What led you to establish Francine Tan Law Corporation, and what three top tips would you give someone considering setting up their own firm?
The motivation arose from a desire for a change of environment and to do things differently; to be more adaptable, agile and accessible. I have had no regrets and am thankful, as the decision has changed and enriched my life.
- Trust your gut. As I reflected on this point, I came across a line from a scene in a TV series I have been watching, in which a character says: “The gut is wiser than most people think. It’s a compass, and it’ll give [you] all the wisdom [you] need.” Each of us will have our moments of inner revelation. The unknown is not necessarily a bad thing. Fear of it can be overcome by envisioning the possibilities that lie ahead. Having a vision and trusting your gut will provide impetus to step out and step into something new.
- Do not be your worst critic and harsh master. The business may take some time to grow. Trust that growth will come in due course as you plant and water the seeds.
- Be authentic and seize opportunities to learn from and find inspiration from others who have walked the same path before you.
You have been hailed as “the best reference for transactional and contentious matters in Singapore”. What are the key skills that brand owners look for in a top-level IP firm?
- The ability to understand the brand owner’s business interests and goals.
- Adaptability and a ‘can do’ mindset.
- Consistency in producing high-quality work and a good work ethic.
How can rights owners use different IP rights to protect their brands in Singapore?
Singapore’s IP legislation includes the Trade Marks Act, Registered Designs Act, Patents Act and Copyright Act. For brand owners whose marks are well known but unregistered, injunctive relief is available under the Trade Marks Act. Additionally, there is statutory protection for Geographical Indications.
You are currently serving as an INTA board member. What led you to take on this position, and what role do you think INTA should play in shaping IP practice?
The appointment was the result of being nominated, alongside support I received from a client and colleagues. My 18-month stint thus far has made me appreciate and see the high level of commitment and tremendous work that committee members and INTA staff do. I have also been impressed by what INTA has achieved and its continued efforts in shaping IP practice and policy. It has spearheaded many initiatives, which inspire the IP professional to be more than simply a trademark expert. As INTA members, we are uniquely challenged to think on a larger, global scale; to envision a better society and think of ways to use intellectual property and our positions of influence to better society, to empower women, to promote diversity, equity and inclusion in our workplaces, to educate and mentor youth in being influencers for change; and ultimately to pursue excellence and empathy in our work. In relation to the Ukraine-Russia crisis, it was wonderful to see how the IP community, through INTA, rallied together to provide aid for those who need it most.
Major companies are already engaging in the metaverse. What would you say are the three most critical steps that brand owners should take right now in this developing space?
- It is timely, especially for owners of well-known brands, to consider defensive strategies in the expectation that the unauthorised use of brands will also show up in the metaverse.
- The million-dollar question of whether the unauthorised use of a trademark on goods in the virtual world, when it is only registered for physical goods in the real world, would constitute trademark infringement is yet to be answered. How would national laws apply in the metaverse? The jurisprudence is still in its infancy, as is the metaverse. As a precaution, until court battles have been played out and the legal landscape is clearer, owners should consider the expansion of the scope of trademark protection to include virtual goods to ensure that the protections against trademark infringement and dilution equally apply in the alternative parallel dimension.
- Since there are legislative use requirements for registered marks within a grace period (typically three to five years), brand owners will also have to take preparatory steps to enter the metaverse. Defensive marks that are registered for the virtual products are otherwise vulnerable to being cancelled.
Francine Tan founded her eponymous firm in 2010. She is an alumnus of the National University of Singapore, an advocate and solicitor (Singapore) and has been admitted as a solicitor of England and Wales. Ms Tan has practised in the field of IP law for 30 years. She is a domain name dispute panellist for WIPO, NAF and ADNDRC and a member of the Board of Directors of INTA