legal lecture 6 handouts ip tm po copyright

8/3/2019 LEGAL Lecture 6 Handouts IP TM PO Copyright

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Lecture 6: IP - Passing-off, Trademark, Copyright AY 2011 Oct Semester

Ngee Ann Polytechnic - Patrick Seong 1

Legal Frameworkfor Social Enterprise

Lec tu re 6

Business organisat ions

Law o f In te l lec tua l Proper ty

Passing of f Trade mark s ;

Copyr ight

AY 2011 Oct Semester Ngee Ann Polytechnic - Patrick Seong 1

Learning objectives:

By the end of this lecture, you will

Have basic knowledge about business

organisations

Know the difference between the law of passing-

off and rights under the Trade Marks Act

Be familiar with copyright laws as it applies to

Classical Rights and Entrepreneurial Rights.


Inthecontextofbusinesslaw,thelaw Recognises theexistenceofapersonwithrights

andliabilities. Createsanartificialpersonintheformofan

incorporatedentity company,corporation,statutorybodies,etc.

Createsanartificialpersonintheformofanunincorporatedentity societies,clubs,etc.

Refer: Chandra R. (2006), Introduction to Business Law inSingapore(4th Edition), Chapter 10

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atrick

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Maintypesofbusinessorganisations. Soleproprietorship Partnership

LimitedLiabilityPartnership(LLP) Limitedpartnership Company

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Soleproprietorship Businessownsby1person; unlimitedliability;nosharingofprofits.

Partnership

Formedby2ormore,butnotmorethan20persons.

Partnershipagreementdeterminesmanagementandsharingofprofits.

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Partnership

Actofonepartnerbindsallpartners. Liabilitybetweenpartners dependson

partnershipagreement. Liabilitybetweeneachofthepartnersand

outsiders unlimitedtothefullextentofpartnershipdebt.

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LimitedLiabilityPartnership(LLP) Minimum2partners+manager LLPisaseparatelegalentity Relationbetweenpartnersgovernedby

agreement.

The liabilities of the LLP is met out of

the property of the LLP.

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Limitedpartnership Oneormoregeneralpartners+oneormore

limitedpartners Ageneralpartnerisliableforalldebtsand

obligationsofthelimitedpartnership. Alimitedpartner(e.g.aninvestororventure

capitalist)isnotliableforthelimitedpartnershipsdebtbeyondtheamountofhisagreedcontribution.

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Company

Privatecompany(Pte. Ltd.) restrictionsinsharestransfer;notmorethan50shareholders. Otherwise,itbecomesa

PublicCompany

Acompany

is

a

legal

entity

an

artificial

person. Itsidentityisseparatefromitsshareholders(members).

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Company

Theliabilityofthecompanyitselfisunlimited. Theliabilityoftheshareholders

Companylimitedbyshares:shareholdersliableuptothevalueofthesharestakenup.

Companylimitedbyguarantee:shareholdersliableuptotheamounteachhadguaranteedwhenthecompanywasformed.

Companyisunlimited:shareholdersliableforthefullamountowedbythecompany.

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Forcomparisonbetweenapartnership,company,limitedliabilitypartnership,andalimitedpartnershipmodelsofbusinessorganisations,refertopages250 254ofthetextbook. AY20

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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.


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?


How can something that is intangible

(cannot be touched) be protected?

How does the law extend its protection?



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IDEA:Machinewith AI

DESIGN: How tomanufacture the

machine

The PROCESS in makingthe PRODUCT and theproduct is protected

ConfidentialInformation

Law ofConfidence

RegisteredDesigns Act

Patents Act

Common law Passing

off

TradeMarks Act

An Overview


Property rights protected by law - An overview

Property

Examples: Land; house

Real Property Personal Property

Intangible TangibleProperty rights that can beenforced only by legal action

Examples: cars, books,computers, etc

Intellectual Property Others

Example: right topayment of debt


Intellectual Property protected by law - An overview

Intellectual Property

Trade Marks Act

Copyright Act

Patents Act

Registered DesignsAct

GeographicalIndications Act

Passing-off

Statute-based

property

rights

Common lawproperty

rightsLaw 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.

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.

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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.

Passing-off


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.

Passing-off - Reckitt & Colman Products v Borden Inc


Common law right of passing-off

Reckitt & Colman Products v Borden Incestablished 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.



Goodw i l l & Reputat ion

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 inJapan (reputation), but notsold in some countries(no

goodwill)AY 2011 Oct Semester Ngee Ann Polytechnic -Patrick Seong 24


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Misrepresentat ion

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.


Common law right of passing-off - misrepresentation

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)


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.AY 2011 Oct Semester Ngee Ann Polytechnic -Patrick Seong 27


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.



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Common law right of passing-off - Damage

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.


Common law right of passing-off -Da mage

Injurious association with the Defendant

Plaintiff has to show

o The defendants business is not reputable. This will affect

the Plaintiffs reputation;

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.


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.

Common law right of passing-off - Damage


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.

Common law right of passing-off -Da mage



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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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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.

Trade Mark protection


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 - purposes



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Passing-off Registered Trade Mark

Common Law Statutory

Mark not registered ornot registrable

Mark must be registered

Protects the goodwill Protects the mark

To prove acquisition of goodwill &reputation,

misrepresentation and damage

To prove infringement ofregistered trade mark

Comparison

Trade Mark passing-off comparison


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 mustbe provided in the course of trade

Trade Mark - meaning


(Trade Mark means any sign capable of being represented graphically.)

Sign includes any

Letter Word

Name Signature

Numeral Device

Brand Heading

Label Ticket Shape Colour

Aspect of packaging

or any combination thereof

Section 2(1) Trade Marks Act



Trademarksusedinrelationtogoods

Signrepresentedgraphically intheformof

LeTterWord

Name

Shape Colours

Capableofdistinguishing

goodsdealt

withinthe

courseof

business



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Sign The Godfather Represented

graphically in theform of letter, word,shape

Can it be registered as a trademark?

A trade mark is Sign represented

graphically in the formof

Letter

word

name

shape


Sign ?

www.LoveByte.org.sg Represented

graphically inthe

formof?

o Letter

oWord

oshape

Can it be registered as a trademark?


Sign ?

The Blend

Taste No.

117

Representedgraphically inthe

formof?

o Letter

oWord

o Numeral


Sign ?

InterSolar Represented

graphically inthe

formof?

o LetteroWord

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 inthe

formof?

o signature


Sign ?

BelvedereVolka

Represented

graphically inthe

formof?

o aspectofpackaging


Sound may be represented by musical notations andregistrable as a trade mark.



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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.


Duration of registered mark

A registered trade mark is valid for

ten years and

renewable for

10-year periods.

(Section 18 Trade Marks Act)


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.

Trade Mark - classification

Example: If aperson wants toregister a trademark to beattached to hisnew line ofclothing, he has toapply forregistration underClass 25



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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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ABSOLUTE GROUNDS TO REFUSE

REGISTRATION OF TRADE MARKS

Not a trade mark within the definition of

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

Tee Yi Jia

devoid of distinctive character

Marksstatus:Refused



Wholly descriptive marks

are not registrable.

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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Private Label

wholly descriptive

Marksstatus:Refused




Marks common to the trade


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.

Example: escalator, chair, concierge, etc.




Uncle Doc

customary in the tradeMarksstatus:Refused




Marks Contrary to Public Policy or Morality


Example: a mark that could promote immoral

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

Proposed mark Identical

Goods and services

No registration of proposed mark

Existing Registered mark

Identical Goods and services

Section 8(1) Trade Marks Act

Marks that are Identical to Earlier Marks



Relative Grounds for refusal of Registration of trade marks

Proposed mark Identical

Goods and services



Similar Goods and services

there exists a likelihood of confusionon the part of the public.

Section 8(2)(a) Trade Marks Act

Marks that could Cause Confusion



Proposed mark

Goods and services



Identicalor Similar Goods and services

there exists a likelihood of confusionon the part of the public.

Similar

Section 8(2)(b) Trade Marks Act

Relative Grounds for refusal of Registration of trade marks

Marks that could Cause Confusion



uses a mark similar to a registered trade mark in respectof identical or similar goods or services.

There is infringement of trade mark if a person




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Starbucks vs. Starpreya16 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.


Starpreyas Truck

Starbucks in Korea


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.

Starbucks vs Starpreya


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 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

another person of the works.AY 2011 Oct SemesterNgee Ann Polytechnic - Patrick Seong69

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.

Copyright

AY 2011 Oct SemesterNgee Ann Polytechnic - Patrick Seong70

Copyright protection

Two broad categories of rights

Classical rightsSections 7, 7A CA

Entrepreneurial rightsSections 82 86 CA

Classical Works

Literary works

(includes compilation, computer programs)

Musical works

Dramatic works

Artistic works

(includes painting, sculpture, drawing,engraving or photograph, a building ormodel of a building)

Sound recordings

Cinematograph films

Television & soundbroadcasts

Cable programmes

Published editions ofworks

The person who created the soundrecordings, films, etc are usuallynot the authors of the originalworks neighbouring rights

Entrepreneurial Works


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 createsimilar works and still own copyright to their respective

works.

o Does not mean excellent work.

It was a previously unpublished work

(Section 27(2) Copyright Act) AY 2011 Oct SemesterNgee Ann Polytechnic - Patrick Seong72


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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).

Copyright -Classical rights exclusive right


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 ofSingapore.

Broadcast by a person holding a broadcasting

licence.

(sections 87, 88, 89 Copyright Act) AY 2011 Oct SemesterNgee Ann Polytechnic - Patrick Seong74

Copyright Entrepreneurial rights criteria to obtain copyright

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)


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 )

Copyright Entrepreneurial rights exclusive right



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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 re-

broadcast; to communicate with the public.

(section 84 CA )



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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Nature of the original work

Whether there is copyright infringement depends on the

nature of the work being copied.

COMPLICATED WORK

Work beingcopied

SIMPLE WORK

e.g. elaboratepainting by an

artist

Major change

Major change

Minor change

Minor change

No infringement. Copiercan obtain own copyright

Slavish copy Likely to beinfringement. Copier cannotobtain own copyright

No infringement. Copiercan obtain own copyright

e.g. drawing of table with 4 legs

May not be infringement.Copier may be able to obtainown copyright based on theminor change.


Copyright infringement

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.


Copyright infringement

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 ordomestic use.

Copyright infringement if


Duration of Copyright

General rule for classical works: authors life + 70

years

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 yearsAY 2011 Oct SemesterNgee Ann Polytechnic - Patrick Seong84


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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.

(section 119 CA)AY 2011 Oct SemesterNgee Ann Polytechnic - Patrick Seong85

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)AY 2011 Oct SemesterNgee Ann Polytechnic - Patrick Seong86

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