorybodies,etc. Createsanartificialpersonintheformofan unincorporatedentity societies,clubs,etc.

Refer: Chandra R. (2006), Introduction to Business Law in Singapore (4th Edition), Chapter 10
Soleproprietorship Partnership LimitedLiabilityPartnership(LLP) Limitedpartnership Company
Ngee Ann Polytechnic - Patrick Seong
Recognises theexistenceofapersonwithrights
Maintypesofbusinessorganisations.
Soleproprietorship
Partnership
unlimitedliability;nosharingofprofits.
Liabilitybetweenpartners dependson partnershipagreement.
Partnership Formedby2ormore,butnotmorethan20 persons. Partnershipagreementdetermines managementandsharingofprofits.
outsiders unlimitedtothefullextentof partnershipdebt.
LimitedLiabilityPartnership(LLP)
Limitedpartnership
Minimum2partners+manager LLPisaseparatelegalentity Relationbetweenpartnersgovernedby agreement.
Oneormoregeneralpartners+oneormore limitedpartners
Ageneralpartnerisliableforalldebtsand obligationsofthelimitedpartnership.
The liabilities of the LLP is met out of the property of the LLP.
Alimitedpartner(e.g.aninvestororventure capitalist)isnotliableforthelimited partnershipsdebtbeyondtheamountofhis
agreedcontribution.
Liabilitybetweeneachofthepartnersand
Businessownsby1person;
Actofonepartnerbindsallpartners.
Company
Company
Theliabilityofthecompanyitselfisunlimited. Theliabilityoftheshareholders Companylimitedbyshares:shareholdersliable uptothevalueofthesharestakenup. Companylimitedbyguarantee:shareholders liableuptotheamounteachhadguaranteed whenthecompanywasformed. Companyisunlimited:shareholdersliablefor thefullamountowedbythecompany.

Privatecompany(Pte. Ltd.) restrictionsin sharestransfer;notmorethan50 shareholders.Otherwise,itbecomesa
PublicCompany Acompanyisalegalentity anartificial person.Itsidentityisseparatefromits shareholders(members).
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Forcomparisonbetweenapartnership,company, limitedliabilitypartnership,andalimited partnershipmodelsofbusinessorganisations, refertopages250 254ofthetextbook.

Intellectual Property Law
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Land, house If someone enters your house without permission: He can be arrested and charged for housebreaking. You can also sue that person for trespass. You can protect your house by securing it. Tangible property If someone steals something tangible (can be touched), e.g., laptop, that belongs to you; same consequences. You can also protect your laptop by securing it.
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Intangible Property What if You have an idea for a movie; or After years of research, you devised a process for the efficient manufacture of a product , and someone steals the idea or process? What was stolen?
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How can something that is intangible (cannot be touched) be protected?
How does the law extend its protection?
An Overview Trade Marks Act Registered Designs Act Patents Act Common law Passing off DESIGN: How to manufacture the machine The PROCESS in making the PRODUCT and the product is protected
Property rights protected by law - An overview

Property Real Property
Examples: Land; house Property rights that can be enforced only by legal action
Confidential Information Law of Confidence
Personal Property
IDEA: Machine with AI
Intangible
Tangible
Examples: cars, books, computers, etc
Intellectual Property
Others
Example: right to payment of debt
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Intellectual Property protected by law - An overview

Trade Marks Act Copyright Act Patents Act Intellectual Property Registered Designs Act Geographical Indications Act Passing-off Law of Confidence
Common law tort of passing-off

[Note: Tort is a private wrong.] The common law protects the goodwill in goods and services that are not registered under the Trade Marks Act.
Statutebased property rights
In a claim of passing-off, the Plaintiff wants to stop or prevent the Defendant from copying the Plaintiffs mark, packaging or 'get-up' (brand name, trade description, individual features of labelling or packaging) and presenting the copied goods and services as if it were the Defendants.
Common law property rights

AY 2011 Oct Semester Ngee Ann Polytechnic - Patrick Seong 20
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Passing-off
Passing-off - Reckitt & Colman Products v Borden Inc
Reckitt & Colman Products v Borden Inc (1990)

Since 1956, Reckitt & Colman had been selling lemon juice in UK in a plastic container in the shape of a lemon under the brand name of Jif. In the USA, Borden sold its concentrated lemon juice in its lemon-shaped plastic container under its own brand, called ReaLemon. The lemon-shaped ReaLemon product was also very popular in the US.
In 1975, Borden began to sell its lemon juice in bottles in the UK. By 1980, ReaLemon brand lemon juice captured 25% of the total lemon juice market in the UK. In 1985, Borden began selling its lemon juice in the UK in its lemon-shaped container. Reckitt & Colman sued the American company. The UK highest court (the House of Lords) granted an injunction stopping Borden from selling lemon juice in its lemon-shaped container.
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Common law right of passing-off
Reckitt & Colman Products v Borden Inc established that three elements must be present to prove passing off: 1. Plaintiff has acquired goodwill and reputation to the goods and services. 2. Defendant made misrepresentation (intentional or otherwise) in the course of trade, leading, or likely to lead the public to believe that the Defendants goods or services are those of the Plaintiffs. 3. Defendants passing-off causes or is likely to cause damage to the Plaintiff.
Goodwill & Reputation

Goodwill is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom. Reputation is not the same as goodwill. Goodwill only exists if it is connected to a business. A product or service may have a good reputation and yet not have any goodwill.
Popular clothing brands in Japan (reputation), but not sold in some countries(no goodwill)
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Common law right of passing-off - misrepresentation
Misrepresentation
The Defendant misrepresented the public, intentionally or innocently, leading, or likely to lead it to believe that the Defendants goods or services are those of the Plaintiffs The misrepresentation was made in the course of trade.
The misrepresentation was made in the course of trade.
Misrepresentation may take the form of express words, or implied in the use or imitation of the Plaintiffs get up (brand name, trade description, label or packaging)
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Common law right of passing-off- misrepresentation
The most common forms of misrepresentation: The defendant represents that his goods or services are those of the Plaintiff. The defendant represents that the Plaintiffs goods or services are of a particular quality or represents substandard, inferior goods as new or superior. The defendant represents that the Defendants business and Plaintiffs are one and the same or are associated with one another.
Damage
The Plaintiff must prove that the misrepresentation is likely to cause damage to the goodwill of the business. It is not necessary to prove actual damage. Types of damage that may be caused. The destruction of the goodwill. Defendant sold inferior goods under the Plaintiffs business name and the goodwill is subsequently destroyed, damaged or depreciated, ceasing to have any attractive force at all.
Common law right of passing-off - Damage
Injurious association with the Defendant Plaintiff is deprived of the benefit of the goodwill. Direct loss of sale The attractive force which the goodwill has still draws custom in as before, but that custom is drawn to the Defendants s business and not to the Plaintiffs business to which the goodwill belongs. o The defendant may personally have a bad reputation, or may break the law, although his trade may be reputable; o The defendant provides poor quality goods or services; or o The defendants business may fail or face difficulties which may also damage the Plaintiffs credit.
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Plaintiff has to show o The defendants business is not reputable. This will affect the Plaintiffs reputation;
The case of Rick Ross William Leonard Roberts is a rapper and goes by the stage name of Rick Ross. Freeway Ricky Ross (FRR), a former drug dealer, sued Rick Ross for passing off.
FRR said that his name was well known in the drug trade and by the police, the rap and black community because he did business as Rick Ross, until he was arrested, prosecuted and jailed. 1 November 2010: The case was dismissed because FRR cannot use his illegal activities to establish a secondary meaning (reputation to his name). Freeway Ricky Ross, was unable to prove that his name has acquired goodwill and reputation.
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Remedies
The Plaintiff who proved that the Defendant has committed the act of passing-off, may ask the court for: Damages - monetary compensation Injunction - to restrain the defendant from committing or continuing to commit passing-off. Order for Delivery Up The Plaintiff obtains possession of infringing articles for the purposes of destroying them.
Trade Mark
You have gone into business and have established a good reputation either for the goods you sell or services you provide. You want to protect that reputation. How do you do that? (Reputation is intangible.)
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Trade Mark protection
Trade Mark - purposes
Protection by means of a trade mark registered under the Trade Mark Act The trade mark (sign) represents the physical goods and services. In protecting the trade mark (the sign), the law protects the goods/services. The Trade Mark Act does not affect the common law rights of passing-off.
A registered trade mark serves to: Identify your goods and services. Distinguish your goods/services from others. Represent the quality of your goods/ services. Cultivate brand-loyalty. Facilitate advertising and moulding of public perception.
Trade Mark passing-off comparison
Trade Mark - meaning
Comparison
Passing-off
Common Law Mark not registered or not registrable Protects the goodwill
Under the Trade Mark Act, trade mark mean: any sign capable of being represented graphically must be able to distinguish this sign which is used for goods/services from another sign the goods must be dealt with / services must be provided in the course of trade
Registered Trade Mark

Statutory Mark must be registered Protects the mark
To prove To prove infringement of acquisition of goodwill & registered trade mark reputation, misrepresentation and damage
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Trade marks used in relation to goods
(Trade Mark means any sign capable of being represented graphically.)
Sign includes any Letter Name Numeral Brand
Sign represented graphically in the form of LeTter Word Name Shape Colours
Capable of distinguishing goods dealt with in the course of business
Word
Signature Device Heading
Label Ticket Shape Colour Aspect of packaging or any combination thereof

Section 2(1) Trade Marks Act
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Can it be registered as a trademark?
A trade mark is Sign represented graphically in the form of Letter word name shape
Sign The Godfather Represented graphically in the form of letter, word, shape
Can it be registered as a trademark?
Sign ? www.LoveByte.org.sg Represented graphically in the form of ? o Letter o Word
o shape
Sign ? Sign ? Inter Solar
The Blend
Taste No.
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Represented graphically in the form of ? o Letter o Word o Numeral
Represented graphically in the form of ? o Letter o Word o Name o Label o Colour

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Important to note: there is no exclusivity to words like Godfather, love, byte, blend, taste, 117, inter or solar. Its the way these words are graphically represented that gives it uniqueness.
Sign ? Kanebo Navi Represented graphically in the form of ? o
signature
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Sign ? Belvedere Volka Represented graphically in the form of ? o aspect of packaging
Sound may be represented by musical notations and registrable as a trade mark.
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Duration of registered mark
Trade marks used in the course of trade NO SQUATTING!

Mark is used by the applicant in the course of trade Applicant intends to use the mark on goods to which the trade mark is associated.
(Section 18 Trade Marks Act)
A registered trade mark is valid for ten years and renewable for 10-year periods.
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Trade Mark - classification
Classification
To apply for trade mark registration, the applicant must chose one or more classes of goods or services that it wants the mark to be registered under. Protection under TMA is only extended to the class it is registered under. Singapore uses the International Classification of Goods and Services issued by the World Intellectual Property Organisation (WIPO) to classify trade mark registrations.
(Section 6 Trade Marks Act)
There are 34 classes of goods and 11 classes of services to register under.
Example: If a person wants to register a trade mark to be attached to his new line of clothing, he has to apply for registration under Class 25
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ABSOLUTE GROUNDS TO REFUSE REGISTRATION OF TRADE MARKS Not a trade mark within the definition of In Singapore, application to register a mark is filed with the Intellectual Property Office of Singapore (IPOS). How do Registrar of IPOS decide whether to accept or reject a sign for registration as a trade mark?
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section 2 Trade Marks Act The mark is devoid of distinctive character i.e., not capable of distinguishing goods traded / services provided under the trade marks with those sold / provided by others.
Section 7 Trade Marks Act
Absolute Grounds to refuse Registration of trade marks Absolute Grounds to refuse Registration of trade marks
Wholly descriptive marks are not registrable.
Tee Yi Jia
devoid of distinctive character
E.g.: marks that describe the goods/services in terms of the quality ('Super' or 'Best') the quantity ('One dozen') the value ('Cheap') the intended purpose ('Cleaner'), or the geographical origin (Australia)
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Marks status: Refused

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Marks common to the trade are not registrable.
Private Label
Over time, some marks have become so well accepted that the term is used to describe the type of the goods or services in general. Such marks can no longer be used to distinguish the products offered.
wholly descriptive
Example: escalator, chair, concierge, etc.
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Marks Contrary to Public Policy or Morality are not registrable. Example: a mark that could promote immoral
Uncle Doc
customary in the trade
behaviour cannot be registered. Deceptive Marks are not registrable. Example: marks that misrepresent the nature, quality or geographical origin of the goods or services.
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RELATIVE GROUNDS FOR REFUSAL OF REGISTRATION OF TRADE MARKS

Marks that are Identical to Earlier Marks
Relative Grounds for refusal of Registration of trade marks
Marks that could Cause Confusion
Proposed mark
Identical
Existing Registered mark
Proposed mark
Identical
Goods and services
Similar
Goods and services
there exists a likelihood of confusion on the part of the public. Goods and services Identical Goods and services
No registration of proposed mark No registration of proposed mark
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Section 8(1) Trade Marks Act
Section 8(2)(a) Trade Marks Act
Relative Grounds for refusal of Registration of trade marks
Marks that could Cause Confusion
There is infringement of trade mark if a person uses a mark similar to a registered trade mark in respect of identical or similar goods or services.
Proposed mark
Similar Identical or Similar
Goods and services
Goods and services
there exists a likelihood of confusion on the part of the public.
No registration of proposed mark
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Section 8(2)(b) Trade Marks Act
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Starbucks vs. Starpreya

16 October 2006 Elpreya, a Seoul-based company, established in 1999, operates about 40 coffee shops mostly out of roving trucks (similar to ice-cream trucks). Elpreya sells its products under the brand name Starpreya. Starbucks Korea opened its first store in South Korea in 1999 and currently operates 177 stores.
Starbucks in Korea
Starpreyas Truck
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Starbucks vs Starpreya
Elpreya said that the brand name Starpreya was derived from Freja, a Norse goddess. It was changed to Starpreya to make it easier for Koreans to pronounce. Starbucks claimed that consumers confused the Starpreya-branded products with its corporate and brand name. The Korean Intellectual Property Tribunal disagreed with Starbucks and held that the marks were too dissimilar to be confused.
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Copyright
Copyright
Copyright is essentially a right to prevent the copying of works. It seeks the protection of expression of ideas not the ideas itself. A person who expresses his ideas in a tangible form of works novels, music, painting, etc has a right to prevent the unauthorised reproduction by
69 Ngee Ann Polytechnic - Patrick Seong
Copyright is a statute-based right. section 4 Copyright Act no copyright shall subsist otherwise than by virtue of this Act. No registration is necessary to claim copyright, unlike Trade Marks Act and Patents Act.
another person of the works.
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Copyright protection Two broad categories of rights Classical rights Sections 7, 7A CA Classical Works Literary works (includes compilation, computer programs) Musical works Dramatic works Artistic works (includes painting, sculpture, drawing, engraving or photograph, a building or model of a building) Entrepreneurial rights Sections 82 86 CA Entrepreneurial Works Sound recordings Cinematograph films Television & sound broadcasts Cable programmes Published editions of works The person who created the sound recordings, films, etc are usually not the authors of the original AY 2011 Oct Semester works neighbouring rights
CLASSICAL RIGHTS Author of Classical Works can claim copyright for published work if It is an original work - skill, effort and labour used by author in creating the work; not slavish copy. o (independently created by the author) Two persons, with same ideas, can each independently create similar works and still own copyright to their respective works. o Does not mean excellent work. It was a previously unpublished work
72 Ngee Ann Polytechnic - Patrick Seong (Section 27(2) Copyright Act) AY 2011 Oct Semester
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Copyright - Classical rights exclusive right
Copyright owners of classical works have exclusive right to Publish the work if unpublished Communicate the work to the public Perform the work in public. Make an adaptation of the work (e.g. from words to cartoon; movie; translated).
ENTREPRENEURIAL RIGHTS Creator of sound recordings and cinematograph films can claim copyright if Made or first published in Singapore or created by a Singapore citizen, resident or corporation. Creator of television and sound broadcasts can claim copyright if Broadcast in Singapore by the Media Corporation of Singapore. Broadcast by a person holding a broadcasting licence.
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(sections 87, 88, 89 Copyright Act)
Copyright Entrepreneurial rights criteria to obtain copyright
Copyright Entrepreneurial rights exclusive right
Creator of cable programmes can claim copyright if The programmes were included in a cable programme service provided by a Singapore citizen, resident or corporation. (section 90 Copyright Act) Published edition of an authors work (literary, dramatic, musical or artistic work) can claim copyright if It was first published in Singapore, or The publisher who first published it was a Singapore citizen, resident or corporation.
(section 91 Copyright Act)
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Copyright owner of sound recordings has exclusive right to Make copies of the sound recording. Enter into commercial rental agreement in respect of the sound recording. Publish the sound recording. Make available to the public the sound recording by digital audio transmission.
(sections 82(1) CA )
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Copyright owner of Cinematograph films has exclusive right to Make copies of the film. Cause the film to be shown in public. Communicate the film to the public .
(section 83 CA )
Copyright owner of television & sound broadcasts has exclusive right to TV broadcast (visual images) - Make a cinematograph film of the broadcast, or a copy of such film. Make a sound recording of the broadcast, or a copy of such sound recording. Cause it to be seen or heard in public; to rebroadcast; to communicate with the public.
(section 84 CA )
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Copyright owner of Cable programme has exclusive right to make a cinematograph film of it or a copy of such a film. make a sound recording of it or a copy of such a sound recording. Cause it to be seen or heard in public; to communicate with the public.
(sections 85 CA )
Copyright owner of published edition of an authors work (literary, dramatic, musical or artistic work) has exclusive right to make, a reproduction of the edition.
(sections 86 Copyright Act)
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Copyright infringement
Copyright infringement
Nature of the original work Whether there is copyright infringement depends on the nature of the work being copied. COMPLICATED WORK
e.g. elaborate painting by an artist
NO INFRINGEMENT IF For literary, dramatic, musical or artistic work, there is no infringement of copyright if Fair dealing for the purposes of criticism, review or to report current events. For literary work in the form of a computer program, a copy made for backup.
Work being copied
Major change
No infringement. Copier can obtain own copyright
Minor change
Slavish copy Likely to be infringement. Copier cannot obtain own copyright e.g. drawing of table with 4 legs
SIMPLE WORK Major change

No infringement. Copier can obtain own copyright
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Minor change
May not be infringement. Copier may be able to obtain own copyright based on the minor change.
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Copyright infringement if
For published edition of a literary, dramatic, musical or artistic work, there is no infringment if not more than 10% or one chapter of the work is copied for research or study. For TV broadcast and cable programmes, there is no infringement if copy is made for private or domestic use. years
Duration of Copyright
General rule for classical works: authors life + 70
If classical works published after authors death: 70 years from first publication Photograph 70 years from first publication Published editions of works: 25 years Sound recordings and films: 70 years Performances: 70 years Broadcasts and cable programmes: 50 years
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CIVIL LIABILITIES CLAIM FOR INFRINGEMENT

The copyright owner may claim against the wrongdoer (tortfeasor) An injunction Damages and An account of profits. However, the copyright owner may ask the court to award statutory damages. If so, he cannot then claim for damages or account of profits. In statutory damages, the court awards not more than $10,000 for each work infringed but Not more than $200,000 in total, unless the Plaintiff proves his actual loss exceeds that amount.
85 Ngee Ann Polytechnic - Patrick Seong (section 119 CA) AY 2011 Oct Semester
CRIMINAL LIABILITIES It is also a criminal offence To sell, let for hire, trade in, possess, import, distribute, etc any article which he knows, or ought to know, is an infringement of copyright work. The penalty for the offence is Maximum fine of $10,000 for each article up to a maximum of $100,000, or Maximum imprisonment of 5 years or Both
(sections 136 and 137 CA) Ngee Ann Polytechnic - Patrick Seong 86 AY 2011 Oct Semester
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Lecture 6: IP - Passing-off, Trademark, Copyright

AY 2011 Oct Semester

Legal Framework for Social Enterprise

andliabilities. Createsanartificialpersonintheformofan incorporatedentity company,corporation, statutorybodies,etc. Createsanartificialpersonintheformofan unincorporatedentity societies,clubs,etc.

Soleproprietorship Partnership LimitedLiabilityPartnership(LLP) Limitedpartnership Company

Ngee Ann Polytechnic - Patrick Seong

Ngee Ann Polytechnic - Patrick Seong

Ngee Ann Polytechnic - Patrick Seong

AY 2011 Oct Semester

Lecture 6: IP - Passing-off, Trademark, Copyright

AY 2011 Oct Semester

Liabilitybetweenpartners dependson partnershipagreement.

Partnership Formedby2ormore,butnotmorethan20 persons. Partnershipagreementdetermines managementandsharingofprofits.

Ngee Ann Polytechnic - Patrick Seong

outsiders unlimitedtothefullextentof partnershipdebt.

Minimum2partners+manager LLPisaseparatelegalentity Relationbetweenpartnersgovernedby agreement.

Ngee Ann Polytechnic - Patrick Seong

Alimitedpartner(e.g.aninvestororventure capitalist)isnotliableforthelimited partnershipsdebtbeyondtheamountofhis

Ngee Ann Polytechnic - Patrick Seong

Ngee Ann Polytechnic - Patrick Seong

AY 2011 Oct Semester

Lecture 6: IP - Passing-off, Trademark, Copyright

AY 2011 Oct Semester

Privatecompany(Pte. Ltd.) restrictionsin sharestransfer;notmorethan50 shareholders.Otherwise,itbecomesa

PublicCompany Acompanyisalegalentity anartificial person.Itsidentityisseparatefromits shareholders(members).

Ngee Ann Polytechnic - Patrick Seong

Forcomparisonbetweenapartnership,company, limitedliabilitypartnership,andalimited partnershipmodelsofbusinessorganisations, refertopages250 254ofthetextbook.

Intellectual Property Law

Ngee Ann Polytechnic - Patrick Seong

AY 2011 Oct Semester

Ngee Ann Polytechnic - Patrick Seong

Ngee Ann Polytechnic - Patrick Seong

Lecture 6: IP - Passing-off, Trademark, Copyright

AY 2011 Oct Semester

AY 2011 Oct Semester

Ngee Ann Polytechnic - Patrick Seong

AY 2011 Oct Semester

Ngee Ann Polytechnic - Patrick Seong

How can something that is intangible (cannot be touched) be protected?

How does the law extend its protection?

Ngee Ann Polytechnic - Patrick Seong

Lecture 6: IP - Passing-off, Trademark, Copyright

AY 2011 Oct Semester

Property rights protected by law - An overview

Confidential Information Law of Confidence

IDEA: Machine with AI

AY 2011 Oct Semester

Ngee Ann Polytechnic - Patrick Seong

AY 2011 Oct Semester

Ngee Ann Polytechnic - Patrick Seong

Intellectual Property protected by law - An overview

Common law tort of passing-off

Statutebased property rights

Common law property rights

Ngee Ann Polytechnic - Patrick Seong

Lecture 6: IP - Passing-off, Trademark, Copyright

AY 2011 Oct Semester

Passing-off - Reckitt & Colman Products v Borden Inc

Reckitt & Colman Products v Borden Inc (1990)

AY 2011 Oct Semester

Ngee Ann Polytechnic - Patrick Seong

AY 2011 Oct Semester

Ngee Ann Polytechnic - Patrick Seong