Speech by Mr. Louis Ng Kok Kwang, MP for Nee Soon GRC at the Second Reading of the Intellectual Property (Border Enforcement) Bill [Bill No. 24/2018]
Sir, I welcome this move to standardise border enforcement provisions across our Intellectual Property (IP) Acts.
These provisions allow information and documents possessed by the Government to be shared, upon request, for private purposes such as research, or to institute infringement proceedings.
I would like to raise questions and comments on amendments relating to requests for information, retention of allegedly infringing goods and implementation of Singapore’s EUSFTA obligations.
Requests for information/documents
Amendments to the four IP Acts provide authorised officers or senior authorised officers the power to require a person to provide information or documents for three purposes.
1, to satisfy a request for information, 2, to enable actions to be taken relating to future shipments of goods, and 3, for statistical or research purposes.
I would like to ask at the point of request, will the person whose information or document is being requested, be informed about the basis for this request?
Furthermore, will the period which the information or document be retained be limited to the purpose for which it has been requested?
Information/documents for statistical or research purposes
As for the amendment allowing officers the power to require a person to provide information or documents for a statistical or research purpose, can the Minister clarify whose statistical or research purposes these provisions refer to?
What safeguards are there to ensure that the information and documents will be kept confidential during the research process?
Information/documents for future requests
In addition, amendments to the four IP Acts provide officers powers to require a person to provide information or documents to fulfil future requests for the information to institute infringement actions.
How would the officer determine what information or documents might be required for the hypothetical proceedings? Would this lead to indiscriminate seizure of information or documents?
Also, how long would these information or documents be retained for? Would the retention period be subject to the limitation period of potential claims?
When the information or documents are obtained, would the person be informed of the possibility that their information would be provided to the copyright holder for the purposes of instituting private proceedings?
Provision of information for instituting an infringement action
Next, I understand that the amendments also allow the Director-General to provide a person information for instituting an infringement action.
The language of the provision which allows the provision of information relating to “any person connected” with the import or export of the seized goods is very broad.
What are the categories of connected persons intended to be covered by this provision?
Is there a limit again to the period that a person may request for the information to institute an infringement action?
Would the person whose information is being provided be informed of the fact that the information has been shared?
Retention of allegedly infringing goods
The Intellectual Property Students’ Association (IPSA), comprising of law students in both NUS and SMU, raised a number of concerns on the retention of allegedly infringing goods after their seizure and detention.
Currently, the Copyright and Trade Mark Acts simply states that the Director-General will specify a retention period for the goods, after which, it will be returned to the owner unless the objector files an infringement suit.
Can the Minister clarify the retention period for alleged infringing goods if an infringement suit is started? Will they only be released after the decision of the infringement suit is out? In the meantime, what remedy does the importer or exporter have?
Even if the goods are released to the original owner, pending the decision of the infringement suit, does this confer an automatic injunction on the original owner to sell the goods within Singapore?
If yes, does this injunction extend to being prohibited from further exporting the returned goods to another country and selling them there?
This could cause potential losses to the importer or exporter that may not be sufficiently remedied through the provision of security or damages.
One recommendation suggested by IPSA would be to have a review process called an “Indication” where a committee or IPOS tribunal has an expedited process for evaluating if the goods are indeed infringing.
They can issue an “Indication” which operates as a non-binding preliminary opinion on the matter. This can inform the objector or intellectual property right holder and the alleged infringer on how they should choose to resolve the matter.
Has the Ministry looked into setting up a similar review process?
Implementation of Singapore’s obligations under the EUSFTA
I also have a number of clarifications to make on the implementation of Singapore’s EUSFTA obligations. These were similarly highlighted to me by the Intellectual Property Students’ Association.
First, Article 10.50 of the EUSFTA requires customs authorities to adopt a range of approaches to “facilitate the effective enforcement of intellectual property rights”.
Under the EUSFTA this includes patents. Given that one of the purposes of the Bill is to “standardise the terms and provisions relating to border enforcement across the IP Acts”, why are patents not afforded the same enforcement processes as copyrights, geographical indications, trademarks and registered designs?
Further, can the Minister clarify why ex officio actions are not provided for the imports and exports of registered designs?
Next, there is a minor inconsistency between the definition of “counterfeit trademark goods” under the EUSFTA and the Bill.
Under the EUSFTA Article 10.48(b), it is defined as goods bearing a trademark that is identical or “which cannot be distinguished in its essential aspects”.
In contrast, it is defined under Section 3(5) and (6) of the Trade Marks Act (TMA) as a good that has a sign that is identical or is so identical “as to be calculated to deceive”.
This requirement of an intention to deceive is noticeably lacking from the EUSFTA’s definition, which therefore appears to be slightly broader than that under the TMA.
Can the Minister clarify the rationale for deviating from the EUSFTA definition of counterfeit trademark goods?
Sir, notwithstanding these clarifications, I stand in support of this Bill.