16 January 2015, Singapore. Given the international nature of intellectual property (IP), the newly launched Singapore International Commercial Court (SICC) has the potential to hear cross-border IP disputes. Persons whose disputes may only have tenuous connection to Singapore may choose to have them heard before Singapore’s highly respected, local and international commercial judges for quick resolution.
“KU DE TA” trade mark in Indonesia, Australia and Singapore
Like most IP rights that are commonly registered in multiple jurisdictions, the “Ku De Ta” restaurant, bar, lounge and club at the Marina Bay Sands Skypark in Singapore, had its trade mark registered in Indonesia, Australia and Singapore. Various law suits arose in Australia and Singapore. Eventually, the disputes over the trade mark and a licensing agreement were resolved at the Singapore Court of Appeal (Guy Neale and others v Nine Squares Pty Ltd [2014] SGCA 64). Had the SICC been set up one year earlier, this case, containing cross-border elements and involving foreign parties, may well have been designated for transfer to the SICC.
The SICC
Established as a division of the Singapore High Court and housed in the Supreme Court Building, the SICC moves up the value chain to join ranks with other international commercial courts in London (established since 1895), Dubai (since 2006) and Qatar (since 2009). It also complements arbitration and mediation venues e.g. the WIPO Arbitration and Mediation Centre Singapore Office set up to service the Asia Pacific region. In the Report of the Singapore International Commercial Court Committee, November 2013 (“Report”), paragraph 16 commented that while arbitration is effective in international disputes, its increasing currency has highlighted weaknesses that litigation in an international court is better placed to address – the coercive jurisdiction of a court may be necessary in a multiple party dispute. You can access excerpt of the Report by clicking the hyperlink. Further, some businesses may be pleased to know that under certain circumstances, the SICC is prepared to treat proceedings as confidential following a unilateral application. The SICC Practice Directions and the SICC User Guides (effective on 1 January 2015) deal with issues such as confidentiality before the courts, expert witnesses, conduct of hearings, enforcement, appeals, transfer of cases to the SICC from the Singapore High Court by the Chief Justice, and definition of offshore cases where registered foreign lawyers may represent parties. You can access them by clicking on the hyperlinks. According to the Report, the pricing in transferred cases should generally follow Singapore High Court fees, save where the connection with Singapore is not strong.
Since its opening in 2006, the Supreme Court Building has been constantly improving itself to handle increasing challenges. Apart from the infrastructure, the new Integrated Electronic Litigation System (eLitigation), an enhanced version of the old Electronic Filing System, has been incorporated into the system. Noteworthy features include the following:
- user-friendly features to provide law practices and court users a single access point for commencement and active case management of Court matters throughout the litigation process;
- a one-stop portal for all case-related interactions with the Courts;
- lawyers have 24/7 access to their own online case files to enable them to work at their matters at all times, anywhere. Documents can be filed round-the-clock at any place with Internet connection. They will be even alerted to new filings or documents in their case-files. With a single click, lawyers are able to look at information about the case, parties, hearings, documents right down to the fees paid on the documents filed.
IP Specialist Judges
IP is a valuable commercial component for businesses and this is reflected in the number of experienced IP specialist judges on the panel.
- Mr Simon Thorley Q. C. (Editor of “Terrell on the Law of Patents” 13th – 16th Editions”, counsel for Proctor & Gamble Co. in the patent case at the UK Court of Appeal Unilever PLC v The Proctor & Gamble Co.);
- Justice Tay Yong Kwang (copyright infringement case PH Hydraulics & Engineering Pte Ltd v Intrepid Offshore Construction and another);
- Justice Chan Seng Onn (trade mark infringement case Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd);
- Justice Chao Hick Tin and Justice Andrew Phang (copyright infringement case Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd);
- Chief Justice Sundaresh Menon (trade mark opposition case Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another); and
- Dr Irmgard Griss, former President of the Supreme Court of Austria and former President of the Network of Presidents of the Supreme Courts of the European Union.
How many cases would be adjudicated at the SICC in this initial year remains to be seen. Despite perceived shortcomings e.g. enforceability of its judgements, the SICC has been promoted as being fully operational and ready. The SICC’s first case could well be a cross-border IP dispute.
Disclaimer: The opinions expressed in this article are the sole responsibility of the author and do not necessarily reflect any position or policy of Goh Phai Cheng LLC (“the firm”). While every effort has been made to ensure that the information contained in this article is correct, neither the author nor the firm can accept any responsibility for any errors or omissions or for any consequences resulting therefrom. Nothing in this article is intended to amount to legal advice and professional opinion should be sought on a case by case basis.
All references with hyperlinks were last accessed on 16 January 2015.
Last updated: 20 January 2015