The rivalry between Colin and Cuthbert: A commentary on the potential issues in product design trade marks

Written by: YANG Zhuoyan of IPSA Core Team

Edited by: Denise THIA of IPSA Core Team

Did you know that some of the “knock-off” versions of your beloved snacks found at dollar stores may be at risk of legal liability?

In April 2021, the British retail giant, Marks and Spencer Plc (“M&S”) filed a trademark infringement and passing off claim against the UK-affiliate of the supermarket chain, Aldi Stores Ltd (“Aldi”) with the UK High Court. It was alleged by M&S that Aldi’s newly released cake, Cuthbert the Caterpillar (“Cuthbert”), was an actionable imitation of its own Colin the Caterpillar cake (“Colin”). Since its launch some 30 years ago, Colin had brought in enormous and consistent sales for M&S[1], so it was no surprise that the retailer would seek to protect its leadership in this particular market.

Spot the difference? (left: Aldi’s Cuthbert before it got taken off shelves https://www.theguardian.com/business/2021/apr/15/ms-takes-aldi-to-court-over-colin-the-caterpillar-look-alike-cake ; right: M&S’ design trade mark registered with the UK IPO https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003509740)

In intellectual property law, product imitations may constitute trade mark infringement under statutory legislation, and/or the common law action of Passing Off. As UK and Singapore laws are substantially similar in this area, this dispute provides a good window to discuss some trade mark issues a business might face in Singapore. If, hypothetically, this M&S v Aldi dispute takes place in Singapore, what would the possible outcome be?

Infringement under the Trade Marks Act

Generally, unique elements of food products, including its name, label, shape and colour, among others, may be registered as a protected trade mark. Protection under trade mark legislation are only given to marks registered. In M&S’ case, a quick search with the UK Intellectual Property Office (“UKIPO”) reveals that the only registered Colin-related marks are the above packaging[2] and a simple word mark for “COLIN THE CATERPILLAR”[3].

Under Section 27 of Singapore’s Trade Marks Act (Cap 332) (“TMA”), any use of registered marks without the consent of the trade mark’s registered proprietor(s) may amount to infringement if a person uses a ‘sign’ (what marks are called before they are officially registered):

  1. which is identical, or similar to the registered mark; and
  2. the sign is used in relation to goods or services identical with, or similar to those for which the trade mark is registered; and
  3. because of the above, there exists a likelihood of confusion on the part of the public.

An alleged infringer, like Aldi, may claim that there is no infringement by proving that there is unlikely to be confusion amongst the public.

Principally in Singapore, the confusion inquiry comprises first and foremost a consideration of marks-similarity on consumer perception which comprise these factors: the degree of marks-similarity; the reputation of the marks; the impression given by the marks; and the possibility of imperfect recollection of the marks.

One relevant point that may be made here is that, at least in the UK market, Colin does seem to possess a strong reputation which may ironically have the reverse effect of decreasing likelihood of confusion.[4]

Next, another set of factors relating to the effect of goods-similarity on consumer perception is also admissible, these are:

  • the normal circumstances under which consumers would purchase goods of that type;
  • whether the products are expensive or inexpensive items;
  • the nature of the goods and whether they would tend to command a greater or lesser degree of fastidiousness and attention on the part of prospective purchasers; and
  • the likely characteristics of the relevant consumers and whether they would or would not tend to apply care or have specialist knowledge in making the purchase.[5]

Some factors here lean in favour of a finding of confusion: both products being off-the-shelf supermarket offerings, primarily purchased physically, and both being inexpensive consumables, may collectively mean that the consumer is less discerning and less likely to take extra effort to inspect the marks attached to the goods. To elaborate on factor (ii), it is impermissible to consider a trader’s superficial marketing choices[6] or insignificant price disparity between competing goods[7]. For instance, the fact that Colin, like many M&S products, are supposedly marketed towards more high-end consumers is not material. While Colin is no doubt more expensive than Cuthbert[8], the disparity is probably insufficiently large to distinguish the two. One example of price difference being accepted in local jurisprudence concerned a case of similar marks used by a fast casual chain and by a fine dining restaurant[9].

In response, however, Aldi may seek to adduce evidence that there is a growing interest in novelty cakes (something not too farfetched given the various lifestyle columns and blog posts made on it even prior to the dispute[10]), and thus the relevant segment of the public is unlikely to be confused[11].

Invalidation of Registration

In the case of Colin, what if there was a dispute over the cake’s caterpillar-shape as a mark (notably, this is a matter of pure conjecture as there is no known registration of the shape with the UKIPO)?

A common counter-argument raised in this regard is that the mark should not have been allowed registration in the first place – without a registered mark, there is no basis under the TMA to bring infringement proceedings. Notably, the fact that a mark was previously allowed registration by the relevant trade marks office is not a bar to the court’s invalidation of the same.

There are a several grounds for refusal or invalidation of a mark’s registration under Sections 7 and 8 of the TMA. Specifically, Section 7(3) warrants greater attention when it comes to product designs; under which, a sign cannot be registered if it consists exclusively of a shape which either: a) results from the nature of the goods themselves; b) is necessary to obtain a technical result; or c) gives substantial value to the goods.

Given that registered trade marks can potentially exist in perpetuity with renewal, the purpose of s 7(3) is to prevent trade mark protection from granting its proprietor a monopoly over technical solutions or functional characteristics of a product which users are likely to seek in the products of competitors.[12] This prevents trade mark law from overreaching beyond core principles of protecting a trader’s badge of origin. A shape which is functional may be more appropriately governed by the Registered Designs Act[13] or Patents Act[14], which has a shorter maximum IP-lifespan of 15 and 20 years, respectively.

Section 7(3)(b)

In the 2016 Singapore Court of Appeal (“SGCA”) case of Nestlé v Petra Foods (the “Kit Kat case”)[15], there was a similar dispute concerning the imitation of the shape of the ‘Kit Kat’ chocolate-wafer product. The Court stated that the test for ascertaining whether a shape mark was caught by the “technical result” prohibition in Section 7(3)(b) of the TMA is to first identify the essential characteristics of the shape mark, following which, determine whether each essential characteristic performed a technical function (with the aid of expert evidence from industry insiders, of course).

KitKat’s registered shape mark which was subsequently invalidated (image source: Société des Produits Nestlé SA v Petra Foods Ltd [2016] SGCA 64)

Courts and/or registration offices will scrutinize even the most unassuming design detail to answer these questions. For instance, the SGCA in the Kit Kat case agreed that each essential feature of the familiar Kit Kat ‘fingers’ sign (pictured above) was attributable to a technical result based on these reasons: (a) the rectangular “slab” shape was to facilitate manufacturing speed and resource efficiency; (b) the presence, position and depth of the breaking grooves was necessary to facilitate consumers’ breaking up of a larger rectangular slab of chocolate bar into smaller neat finger-like pieces with the appropriate proportions of a suitable size each time for eating.; and (c) the number of breaking grooves in each slab was necessary to obtain optimum portion size within fixed retail conventions.

Returning to Colin’s case, the caterpillar’s ‘body’ segments may serve the technical function of making cake portions easily sliceable[16], much like the grooves of Kit Kat bars. On the other hand, it would be difficult to argue that other essential features, like Colin’s face, have any practical purpose beyond amusing consumers.

Section 7(3)(c)

Perhaps, this provision would be more applicable to a product like Colin. Under s 7(3)(c), a sign cannot be registered if it consists exclusively of a shape which gives substantial value to the goods. While this sub-section may overlap with the other section 7 indents[17], it is concerned primarily with the substantial value brought about by the shape’s aesthetics.

The artistic value of the shape, whether the shape itself forms the core of a promotion strategy and the target public’s perception of the shape, are some assessment criteria which may be used to determine whether this ground for refusal is applicable.[18] However, when considering whether a shape gives substantial value to the goods, the court does not take into account the value added to the goods as a result of the trade mark function of the shape.[19] 

Critically, the court would compare the shape sought to be registered/invalidated and shapes of equivalent articles, and it is only if the shape has substantial value in relative terms that it will be excluded from registration.[20] Of course, the fact that the shape may be pleasing or attractive is not sufficient to exclude it from registration because if that were the rule, it would be virtually impossible to imagine any trade mark of shape.[21] The question is thus one of degree, and is ‘whether the shape is of such appeal that it would be improper for a trader to monopolise it for an indefinite amount of time’.[22]

To analogize, the Singapore High Court in the Kit Kat case held that the Registered Shapes were not particularly eye catching in relation to other competing confectionary products in the market to have given it “substantial value”. This was because the date of assessment is the time of registration, in that case being year 2000, when a shape like Kit Kat’s fingers is relatively ordinary.[23]

Likewise as for Colin’s shape, depending on the time at which registration was made (hypothetically speaking),  the strength of evidence supporting its aesthetic appeal may change[24]. The fact that there have been copycats may suggest that monopolizing the caterpillar shape is improper but there is also no shortage of novelty cakes in the market such that consumers would be drawn to Colin simply because of its shape[25]. A proper analysis in relation to this absolute ground of refusal is certainly a fact-sensitive exercise which is beyond the scope of this article.

What if the claimant had not registered its sign?

Well Known Trade Mark

As noted earlier, the caterpillar shape is not registered. In this regard, M&S may argue under the basis of taking of an unfair advantage of their well known trade mark. Under s 55 TMA, a mark which is unregistered may still be considered a “well known trade mark” , provided that it belongs to a person who is domiciled under the laws of a Paris Convention country (which includes the UK and Singapore) and is not deemed unregistrable because of an absolute ground of refusal under the TMA[26] (discussed in the previous section).

s 55(3)(b)(ii) of the TMA provides that where a proprietor’s trade mark is well known to the public at large in Singapore, he may ask the court to restrain any unconsented use of a trade mark (or an essential part of that mark) which is similar to the proprietor’s trade mark where the use of the trade mark would take unfair advantage of the distinctive character of the proprietor’s trade mark. The unfair advantage claim is aimed at preventing exploitation and free riding on the reputation of the mark.[27]

The first step in an unfair advantage claim is to determine whether the mark is “well known to the public at large in Singapore”; this means the mark has to be recognized by most, though not all, sectors of the public[28]. This is answered with regard to (among others) the degree to which the trade mark is known to or recognized by any relevant sector of the public in Singapore[29]; the duration, extent and geographical area of trade mark use or any promotion of the same[30]. For M&S, the statistical evidence in terms of their efforts in promoting the Colin shape and actual consumer perception from evidence like surveys would be critical[31]. Next, there must be existence of a mental association between the two marks, although confusion is not necessary[32]. Thus, while the infringement claim may fail for want of confusion, M&S may nevertheless succeed here.

Critically, the concept of unfair advantage relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.[33] Interestingly, representatives of M&S have used the same phrasing of “riding on coat-tails” in press releases[34], pointing towards this cause of action being a part of M&S’ arsenal.

In determining whether an unfair advantage had been taken, there are several factors to consider, and a global assessment of all of them will be undertaken in a highly fact-sensitive enquiry. Some factors include (but is not limited to): the strength of the mark’s reputation and the degree of distinctive character of the mark; the degree of similarity between the marks at issue; the nature and degree of proximity of the goods or services concerned; and the immediacy and strength with which the mark is brought to mind by the sign.[35] Should unfair advantage be found, there may be significant ramifications in the UK confectionary industry as there are already multiple Colin look-alikes floating around.

Law of Passing Off

In the event that a proprietor had not registered their sign or their registration is limited to say, the product name, it would be necessary for the owner of the sign to seek recourse by way of a claim under Passing Off. Briefly, this is a common law tort with the basic principle that a trader should not sell his or her goods or services under the pretext that they are the goods or services of another[36]. It requires (in both UK and Singapore) that:

  1. the claimant has goodwill or reputation attached to its business[37];
  2. the sign to be protected is sufficiently associated or distinctive of the claimant’s business;
  3. there is misrepresentation in that the alleged infringer holds itself to be, or be connected with, the claimant’s business thereby giving rise to confusion; and
  4. the owner is likely to suffer damages due to such misrepresentation.

Evidently, Passing Off may be a more difficult legal solution due to the need to prove goodwill and further, that people associate a given sign with the business. Presently however, M&S can likely easily establish goodwill given its immense popularity and reputation in the UK. Realistically, if Passing Off were to be raised by M&S in this case, it would likely be in related to unregistered elements – i.e. the get-up of Colin.[38] In this regard, the problem may lie with distinctiveness, a threshold inquiry to finding misrepresentation. If a mark or get-up is not distinctive of the plaintiff’s products or services, the mere fact that the defendant has used something similar or even identical would not amount to a misrepresentation that the defendant’s products or services are the plaintiff’s or are economically linked to the plaintiff.[39]

While Colin is purportedly a “national tasty treasure”[40] with more than 30 years of existence[41], whether its shape and visual features is sufficiently distinctive of M&S is another question. The relevant public must view the get-up[42] in question as an indicator of its trade origin[43]. A good example of distinctiveness would be how most can immediately associate the Nike “tick” with the Nike brand itself, but inherent distinctiveness in a shape is relatively rare[44]. This is because there is a nuanced difference between consumers recognizing a shape as a characteristic of products or the product and brand with which they have become familiar on one hand, and actually coming to perceive the shape as a badge of origin, such that they would rely solely on that to identify the products as coming from a particular source.[45] It may be argued that Colin is often seen in posters on its own, only bearing M&S’ house sign at inconspicuous areas – but more evidence may be needed to show that the public can immediately associate the shape of Colin with M&S directly, as opposed to merely ‘Caterpillar Cake’ or even ‘Colin the Caterpillar’.

Conclusion

The devil is in the details. Based on our brief discussion in this piece, M&S may not necessarily have sure-win victories in either a claim of trade mark infringement and/or Passing Off. Much will depend on the arguments and evidence presented to convince the court, crucially, that the British public are likely to confuse Cuthbert as being Colin or is a product of M&S’s.

Already, some commentators have satirized M&S’ commencement of the lawsuit[46], and others have perceived M&S’ actions as protectionism[47]. Aldi’s out-of-court retaliations using social media[48] also adds further fuel to the ongoing fire. M&S’ victory in court would really be a much-needed aid to wiggle itself out of this precarious PR situation.

IPSA curiously anticipates the UK High Court’s judgment.


IPSA is a student-led interest group and the above article is a reflection of the author’s opinions, and not professional legal advice for any matter. All errors are the author’s own.


[1] https://www.theguardian.com/food/2020/sep/03/colin-the-caterpillar-at-30-how-a-supermarket-cake-stole-the-nations-heart

[2] https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003509740 (last accessed 28 June 2021).

[3] https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002499694 (last accessed 28 June 2021).

[4] e.g. McDonald’s Corp v Future Enterprises Pte Ltd [2005] 1 SLR(R) 177.

[5] Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2017] SGCA 30 at [56].

[6] The Polo/Lauren Company, L.P. v Royal County of Berkshire Polo Club Ltd [2017] SGIPOS 19 at [119]-[120].

[7] Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825 (HC) at [181].

[8] 2.01 British pounds cheaper, to be exact: https://www.dailymail.co.uk/news/article-9474381/Colin-Caterpillar-M-S-sues-Aldi-4-99-Cuthbert-Caterpillar.html

[9] Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825 (HC).

[10] https://www.mirror.co.uk/money/colin-caterpillar-many-lookalikes-ultimate-23938440; https://www.huffingtonpost.co.uk/entry/ms-colin-the-caterpillar-cake-the-best-we-tried-5-supermarket-rivals_uk_5d89da0ae4b0938b5933c104

[11] e.g. Taylor, Fladgate & Yeatman Limited v Taylors Wines Pty Ltd [2014] SGIPOS 11; Bacardi & Company Limited v G3 Enterprises, Inc [2015] SGIPOS 17.

[12] Philips v Remington [2006] EWCA Civ 16; the same general purpose underlies all three sub-sections of Section 7: see Hauck GmbH & Co KG v Stokke A/S (ECJ) [2014] Bus LR 1284 (CJEU) at [20].

[13] Cap 266.

[14] Cap 221; see comments in Société des Produits Nestlé SA v Petra Foods Ltd [2016] SGCA 64 at [76].

[15] Société des Produits Nestlé SA v Petra Foods Ltd [2016] SGCA 64.

[16] https://www.theguardian.com/food/2020/sep/03/colin-the-caterpillar-at-30-how-a-supermarket-cake-stole-the-nations-heart

[17] Hauck GmbH & Co KG v Stokke A/S (ECJ) [2014] Bus LR 1284 (CJEU).

[18] Hauck GmbH & Co KG v Stokke A/S (ECJ) [2014] Bus LR 1284 (CJEU).

[19] Societe Des Produits Nestlé SA v Petra Foods Ltd [2014] SGHC 252 at [134].

[20] Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809

[21] Office for Harmonization in the Internal Market (OHIM) (Trade Marks and Designs), Third Board of Appeal, Case R 395/1999-3, 3 May 2000, at [33]

[22] Societe Des Produits Nestlé SA v Petra Foods Ltd [2014] SGHC 252 at [142].

[23] Societe Des Produits Nestlé SA v Petra Foods Ltd [2014] SGHC 252 at [143]-[145].

[24] Opinion of Advocate General Szpunar delivered on 6 February 2018, Christian Louboutin and Christian Louboutin Sas v van Haren Schoenen BV, EU:C:2018:64 at [51].

[25] Eleonora Rosati, “The absolute ground for refusal or invalidity in Article 7(1)(e)(iii) EUTMR/4(1)(e)(iii) EUTMD” (2020) Journal of IP Law & Practice 15(2), 103-122- at 109.

[26] Société des Produits Nestlé SA v Petra Foods Ltd [2016] SGCA 64 at [127]-[137].

[27] Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA [2012] SGCA 56 at [90].

[28] City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2009] SGCA 53 at [94].

[29] TMA, s 2(7)(a).

[30] TMA, s 2(7)(b).

[31] Rolex S.A. v FMTM Distribution Ltd [2020] SGIPOS 6 at [110].

[32] Ng-Loy Wee Loon, Law of Intellectual Property of Singapore (2014) at [21.5.51].

[33] L’Oréal SA v Bellure NV (C-487/07) [2010] Bus LR  303 at [41].

[34] https://metro.co.uk/2021/04/15/ms-sues-aldi-because-cuthbert-the-caterpillar-is-too-similar-to-colin-14414732/ (last accessed 11 July 2021)

[35] Swatch AG (Swatch SA) (Swatch Ltd) v Apple Inc. [2019] SGIPOS 1 at [123]; Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA [2011] SGHC 176 at [182]-[186].

[36] Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) [2016] 4 SLR 86 at [26].

[37] Tuitiongenius Pte Ltd v Toh Yew Keat [2021] 1 SLR 231 at [80].

[38] The term “get-up” is normally used in passing-off to mean the whole visible external appearance of goods in the form in which they are likely to be seen by the public before purchase.

[39] Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) [2016] 4 SLR 86 at [38].

[40] https://www.marksandspencer.com/ie/c/food/not-just-any-food/mands-brands/colin-the-caterpillar

[41] https://www.goodhousekeeping.com/uk/food/a33631942/original-colin-the-caterpillar-cake-1990/

[42] The term used in passing-off to mean the whole visible external appearance of goods in the form in which they are likely to be seen by the public before purchase. The packaging for Colin is a see-through box.

[43] Tuitiongenius Pte Ltd v Toh Yew Keat [2021] 1 SLR 231 at [88].

[44] e.g., Nations Fittings (M) Sdn Bhd v Oystertec Plc [2006] 1 SLR(R) 712.

[45] Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358 at [78]; Société des Produits Nestlé SA v Petra Foods Ltd [2016] SGCA 64 at [44] (both in context of distinctiveness for trade mark registrability).

[46] https://www.retailgazette.co.uk/blog/2021/04/marksandspencer-collin-caterpillar-cake-cuthbert-aldi-memes

[47] https://www.theguardian.com/business/2021/apr/18/caterpillar-wars-time-to-pick-sides-in-battle-of-colin-v-cuthbert

[48] https://www.independent.co.uk/life-style/food-and-drink/colin-caterpillar-aldi-m-s-lawsuit-b1834469.html

MARINER and SUBMARINER: an interesting fight over (and under) the sea

Written by: Claudia BORGHINI of the IPSA Core Team
Edited by: YANG Zhuoyan; Denise THIA of the IPSA Core Team

Rolex S.A. v FMTM Distribution Ltd [2020] SGIPOS

In a game which saw two luxury companies fighting for the protection of their respective marks, Rolex S.A. (“the Opponent”), succeeded in its opposition against the registration of a trademark by FMTM Distribution Ltd (“the Applicant”), under Section 8(2)(b) and Section 8(7)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”), and failed under Section 8(4)(b)(i) and Section 8(4)(b)(ii).

The marks in question are MARINER (“the Application Mark”), and SUBMARINER (“the Opponent’s Mark”), which was registered in Singapore in 1959. 

This article looks at the above decision with particular focus on trade mark opposition on the ground of likelihood of confusion under Section 8(2)(b) of the Act.

Distinctiveness as a touchstone of the marks-similarity enquiry

It is recalled that the Singapore Court of Appeal (“SGCA”) in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 (“Staywell”)at [22] made a crucial distinction between two different aspects of “distinctiveness”:

First, there is distinctiveness in the ordinary and non-technical sense which refers to what the average consumer may recall as the outstanding and memorable aspect about the mark. The average consumer “only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has in his mind” (Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97) [1999] 2 CMLR 1343 at 1358 and Ozone Community  Crop v Advance Magazine Publishers Inc [2010] 2 SLR 459 [18] at [50]). Here, the court is entitled to have special regard to the distinctive or dominant components of a mark, even while it assesses the similarity of the two marks as composite wholes (Staywell at [23]).

On the other hand, distinctiveness in the technical sense refers to the capacity of a mark to function as a badge of origin. Technical distinctiveness can be inherent or acquired – the former, usually where the words comprising the mark are meaningless and can say nothing about the goods or services; and the latter, notwithstanding being descriptive, come to acquire the capacity to act as a badge of origin through long-standing or widespread use.

A particular element or component with a high degree of technical distinctiveness can have a bearing on whether that component or element is found to be the dominant and distinctive element of the mark in the non-technical sense. Rolex S.A. demonstrates the continued application of these principles laid down in Staywell.

The crux of the opposition in Rolex S.A. was that the Application Mark, “MARINER”, is confusingly similar to the earlier trade mark “SUBMARINER”.

Distinctive and Dominant Features of the Marks

Relying on Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2017] 2 SLR 308 (“Caesarstone (CA)”),  the Opponent contended that “MARINER” was a distinctive component which the Office should have especial regard to. In Caesarstone (CA), the SGCA considered the word “CAESAR” to be the distinctive and dominant component of the disputed “CAESARSTONE” mark, as “STONE” is merely descriptive of the goods to which the mark related to. In its attempt to analogize, the Opponent argued that the Application Mark and Opponent’s Mark share the common distinctive and dominant component of “MARINER”. The Hearing Officer, however, rejected this and distingushed “CAESARSTONE” for being an invented word that was easily divisible into the components “CAESAR” and “STONE”. On the other hand, “SUBMARINER” is a single word known in the English language, and therefore not clearly separable into distinctive and descriptive components.

The Hearing Officer thus held the view that there was no particular distinctive or dominant feature in either of the Marks because they were both word marks with no additional stylizations to any particular subset of letters.

It is possible to acquire technical distinctiveness, if you know what to prove!

As the Opponent’s Mark is composed wholly of the word “submariner”, a known English word, and which in fact bore connection with the goods to which it related (as the “submariner” watches line was designed for diving), the Opponent’s Mark is descriptive and correspondingly possessed only a medium level of inherent distinctiveness. Nonetheless, an inherently non-distinctive trade mark may still acquire a distinctive character as a result of prior and/or widespread use.

What the trade mark applicant has to show is that a significant proportion of the relevant class of individuals (those likely to purchase the goods or services in question) identify the goods as originating from one particular trade source because of the trade mark (see LOVE [2009] 1 SLR(R) 561 at [92]).

Unfortunately, this was not the case in Rolex S.A. The Opponent’s “SUBMARINER” Mark per se did not have the capacity to function as a badge of origin as there was the presence of the “ROLEX” mark alongside the Opponent’s Mark in every adduced piece of evidence.

This was similar to City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 415 (“City Chain”) where the SGCA found that there was no evidence that the Flower Quatrefoil mark has ever been promoted or used on its own. Thus, for a mark to be declared as possessing acquired distinctiveness, it should be used on its own and not in association with another mark, even if both marks are owned by the same company. This aspect of distinctiveness is especially pertinent to companies which own different marks but has largely built its branding upon a core, flagship mark. The same goes for companies looking to rebrand themselves. It is relevant to note that even if the public recognizes and associates the trade mark exclusively with a particular manufacturer, it does not necessarily mean that the trade mark has acquired distinctiveness. The public must regard the mark solely as a badge of origin.

Visual similarity: a prefix may not be enough to differentiate two marks

The assessment made by the Hearing Officer goes on with the visual, aural (number of syllables), and conceptual (the idea behind the mark as a whole) similarity.

               Visual similarity

While “SUBMARINER” and “MARINER” are of relatively similar lengths and are both single words, the Applicant claimed that the additional prefix “SUB” in the Opponent’s Mark achieved the purpose to differentiate the marks. However, the Hearing Officer stated that the additional three-letter “SUB” did not suffice to visually differentiate the two marks: the prefix was found to be small compared to the seven-letter common denominator “MARINER”.

Therefore, visual similarity was found.

Aural similarity

Other than considering the dominant component of the marks, the SGCA in Staywell (at [31] to [32]) highlighted that there is a second approach in assessing aural similarity, which is to undertake a quantitative assessment of whether the marks have more syllables in common than not.

Interestingly, the Hearing Officer here made the assessment by asking how the average Singaporean would pronounce the words in question. In the Singaporean context, the word “mariner” is likely to be associated with the common aurally encountered term ‘Marine Parade’ or ‘Marina Bay’, which would lead the average Singaporean to pronounce the Application Mark as “muh-REE-ner”, and the Opponent’s Mark as “SUB-muh-REE-ner”. Applying the principles stated in Staywell, the quantitative assessment approach shows that the marks share three identical syllables, and the difference lies only in the prefix “SUB”.

While the Applicant argued for this difference being material, the Hearing Officer concluded that the Application Mark is aurally more similar than dissimilar, because the shared three syllables constitute the entire Application Mark and form a substantial part of the Opponent’s Mark.

Conceptual similarity: the average Singaporean as part of the assessment

The Opponent’s submission that both the marks convey the ideas of the sea and a sailor is intuitive and commonsensical.

As such, the Applicant’s attempt at arguing that the average Singaporean would be unlikely to know the meaning of the word “mariner” and thathe could misapprehend its meaning by referring it to “marina” was bound to fail. The Hearing Officer recognized that while there might be a gap in the average Singaporean’s knowledge, and “mariner” might be an archaic word, “mariner” would nonetheless lead the average consumer to the idea of the sea. Moreover, even if the connection between “mariner” and “marina” is accepted as part of the imperfect recollection of the average Singaporean, “marina” and “submariner” still share the common idea of the sea.

Goods-similarity

Applying the principle that registration in the same specification within a class establishes a prima facie case for identity, goods-similarity was also satisfied as both Marks here were registered for “horological instruments” under Class 14. The fact that the Application Mark had also included many other specifications would not negate this overlap.

No likelihood of confusion if your mark is constantly accompanied by another mark   

Likelihood of confusion between the competing marks was also found.

The Applicant sought to show that its Mark has gained sufficient reputation to prevent consumer confusion though a large number of customer sales invoices through local retailers. In particular, what the Applicant submitted as evidence were:

  • a large number of customer sales invoices issued by a Franck Mullet Pte Ltd; and
  • two sets of website printouts from the Applicant’s websites, one listing ten Franck Muller retailers in Singapore and the other depicting the line of watches to which the Application Mark is applied.

However, the Hearing Officer declined to find strong evidence of the Application Mark’s reputation in Singapore, because the submitted invoices were for sale of watches bearing the Application Mark in circumstances where the Mark has not been marketed and sold on its own. Notably, it was  not that the Applicant’s watches lack the Application Mark, but that they were burdened with the “FRANCK MULLER” mark. Ironically, much like how the Opponent’s Mark lacked distinctiveness due to the constant presence of the “ROLEX” mark alongside the Opponent’s Mark, the presence of the retailer’s “FRANCK MULLER” mark which accompanied the Application Mark in the evidence (printouts of the Applicant’s watch listing on the retailers’ websites) fatally prevented the Application Mark from establishing its own reputation.

Conclusion

In conclusion, Rolex S.A. succeeded in its opposition against another luxury company.

This decision brings to the fore, clearly, that technical distinctiveness may subsist in two ways – inherently and acquired through use. Insofar as inherent distinctiveness is concerned, businesses have to balance between choosing an intuitively understandable word mark which risks being descriptive, and one which bears no relation to the product at hand but may not be quite as consumer-friendly.

Acquired distinctiveness, on the other hand, may be even more difficult to prove, as it requires proof of long-standing or widespread use. In this regard, Rolex S.A. highlights the importance of using a mark independently as much as possible. The presence of another mark put alongside the one sought to be registered (in the printouts of the mark on the retailers’ websites, in the invoices, etc.) may fatally prevent the mark from acquiring distinctiveness as “a badge of origin”. In other words, a newcomer mark cannot ride on the coattails of its established predecessors if the goal is for it to acquire distinctiveness.

In addition, the present case shows the intriguing connection between the visual, aural and conceptually similarity assessment and the specific context to which such assessment applies. Applicants and opponents should therefore be aware of the segment of the public and consumers whom they wish to address their marks to, because that will form part of the analysis. They should not take for granted that a word will have a particular sound or be pronounced in that specific way. On the contrary, it is relevant to fit the marks into the context, taking into account aural, visual and conceptual references (like Marina Bay, in this case), and what the average consumer will have in mind when they come across the marks in question.


IPSA is a student-led interest group and the above article is a reflection of the author’s opinions, and not professional legal advice for any matter. All errors are the author’s own.

ALGORITHMIC COPYRIGHT ENFORCEMENT: IS IT RELIABLE?

This article is a collaboration between IPSA and alt+Law. alt+Law is a student organisation based in NUS Law, centred around legaltech and the growing intersection between Law and Technology. If this interests you, you can access their webpage at http://altlaw.xyz/about-us

source: https://naumov.top/youtube-channel-blocked/

Written By: Shaktivel ARUMUGAM of the IPSA Core Team
Edited By: Denise THIA; YANG Zhuoyan of the IPSA Core Team, YE Yang of Alt-Law

Ever chanced upon an interesting thumbnail on Youtube, clicked on it, but only to be greeted by a sad-looking red emoji bearing the message “This video is no longer available due to a copyright claim by…”? That is the work of Youtube’s Content ID, an algorithm created specifically for the identification of potentially infringing works uploaded into the platform.

WHY IS YOUTUBE INVOLVED IN THE DETECTION OF COPYRIGHT INFRINGEMMENT?

As an aside, it must first be clarified that copyright infringement is a matter of law that can only be ruled by the courts. This means that when a third-party platform such as Youtube deems content to be an infringement of existing copyright, what the offending content is guilty of is more accurately described as plagiarism. Briefly, plagiarism is an ethical concept, which according to Oxford Dictionary, is concerned with the “wrongful appropriation” and “stealing and publication” of another author’s “language, thoughts, ideas or expressions”. On the other hand, copyright infringement is a legal concept that affords protection to original works through a host of remedies and is subject to the available defences in legislation or common law. While plagiarised works can be guilty of copyright infringement, this is not necessarily always the case.

Youtube’s (and other third-party platforms) efforts at copyright policing can be explained by the Notice and Takedown procedure mandated by the Digital Millenium Copyright Act (‘DMCA’)[1] in USA. Online service providers are prima facie liable for the dissemination of copyrighted material. However, legal immunity is only conferred if they satisfy the conditions of the “safe harbor” regime provided by the DMCA. One of which requires online service providers to “promptly remove or block access to infringing materials after copyright holders give appropriate notice”[2]. Third-party platforms such as Youtube face potential liabilities for copyright infringement by rightsholders of content if they fail to expeditiously remove or block access to the content after receiving notification from a copyright holder that the content is infringing (citation: US DMCA, s 512(c); Singapore’s Copyright Act s 193D(2)(b)(iii)). 

In an era of unprecedented content generation, it becomes difficult to have human oversight over all potential claims of copyright infringement. Therefore, third-party platforms rely on algorithms to sieve out potentially infringing works before they are disseminated throughout the platform. As mentioned earlier, a prime example of this is Youtube’s Content ID.

HOW DOES CONTENT ID WORK?

Youtube states on its website that Videos uploaded to YouTube are scanned against a database of files that have been submitted to them by content owners [and] [w]hen a match is found, the video gets a Content ID claim.[3] This means that every video uploaded onto Youtube is automatically scrutinised by the algorithm with minimal human intervention. Once a match is detected, copyright owners have four choices: (1) mute audio that matches their music; (2) block a whole video from being viewed; (3) monetize the video by running ads against it; or (4) track the video’s viewership statistics. On the other hand, the uploader of the offending work (the ‘Offending Party’) is also given options: (1) acknowledge the claim; (2) if the claim is for a piece of music in the video, choose to remove the song without having to edit and reload; (3) swap out the allegedly infringing song with a free-to-use song; (4) share revenue with the copyright owner; or (5) dispute the claim[4].

Should the Offending Party choose to dispute the Content ID claim, copyright owners can in turn respond in the following ways: (1) release the claim; (2) uphold the claim; or (3) take down the video[5]. If the copyright owner elects to take down the video. a copyright strike is given to the offending party.  Consequently, not only is the video removed from being accessed by the public, but the Offending Party’s account becomes tarnished and they lose certain privileges, specifically the ability to monetise content[6]. One way an Offending Party can respond if they believe that their video constitutes fair use is via the counter notification mechanism offered by Youtube.

Text Box: The flowchart above maps out the disputes process of Content ID. (Source: https://www.dailydot.com/upstream/content-id-youtube-changes/)

 

ADVANTAGES OF THIRD-PARTY COPYRIGHT ENFORCEMENT THROUGH ALGORITHMS

A distinct advantage offered through the use of artificial intelligence to detect copyright infringement would be convenience and efficiency. Due to the sheer volume of content being uploaded onto the site daily, ensuring that each and every video does not violate copyright is a costly endeavour which requires huge manpower. Keeping costs low is not only beneficial to the enterprise but also to users of the platform, as it ensures that the said platform continues to remain free to use.

Youtube’s Content ID is also beneficial because it facilitates content legalization through licensing. Copyright owners are presented with the option to monetise instead of choosing to take down a video. Accordingly, the offending party can continue to generate economic benefits from their content although a share of it will go to copyright owners. This process is expedited with the automatic matching capabilities of AI (as compared to the rights holder physically identifying a video as infringing and then Youtube brokering a license). This is certainly a mutually beneficial option compared to the traditional take-down remedies offered by the courts.

DISADVANTAGES OF THIRD-PARTY COPYRIGHT ENFORCEMENT THROUGH ALGORITHMS

However, there are disadvantages that should be highlighted.

There are instances where ContentID causes an inefficiency and results in content creators losing out on monetized views of their videos. Under the DMCA, a copyright holder must consider the existence of fair use before sending a takedown notification under § 512(c). A rampant issue arises where the technology fails to adequately sieve out what we might deem ‘fair use’ is in the realm of parodies.  The algorithm follows a mechanical process which indiscriminately matches the videos uploaded with Youtube’s database, thereby inevitably capturing parodies and satires.

Even though such videos would clearly qualify for fair use under the current regime, they are nevertheless targeted by Youtube’s Content ID, which in turn triggers a long process that a content creator has to go through to monetise his/her video. This is a clear instance of overenforcement which has a chilling effect on content creation and diminishes opportunities for meaningful conversations in the relevant creative sphere; an effect which is antithetical to copyright law’s aims of promoting creativity.

The Content ID system is also susceptible to abuse. Although contractually, before making use of the Content ID system, Youtube stipulates that copyright owners have to warrant that they own exclusive rights to the reference work, this has not been sufficiently enforced[7]. Consequently, users can exploit this weakness and upload as much content as possible which they might not legally own and then flag subsequent videos as belonging to them. The alleged Offending Party will then have little choice but to share in the revenue generated with such exploitative users. GoDigital Media Group is a well-known example[8].

There are also questions about accountability and transparency. Very little is known about how the algorithm flags videos. The criteria used by the AI remains unknown and this is worsened by the fact that the algorithm is self-learning – which means that even its creators might not have the faintest idea of the workings of Content ID. This introduces an element of arbitrariness which is unjust because it leads to unpredictable yet extreme outcomes. This is especially so since YouTube content generation is increasingly taken up as a sole and full-time job by many individuals. Therefore, the unfair removal of their videos would negatively impact their livelihoods.

CONCLUSION

So, can we trust these algorithms to regulate copyright infringement or should they be subject to greater scrutiny? It cannot be denied that such algorithms offer technical advantages such as increasing ease and speed of detection. Further, by shifting more of the burden of enforcement to online service providers, copyright owners have much more accessible targets for liabilities and no longer have to grapple with the difficulties associated with suing individual primary infringers, such as cross-border enforcement, or simply seeing legal costs outweighing the remedies that may be obtained.

In conclusion, the increase in digitisation of content leads to a greater prevalence of the use of detection algorithms. For instance, Spotify is also developing its own anti-plagiarism tool to detect copyright violations[9]. Much closer to our hearts, academic circles have also long accepted the use of the Turnitin anti-plagiarism software which continue to strike fear among students. Thus, it is clear that such algorithms are here to stay for a long time to come.


[1] Digital Millennium Copyright Act, 17 U.S.C. § 1201 (2012).

[2] https://assets.fenwick.com/legacy/FenwickDocuments/DMCA-QA.pdf

[3] https://support.google.com/youtube/answer/2797370?hl=en

[4] https://law.stanford.edu/wp-content/uploads/2016/10/Accountability-in-Algorithmic-Copyright-Enforcement.pdf. (page 511)

[5] ibid

[6] https://support.google.com/youtube/answer/2797387

[7] Patrick McKay, YouTube Copyfraud & Abuse of the Content ID System, FAIRUSETUBE http://fairusetube.org/youtube-copyfraud [https://perma.cc/82TYLKM8].

[8] GODIGITAL MEDIA GROUP, http://www.godigitalmg.com [https://perma.cc/B36RX8Z7]

[9] https://torrentfreak.com/spotifys-anti-plagiarism-tool-to-protect-copyright-is-too-black-mirror-201206/

IPSA is a student-led interest group and the above article is a reflection of the author’s opinions, and not professional legal advice for any matter. All errors are the author’s own.

Patenting Diagnostic Methods: potential challenges for biotech innovators

Written by: YANG Zhuoyan of the IPSA Core Team
Edited by: Denise THIA of the IPSA Core Team

In the past few months, tremendous biotechnology breakthroughs in the treatment of COVID-19 have arrived in the forms of the Pfizer-BioNTech and Moderna vaccines, among several others. Not to be belittled, researchers from Singapore have also developed their own medical innovations. One, in particular, is a portable diagnostic system made for carrying out swab tests created by NUS researchers led by Prof Lim Chwee Teck (the “Epidax”). The system is reportedly in the midst of its patent application, providing an avenue for a timely discussion on the more prominent legal obstacles to patenting diagnostic methods.

Image Source: NUS News

Pursuant to Singapore’s Patents Act (Cap 221) (“the Act”), Section 13(1) sets out three main requirements for an invention to be considered patentable: the invention must (a) be new; (b) involve an inventive step; and (c) be capable of industrial application.

The traditional swab test for COVID-19 is a polymerase chain reaction (PCR) test, a type of molecular test where the collected DNA sample undergoes a series of reactions at the laboratory. The sample is processed to isolate and collect the patient’s RNA. The RNA is then mixed with other ingredients, e.g enzymes, DNA building blocks, cofactors, probes and primers that recognize and bind to SARS-CoV-2. The viral RNA is then converted to a DNA copy, which is then converted into millions of copies using PCR which can be easily detected. If SARS-CoV-2 complementary DNA is present in the sample, the primers can copy the targeted regions and signal its existence. (Source: Discovery’s Edge).

Meanwhile, the Epidax bypasses the intermediate step of RNA extraction through use of a microfluidic chip. Using a reagent which enables both RNA extraction and amplification on the chip, the PCR test can be performed right after a nasal swab sample is collected. The main improvement made to the current PCR test is that sample handling is minimized and waiting time is drastically shortened  (Source: NUS News). 

On a surface level, three discrete points of law may be raised:

(1) “Invention”

Since patents protect inventions, a mere discovery naturally falls outside of s 13(1) of the Act. The Examination Guidelines for Patent Applications at IPOS (last revised Apr 2019) (“IPOS Guidelines”) state that discoveries of a natural process that occurs in nature are not inventions (IPOS Guidelines at para 8.12-8.16; see also Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2000] SGCA 39).

Recent Federal decisions in the US have applied the two-step Alice/Mayo test to differentiate mere applications of natural law from inventions. In Step One, the court considers whether the claims are directed to ineligible subject matter such as a law of nature. In Step Two, the court examines the elements of the claims to determine whether they contain an inventive concept sufficient to transform the claimed naturally occurring phenomena into a patent-eligible application (Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 915 F.3d 743 (2019); Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352 (2017)). 

While the above two-step test had not been adopted locally, its direction is not dissimilar from the IPOS Guidelines. It stands to reason that if followed in Singapore, the Epidax may face a hard time given that many Federal decisions have declined to grant patents for PCR diagnostic methods which merely instruct on what to make of naturally occurring reactions between DNA sequences and a particular substance (see Roche Molecular Systems, Inc. v. CEPHEID, 905 F.3d 1363 (2018); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (2015)). The Epidax’s reagent, if included as a product claim, may not be an “invention” if it comprises, without more, a naturally occurring enzyme; a process claim which uses observations of natural reactions as diagnostic indicators may also fail (Roche v CEPHEID).

(2) Diagnostic method exclusion

As regards to sub-section 13(1)(c), there is an enumerated exception found in s 16(2) of the Act, which states that “An invention of a method of … diagnosis practised on the human or animal body shall not be taken to be capable of industrial application.”

The rationale for this exception was laid down by the Singapore Court of Appeal in the recent case of Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2017] 2 SLR 707 (at [31], citations omitted):

“… the [s 16(2)] limitation rests on a legal fiction that methods of treatment and diagnosis are not capable of industrial application. … the fear of adverse impact on the health system lies at the heart of the exclusion of methods of medical treatment. The real reason is that it is not in the interest of the public to have methods of treatment and diagnosis controlled by a few …”

However, a PCR test, either conventional ones or in Epidax, may not be excluded because s 16(2) contemplates diagnosis “practised on the human or animal body”. For instance, in vitro diagnostic methods performed on blood or tissue samples obtained from a patient’s body are prima facie capable of industrial application. In T 0666/05 (Mutation/UNIVERSITY OF UTAH) (European Patent Office), claims defining methods for diagnosing a predisposition for breast cancer by detecting a mutation in the BRCA1 gene in a tissue sample from the subject was allowable since the technical steps of the claimed methods are not performed directly on the subject (IPOS Guidelines at para 8.15; 8.105).

(3) Inventive Step

s 13(1)(b) of the Act stipulates that an invention must  involve an inventive step, with s 15 setting out the test for the same. This requirement essentially involves the consideration of whether the invention, when compared to the state of the art at the priority date of the patent application, would have been obvious to the hypothetical skilled addressee.

It is once again helpful to look at US decisions given the dearth of local case law in the diagnosis context. In Arioso Diagnostics, Inc. v. Sequenom, Inc. 788 F.3d 1371 (2015), a process claim for detecting paternally inherited cffDNA by instructing doctors to apply PCR to amplify and detect cffDNA was held to be not sufficiently new and useful because PCR itself was a “well-understood, routine, and conventional activity”. Likewise, there was a lack of inventive step in Genetic Technologies Ltd. v. Merial L.L.C., 818 F.3d 1369 (2016) with respect to a claim for detecting a coding region of a person’s genome because the physical steps claimed were no different from established PCR techniques.  

However, perhaps the Epidax may be distinguished – while the diagnosis still revolves around testing for a PCR, its incorporation of microfluidic chips appears to set it apart from its predecessors. As our courts have emphasized repeatedly, the four step approach from Windsurfing International v Tabur Marine [1985] RPC 59 adopts the perspective of a skilled but unimaginative addressee when considering obviousness. A close reading of the prior art is still key in this step (see Element Six Technologies Ltd v ILA Technologies Pte Ltd [2020] SGHC 26).

Conclusion

The policy consideration thrust to the forefront is certainly the need to balance incentivizing innovation against the public interest in securing access to affordable healthcare. Thankfully, in Singapore, even if the patent was granted, ss 56-62 of the Act empowers the Government to initiate compulsory licensing at least for the duration of the pandemic so the potential harm to public interest is far reduced.

The above discussion is hypothetical; without a close reading of the claims made by the NUS team, it is difficult to say for sure what the outcome may be. Where the Epidax is distinguishable, the patent office may rightly conclude that neither of the above-mentioned problems surface. It will be interesting to see if novel biotechnology patent issues would be brought up in the imminent patent prosecution.

IPSA is a student-led interest group and the above article is a reflection of the author’s opinions, and not professional legal advice for any matter. All errors are the author’s own.

Reflections on IP Week @ SG 2020

Contributed by: Lenon ONG, Bryan ONG and Denise THIA

Edited by: Denise THIA

The annual IP Week @ SG was held this year from 25th to 27th August, going digital for the first time. Global IP policymakers, together with other legal experts, came together to share their insights on IP commercialisation and other IP strategies that strengthen the resilience of enterprises and continue to boost innovation. Through the various webinars, members of the NUS Law Intellectual Property Students’ Association (“IPSA”) had the opportunity to learn more about the importance of technology and innovation, especially when it came to supporting businesses and enterprises amidst these challenging times in an era of the COVID-19 pandemic.

1. Keynote IP Leaders Panel: Accelerating Innovation, Recovery and Growth in the COVID-19 Era

This panel was certainly the highlight of IP Week @ SG 2020: participants got to hear directly from the heads of IP offices and organisations as they examined the impact of COVID-19 on the intellectual property (“IP”) industry and discuss how the Intellectual Property Office of Singapore (“IPOS”) can leverage data, expertise and international networks to ably support creators and innovators seeking to cope with the long-term repercussions of the pandemic.

Notably, Mrs Rena Lee, Chief Executive of IPOS, talked about the various innovative measures initiated by IPOS over the past few years. In particular, IPOS GO, the world’s first mobile app for trademark applications. The app allows users to search through similar business names, trademarks, domain names, and more – enabling enterprises to make more informed branding decisions. The app’s capability does not stop in the realm of trademarks: searches relating to patents, registered designs, and the maintenance of all registered IP can be done conveniently on the app!

SG IP FAST was also another initiative during this panel. SG IP FAST extends beyond patent applications, accelerating the registration processes for trademarks and registered designs. Enterprises can obtain IP protection in Singapore quickly and leverage that to grow their businesses.  SG IP FAST is an enhancement of an earlier scheme, SG Patent Fast Track, launched by IPOS in April this year. The SG Patent Fast Track, the world’s fastest application-to-grant process of its kind, accelerates grants of patent applications in all technology fields to just six months.

The various heads of IP offices in other jurisdictions have also pitched in the various innovative measures the respective IP offices had taken in this pandemic, including lowering costs and enhancing the efficiency of IP-related procedures. The Chief Executive Officer of the International Trademark Organization (“INTA”), Mr Etienne Sanz de Acedo, had also provided a great overview on recent developments especially in the trademark scene, backing his presentation with impressive data collated by INTA itself.

2. GRIT Series: IP in the Arts and Entertainment Sectors

Growing with Resilience through InTangibles (“GRIT”) is an inter-agency initiative to partner businesses and communities to better manage and monetise their IP in the COVID-19 environment and beyond. For this webinar, representatives from IPOS, Zouk Group, ONE Championship, Believe, Loudanclear, and Ella Cheong LLC shared first-hand issues relating to IP in the arts and entertainment sectors, and various government support schemes available for these sectors.

GRIT will facilitate access to government support schemes and grants. For example, media companies can tap on the Infocomm Media Development Authority’s (“IMDA”) content production funding schemes to acquire IP such as soundtracks. IMDA also supports the creation of original IP through initiatives such as WriterLabs, New Talent Feature Grant, and the Capability Partnership Programme.

There is funding support for the arts sector for the creation and marketing of IP through the National Arts Council’s Creation Grant, Production Grant, and the Market and Audience Development Grant.

The Singapore Tourism Board’s Business Improvement Fund provides funding support for companies in the tourism sector to adopt capability development, such as business strategy, and strategic branding and marketing.

Businesses can also tap on Enterprise Singapore’s Enterprise Development Grant (EDG) for their qualifying costs of IP-related services such as hiring IP service providers (e.g., IP lawyers and patent agents).

Check out IPOS’ one-stop webpage for more details.

3. FLINT: Nurturing the Next Generation of IP-savvy Youths

At this first-year milestone of the Future Leaders in INnovation Transformation (FLINT) programme launched at IP Week @ SG 2019, Mr Daryl Ong from IPOS had outlined and rehashed the importance of nurturing youths in Singapore to equip themselves with the knowledge of IP even before entering the workforce.

Our very own Mr Lenon Ong and Mr Lim Sze Yuan from IPSA also shared on how the learning of IP is important, the overview of key institutions and policy developments in the IP space in Singapore, as well as how members from IPSA have benefitted from the FLINT programme.

4. 10th COP on IP Management: Expeditious Innovation at a Time of Crisis

Titled Expeditious Innovation at a Time of Crisis, the COP was moderated by Mr. Mark Lim from the Intellectual Property of Singapore (IPOS), and the panel comprised of Dr Sidney Yee, Mr Choo Wei-Pin and Mr Gabriel Yap representing Diagnostics Development (DxD) Hub, Razer and Lucence respectively.

Traditionally held behind closed doors, this marked the first time the COP was open to the public, given the importance of the issues and the prevailing public interest. The COP dealt with the innovation process in response to the current public health crisis amidst the COVID-19 pandemic, with strong focus on how the intellectual property of these companies remain protected while simultaneously allowing for increased collaboration.

The panel was kickstarted with a short message from Mrs Rena Lee, who noted the economic challenges that lay ahead, but assured everyone that IPOS will continue to support enterprises. Further, she highlighted robust IP management strategies to lay the foundations for such enterprises to tap on intangible assets for continued growth and emerge from the pandemic in a better state.

Next, the panellists gave a brief overview of how their companies have continued to innovate despite the challenges brought by the pandemic. This ranged from working directly with market users to improve and build their products to pivoting to completely new product lines.

Although DxD Hub, Razer and Lucence are not competitors at all, they shared the consensus that companies who invest in innovation are expected to thrive, and each of them were developing solutions in response to the various needs at different levels of the production chain. While Razer focused on mask production, DxD Hub, true to their name, focused on identifying technical and usability issues to allow for more rapid testing. Meanwhile, Lucence tapped on their expertise in non-invasive tests for disease detection to develop possible alternatives to the swab tests that are currently being administered.

All the panellists reiterated the need to be responsive and adaptable, and that laying the foundation for greater productive capacity is extremely important in times of peace. In particular, Dr Yee noted that the current COVID-19 crisis is a good reflection of how Singapore’s investment in a strong research and development (R&D) and entrepreneurship scene laid the foundation for a strong relationship between the public and private sectors, which was essential in allowing companies to pivot and respond effectively to the pandemic.

In response to regulatory hurdles, Dr Yee pointed towards the importance of supply chain security, as well as the highly supportive and progressive stance of the Health Sciences Authority (HSA). This was supported by Lucence, who mentioned that the HSA responded quickly and that it was the trust between the private and public sectors which allowed Lucence to approach the HSA early, thereby ensuring the impact of Lucence’s technology on a regional and international level.

Lastly, the panellists were asked on how their companies ensured protection of their IP. Here, Mr Choo mentioned the importance of involving the legal and compliance team early in the process instead of merely letting the project be spearheaded by a team member from the supply chain. Dr Yee also provided a key consideration – whether the product has the freedom to operate, which companies have to consider in order to determine if a project is worth pursuing. 

5. Associated events

Some of our members have also sat in the associated events such as the “Strengthening International IP Collaboration, Facilitating IP Commercialisation” webinar hosted by China Singapore Guangzhou Knowledge City, where the speakers dove deep into the statistics of various filings in China and the various schemes that owners of IP might want to seek assistance from before venturing into the huge market that is China. The UK-US Breaking Barriers series of webinars also provided perspectives from leaders of companies and start-ups that grew because of their strategic use and commercialisation of intellectual property.

6. Closing statements

Through these webinars, it is evident that the importance of IP cannot be stressed enough in our increasingly globalised world. This pandemic has shown the degree to which the world has become interconnected, and how consumers consume products and interact with businesses they support. IPSA would like to thank these innovators who have continued to carry the torch in these trying times. We thank them for their willingness to share this information and all of their contributions in tackling the pandemic.

Breathing value into businesses through innovation, creativity and co-operation: a sharing session with Dr Ming Tan, Managing Director of IPOS International

Contributed and edited by: Chloe CAENARO, Nur Dini KALISTA, Benjamin HO, and Lenon ONG of IPSA

On 3 August 2020, the Intellectual Property Students’ Association (“IPSA”) had the privilege of interacting with Dr Ming Tan, Managing Director of IPOS International. IPOS International is the enterprise and engagement arm of the Intellectual Property Office of Singapore (“IPOS”), which partners enterprises to create tangible value from their intangible assets. In this insightful and interactive sharing session, Dr Tan responded openly to the many questions posed by student representatives from IPSA on a range of topics, discussing the role of IPOS International, changes in the current challenging business climate, and issues related to intellectual property (“IP”) and intangible assets (“IA”).

Dr Ming Tan, Managing Director, IPOS International

Established in 2019, IPOS International partners local and global enterprises of all sizes to realise the full potential of their IP/IA for business growth, and drive innovation in the economy through its strategic advisory services, patent search and analysis capabilities, and professional development programmes. In this regard, Dr Tan oversees the strategic growth of IPOS International to deliver successful public-private partnerships through IP/IA at the national, enterprise and individual levels.

IPSA members eagerly participating in the sharing session with Dr Ming Tan, Managing Director, IPOS International

The biggest challenge in 2020 is arguably the COVID-19 pandemic, which has sparked unprecedented change within and among businesses and economies globally. Interestingly, when asked about how this has affected the IP/IA landscape, Dr Tan noted that the innovative and dynamic nature of IP has opened itself to many positive developments within the community. Aside from encouraging businesses to innovate for survival, the role of IP has been pivotal for effecting noble, social impact in this time of need.

For example, IP rights have been wielded effectively to enable contribution to COVID-19 while protecting innovation and preventing profiteering. Case in point – Italian inventors from Issinova  partnered with the giant sports retailer Decathlon to convert the latter’s snorkels into ventilators to combat the shortage of essential equipment in hospitals. Issinova applied for an urgent patent for the valves to be developed, and made its blueprint widely available online and accessible to manufacturers who would like to step up in the united fight against COVID-19.

The traditional paradigms of IP have also seen shifts during this time, especially with regard to prior art and early disclosure in the face of a pandemic. Scientists at the frontline of COVID-19 research have been publishing studies and information directly in the public domain instead of via academic journals, in a bid to encourage further research and accelerate our race towards a cure. While this complicates the process of securing IP protection for the eventual invention due to prior public disclosure, this trend points to IP’s larger role and potential for driving social impact.

How then can businesses best commercialise their IP? Dr Tan stresses that there is no hard-and-fast rule to this, and the key to success lies in understanding one’s business model and what makes it unique, then combining this with a holistic IP strategy that safeguards that competitive edge.

On her favourite trade mark, Dr Tan spoke of LEGO® and described how their strategic use of IP has transformed them into one of the most successful businesses globally. LEGO® had such a brilliant grasp of what made their product offering unique, that they were not only able to apply for the right patent to protect their innovation, but continue to commercialise and build on the LEGO® brand and values after the patents covering specific elements have expired.

In closing, Dr Tan urged us – particularly those with a keen interest in IP law – to simply “get our feet wet” by diving into the IP world with an open mind. She emphasised how a legal academic background is highly adaptable and applicable to many industries, citing the success stories and experiences of notable NUS Law alumni, including that of Min-Liang Tan, Chief Executive of Razer. She also encouraged us to get a head start by equipping ourselves with a good foundation of IP, which will only grow in relevance and demand as we move into the post-COVID and new future economy.

Editorial endnote: If the topic of IP protection and management interests you, IPOS International is hosting a webinar-cum-panel session with The LEGO® Group during the upcoming IP Week @ SG IPOS x LEGO® webinar: How to Protect and Manage Your Brand in COVID-19 Times. IPSA would like to extend its gratitude to the team at IPOS International for supporting and facilitating this highly informative and engaging sharing session, and we look forward to future collaborations!

Intellectual Property and the Arts: An IP InfoPack by IPSA

This year, our arts sector has been badly affected by COVID-19, with many having to explore digital methods and online platforms to present their work. For those in the arts field seeking to have a clear understanding of their Intellectual Property (“IP”) rights in order to better manage and monetise their IP and intangible assets, the Intellectual Property Students’ Association is proud to present the “IP Arts InfoPack”. This infopack serves as a reference guide for individuals, businesses and communities in the arts sector who might be unfamiliar with the various concepts relating to IP.

The IP Arts InfoPack complements various resources provided by the Intellectual Property Office of Singapore, and should be useful for artists seeking to protect their valuable creative output. The project was proudly supported by the Intellectual Property Office of Singapore and the NUS Centre for the Arts.

To view and download the IP Arts InfoPack, please click here.

For any feedback or queries, feel free to contact us at ipsa.sg@gmail.com.

IPSA at the NUS Law E-Orientation Sub-club Fair 2020

On 17 June 2020, Lenon Ong and Lim Sze Yuan of the Intellectual Property Students’ Association gave a comprehensive rundown on the latest developments in the intellectual property (“IP”) ecosystem to the freshmen of NUS Law (’24) as they introduced the association’s activities to prospective members via Zoom.

The importance of managing intellectual property and intangible assets efficiently in big and small businesses is of paramount importance in today’s economy. The freshmen got to learn more about Singapore’s efforts to become an international IP hub. From the Singapore Government’s IP Hub Master Plan to the setting up of a new company to help firms commercialise their IP, there was little surprise when the Intellectual Property Office of Singapore (IPOS) was finally ranked as the world’s most innovative intellectual property office in 2020 by the World Trademark Review.

The presenters also shared the relevance of IP in many aspects of our lives (from the Disney and Netflix films we consume to the innovations amidst the COVID-19 outbreak) and between economic superpowers, China and the United States. On the dispute resolution front, Singapore is at the forefront of promoting alternative dispute resolution for IP-related disputes as evident from the Singapore Convention on Mediation (which was adopted on 20 December 2018 and opened for signature on 7 August 2019) and the Intellectual Property (Dispute Resolution) Bill (passed on 5 August 2019 in Singapore). The World Intellectual Property Organization (WIPO) has also established the WIPO Arbitration and Mediation Center in May 2010.

IPSA highlighted the importance of IP and the exciting subject-matter to intrigue the freshmen to know more about the exciting space of IP. IPSA would like to thank the organising committee of the NUS Law Orientation for facilitating the E-Orientation Sub-club Fair, and for the opportunity to raise the awareness of IP and IP-related issues to the incoming freshmen of NUS Law.

IPSA members tender written submissions for the Public Consultation on the Proposed Licensing Scheme for Collective Management Organisations in Singapore

The Ministry of Law and the Intellectual Property Office of Singapore launched a public consultation seeking feedback on a proposed licensing scheme for collective management organisations (the “Public Consultation”) in Singapore between 3 June 2020 and 14 July 2020.

The proposed licensing scheme addresses a range of issues raised in the Copyright Review Report in 2019 and the Copyright Collective Rights Management Ecosystem Public Consultation in 2017 by recommending a “light-touch” regulatory approach focusing on minimum standards and keeping compliance efforts and costs low. The full consultation paper and the respective topics and questions can be found here. IPSA members Lenon Ong, Lim Sze Yuan, and Claudia Borghini had tendered written submissions to the Public Consultation on behalf of the Intellectual Property Students’ Association (“IPSA”).

IPSA is grateful to Shook Lin & Bok LLP for providing comments on our preliminary views on the proposed licensing scheme, which we have taken into consideration in finalising our submissions. We would like to thank Jevon Louis, Lim Wei Zhen Jennifer, and Lee I-Lin for taking time out of their busy schedules to assist IPSA in finalising our submissions. If you are interested to read our submissions, please click here.

IPSA Updates 8: Dark Horse emerges triumphant in legal battle over Copyright claim

IPSA Updates 8: Dark Horse emerges triumphant in legal battle over Copyright claim

Contributed by: Shaktivel ARUMUGAM of the IPSA Core Team

Edited by: Benjamin HO of the IPSA Core Team

Just last year, pop singer Katy Perry found herself in a lawsuit over her chart-topping single ‘Dark Horse’ released in 2013. The California Girls songstress was sued by Christian rapper Flame for plagiarising his song ‘Joyful Noise’ (released in 2008). At the first instance, a federal jury in the United States found Katy Perry and her collaborators liable for copyright infringement and awarded the plaintiff USD $2.8 million. The decision sent shockwaves across the American music industry due to its implications on the originality of music and artistic expression vis-à-vis copyright law. Fortunately for the songstress, the verdict was overturned upon appeal. This article will examine the decision of the appellate court by taking a closer look at the legal analysis and some musical theory in order to better understand the decision.  

MUSICAL THEORY:  BLOWING HOT AND COLD?

It is important to highlight that Flame did not accuse Perry of copying the entire song; rather, he claimed that a specific section of Perry’s Dark Horse shared similarities with his Joyful Noise. From the outset, this is highly unusual as far as copyright infringement claims are concerned since most plagiarism claims allege the copying of an entire song.

More specifically, Flame was alleging that both songs share a similar musical component called an ostinato. For the uninitiated, an ostinato is a short melody or pattern that is persistently repeated throughout a song. The ostinato in question is a brief 8-note melody that can be prominently heard in the dance break of Dark Horse just before the second verse starts. It is also repeated throughout in the song’s background.

Flame claimed that the ostinatos in Dark Horse and Joyful Noise are similar insofar as they:

(a) both employ the use of the minor key;

(b) both have the same rhythm (8 quarter notes evenly spaced); and

(c) both make use of the same scale degree (3rd scale degree descending to the 2nd scale degree).

Musical experts will be quick to point that the biggest flaw in Flame’s case is that the claimed elements are not remotely unique, and have given rise to similar sounding ostinatos elsewhere¾ Bach’s Violin Sonata in F minor (Adagio) is one such  prominent example.

It is for this reason the initial verdict caused a stir amongst the American music industry since it implied that such a fundamental building blocks of music can be copyrighted and owned by a singular artist. At its most extreme, this decision can give rise to musical monopolies restricting the use of common melodies, greatly limiting musical creativity and expression. Taken in a different context, it would be akin to granting a copyright to widely used literary phrases such as ‘Once upon a time’.

THE LEGAL BATTLE: A TEENAGE DREAM COME TRUE?

Under American law, to prove a claim of copyright infringement, the plaintiff must satisfy two elements:

(1) The plaintiff must own a valid copyright over the work in question; and

(2) It must be shown that protected portions of the copyright work have been infringed.

In order for the second element i.e. copyright infringement of protected portions to be fulfilled, the plaintiff must prove that:

(1) the person had access to the work at issue (independent creation is a defence to copyright infringement); and

(2) the court makes a determination that the work is substantially similar.

In assessing the second stage of inquiry so, the court employs an objective extrinsic test (where similarity is measured by external criteria such as expert testimony and analytical dissection of the works) and a subjective test (would a normal person with no knowledge in musicology or art in issue be convinced that the two works are of sufficient similarity).

Notably, the second element also makes a distinction between protected and unprotected elements of the work in question: it is only considered to be copyright infringement if the protected elements of the work were copied. This means that the unprotected elements of the work such as those belonging to the public domain can be used by other artists without being liable to a lawsuit. Therefore, not every part of the song is protected by copyright. Generally, for a creative work to be copyrightable, it must be an original work of authorship. Accordingly, the threshold for originality is a low one only requiring the work to possess a minimal degree of creativity.

With the above in mind, it becomes easy to understand why Flame was unsuccessful upon appeal: he failed to show that the one brief section of Joyful Noise – the ostinato in question –  was adequately original in its protectable, copyrightable parts.

LED ZEPPELIN PROVIDES A STAIRWAY TO VICTORY

Generally, entire songs are copyrightable because they easily fulfil the originality requirement in the legal test for copyrights. However, its constituent parts such as a musical phrase or musical elements (chord progression, recurring vocal phrase etc.) are not protected at all. Indeed, these tend to form the backbone of Western music where they are used pervasively  and would therefore make little sense to deserve  copyright protection.

It is of course possible to string a series of unprotectable elements to form a larger protectable work. However, the artist only receives a thin copyright protection, meaning that the ‘top layer’ of the work receives protected and not its underlying unprotectible elements. Accordingly, it is an infringing copyright only if both works are virtually identical.

Returning to musical theory and the allegedly plagiarised ostinato, as an ostinato is essentially a sequence of notes arranged in a specific manner, Flame theoretically could have been granted thin copyright protection. However, as the signature elements of the ostinato are not sufficiently unique or rare to be considered original this was not granted. Further, even where the ostinatos may sound similar, that does not mean a whole lot musically. The ostinatos do not meet the high threshold of virtual identicality.

In fact, Katy Perry was saved by none other than Led Zeppelin. In its judgement, the court endorsed the opinions of the judges in a preceding high-profile case where Led Zeppelin’s ‘Stairway to Heaven’ was found to not have infringed on another band Spirit’s 1968 instrumental track ‘Taurus’. Here, it was observed that “copyright protection was never extended to protection of just a few notes. More specifically, a 4-note sequence common in the music field is not the copyrightable expression in a song.”

In conclusion, this exciting legal dispute reveals that musical artists have very little chance of success in claiming copyright infringement if they are only alleging that a specific section of the song (as opposed to the entire song) has been plagiarised. This is because it becomes extremely hard to prove originality. It is indeed fortunate that the court came to the most reasonable conclusion: one which encourages creativity and prevents the corporatisation of music itself. Katy Perry can proudly roar yet again for averting a hefty verdict.

Be your own judge! Decide if the court came to the right decision by listening to the ostinatos of Dark Horse (Katy Perry ft. Juicy J) and Joyful Noise (Flame), respectively at 01:18-01:25 and 00:01-00:06!

ADDITIONAL SOURCES