26 July 2018

On 9 July 2018, the Intellectual Property (Border Enforcement) Bill (“Bill”) was passed in Parliament. It was introduced in Parliament for first reading on 17 May 2018. The Bill seeks to amend the Copyright Act (“CA”), Trade Marks Act (“TMA”), Registered Designs Act (“RDA”) and Geographical Indications Act 2014 (“GIA”) (collectively “IP Acts”) to enhance the border enforcement measures for intellectual property rights (“IPR”), as well as implement Singapore’s obligations under the proposed Free Trade Agreement between the European Union (“EU”) and the Republic of Singapore (“EUSFTA”) concerning those measures.

In accordance with Singapore’s EUSFTA obligations (in the process of being ratified) and Singapore Customs’ operational needs, the implementation of the various key changes will be staggered over three phases. Sufficient notice will also be provided before the commencement of the relevant provisions. Consequently, businesses should expect to have sufficient time to adapt to the changes.

Set out below is a summary of the key changes under the Bill:

  • Enhanced border enforcement measures in CA and TMA: The existing border enforcement measures in the CA and TMA will be enhanced to allow the owner of a valid copyright or registered trade mark in Singapore, or a licensee, with the power to give a notice of seizure, to request Singapore Customs to seize suspected infringing goods which are prepared to be exported. Currently, IPR holders may only request for the seizure of suspected infringing goods that are imported. 
  • New regime under RDA for seizure of suspected infringing goods: The Bill will introduce a new regime under the RDA allowing IPR holders to request Singapore Customs to seize suspected infringing goods that are imported or to be exported. 
  • New powers for Singapore Customs to obtain and provide information: Singapore Customs will be empowered to provide IPR holders with the names and contact details of any person connected with the import or export of the seized goods that is necessary for instituting IPR infringement proceedings. To guard against abuse, IPR holders must provide Singapore Customs with a security deposit and supporting documents evidencing their IPR before the information will be provided. The Bill will also empower Singapore Customs to request any information or document that may be relevant for border enforcement purposes. 
  • Standardised terms and provisions on border enhancement: To streamline Singapore Customs’ border enhancement measures, the Bill will standardise and clarify the terms and provisions relating to border enforcement across the IP Acts. For example, the Bill will clarify the processes for ex officio seizures in the CA, GIA and TMA.

The border enforcement measures for geographical indications have already been introduced in the GIA that was passed in April 2014, but these have yet to come into force.

Practical implications 

The Bill will grant enhanced powers to IPR holders to prevent the export of goods and IPR holders may utilise the border enforcement measures to protect rights under the RDA which was not available previously.

In addition to plugging gaps in the pre-existing border enforcement measures, the Bill goes further to provide a mechanism for IPR holders to obtain relevant information relating to seized goods which will aid IPR holders in commencing and prosecuting infringement proceedings.

Reference materials

The following materials are available on the Parliament website www.parliament.gov.sg and the Ministry of Law website www.mlaw.gov.sg:

 

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