FTA will affect Singapore's trademark law practice

The US-Singapore Free Trade Agreement (FTA), which provides for amendments to Singapore's trademark law, has come into force. The agreement, the first of its kind between the United States and an Asian country, extends, among other things, the definition of trademark in Singapore to cover sounds and smells (see Free trade agreement will strengthen trademark protection). It also creates new remedies for trademark infringement.

Existing remedies include the grant of interim and final injunctions, delivery up and allowing a rights holder to elect between receiving compensatory damages or an account of profits. The FTA requires the following changes:

• The plaintiff may elect between receiving (i) compensatory damages taking into account the suggested retail price of the legitimate goods or services plus an account of profits attributable to the infringement that is not already taken into account in computing the damages, or (ii) predetermined damages at an amount sufficiently high as to deter further infringement (this will be the remedy for criminal offences).
  
  
• Judicial authorities will be authorized to order an infringer to identify third parties that are involved in the production and distribution of the infringing goods or services, and their channels of distribution.
  
  
• It will not be necessary to specifically identify items to be seized under a warrant as long as they fall within general categories specified in the order.
  
  
• Authorities will be able to initiate criminal prosecution and border enforcement measures ex officio without the need of a formal complaint from a rights holder.

The changes are to be fully implemented by September 2004. Some of the changes will have a tremendous impact on the public and intellectual property (IP) law practice. In particular, the FTA departs from a tradition of considering infringement of IP rights to be part of the law of torts, for which the normal remedy is compensatory damages. Instead, the FTA will create new civil remedies that are designed to be punitive in nature and may well reward rights holders with a profit from undertaking litigation - a concept that is rare if not alien to English common law systems.

Daniel Lim and Jeffrey Lim, Shook Lin & Bok, Singapore