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25 February 2022

On 23 February 2022, the Ministry of Law (“MinLaw”) posted an announcement on its website www.mlaw.gov.sg about upcoming new legislation on court procedures for intellectual property (“IP”) disputes. The new Supreme Court of Judicature (Intellectual Property) Rules 2022 (“new Rules”), which will implement an optional track for IP litigation, is expected come into force from 1 April 2022. The optional track for IP litigation will be named the “Simplified Process for Certain Intellectual Property Claims” (“Simplified Process”).

The new Rules will also consolidate the Rules of Court that relate to IP rights in a single piece of legislation, implement obligations to notify the Registrar of Designs, Geographical Indications, Patents and Trade Marks under the Intellectual Property Office of Singapore of certain IP proceedings in the Supreme Court, and harmonise related provisions across the different IP rights.

Draft version of new Rules

MinLaw has made available a draft version of the new Rules for interim reference to provide stakeholders sufficient time to be familiar with and prepare for the new legislation. The draft version of the new Rules is currently being vetted and there may be further changes.

Some key features of the Simplified Process based on the draft version of the new Rules are as follows:

  • A claim is suitable for the Simplified Process where:
    • the dispute involves an IP right, including disputes over copyright, trade marks, patents, passing off claims and confidential information / trade secrets;
    • the monetary relief claimed in the action does not or is not likely to exceed S$500,000, or all parties agree to the application of the Simplified Process; and
    • the case is otherwise suitable for the Simplified Process, having regard to (among other things) whether a party can only afford to bring / defend the claim under the Simplified Process and whether the estimated length of trial is likely to exceed two days.
  • The claimant can elect for the Simplified Process to apply to its claim if it abandons any claim for monetary relief in excess of S$500,000. The court may also make an order for the Simplified Process to apply (either on its own motion or on a party’s application) if the court considers the claim suitable for the Simplified Process.
  • For claims under the Simplified Process, the total costs recoverable is subject to an overall cap of S$50,000 for the trial of the claim, and an overall cap of S$25,000 for any bifurcated assessment as to the amount of monetary relief.

The introduction of the Simplified Process provides parties with a more affordable and expedited route to enforce their IP rights in Singapore, and lends greater predictability in terms of costs exposure in IP litigation.

The finalised new Rules will be published before coming into force on 1 April 2022.

Background

In 2015, MinLaw appointed a committee to review the IP dispute resolution system (“IPDR Committee”) in Singapore to enhance its accessibility, particularly for individuals and SMEs. One key recommendation from the review is to establish an optional track for IP litigation, which contains several features aimed at facilitating quicker and more cost-effective dispute resolution.

Our Partner and Head of Intellectual Property Practice Dr Stanley Lai, SC was a member of the IPDR Committee.

In October 2018, MinLaw conducted a public consultation on reforms to enhance access to the court system for IP disputes, including the implementation details of the optional track for IP litigation. For more about the public consultation, please read our article titled “MinLaw consults on proposed reforms to IP dispute resolution system.