High Court & Appellate Practice

Our firm has deep experience in all types of IP litigation proceedings before the Singapore courts, which includes both civil infringement claims as well as criminal prosecutions. We have acted for clients in various industries, spanning the gamut from fashion, entertainment, pharmaceutical, biotechnology, maritime and renewable energy industries. Besides our legal expertise, it is our relentless focus on commercially viable and practical solutions to add value to your business that sets us apart.

Our firm also understands the importance of collaboration and we actively complement the efforts of other legal teams. We are privileged to be acknowledged by our peers as experts in the IP field and have acted as instructed counsel in high profile cases before both the Singapore High Court and Court of Appeal.

Several of our cases are considered to be landmark decisions by the Singapore High Court and Court of Appeal which involved novel and difficult issues of law. Some examples include:

• Cicada Cube Pte Ltd v National University Hospital (Singapore) Pte Ltd and another appeal [2018] SGCA 52 – This was the first case on patent entitlement proceedings to be heard by the Court of Appeal, which set out important substantive and procedural guidance. We acted as instructed counsel in this matter.
• Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2013] 1 SLR 531, CA – This was the first case before the High Court and Court of Appeal where a trade mark was held to be well known to the Singapore public at large. We successfully represented the plaintiff which succeeded in its claims of trade mark dilution, infringement as well as passing off.
• Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and another and another appeal [2009] 2 SLR(R) 814, CA – We successfully defended the registration of a historic mainland Chinese trade mark before the High Court and the Court of Appeal which was attacked on many grounds, including non-distinctiveness, bad faith, fraud and non-use. We also successfully argued that a declaration of non-infringement of copyright should not be granted in the context of pending parallel criminal prosecution proceedings.
• Louis Vuitton Malletier v Megastar Shipping Pte Ltd (PT Alvenindo Sukses Ekspress, third party) and other suits [2017] SGHC 305 – This was the first case in Singapore where the High Court considered the importation and exportation of goods as acts of trade mark infringement, as well as the operation of the border enforcement provisions enacted in the Trade Marks Act pursuant to the US-Singapore Free Trade Agreement.
• Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others [2017] SGHC 232 – This was the first case in Singapore to examine the jurisdiction of the High Court to hear and determine patent revocation proceedings. We successfully argued that the High Court had no such original jurisdiction, which reversed over 20 years of accepted practice in which counterclaims for revocation was brought as a matter of course in patent infringement proceedings.
• Calvin Klein, Inc and another v HS International Pte Ltd and others [2016] 5 SLR 1183, HC – This was the first case in Singapore in which the liability of an e-commerce platform for trade mark infringement was considered by the High Court. We represented the trade mark proprietor and successfully obtained summary judgment against the defendant.
• Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2015] 5 SLR 618, HC – This was the first case in Singapore where the High Court considered whether existing registered trade marks could be combined together into a composite mark as the basis for comparison against another competing mark. We successfully argued that such combination should not be allowed and that our client’s trade mark application should proceed to registration.

Our firm has a keen appreciation of the need to deliver targeted advice in a timely and cost-effective basis, and firmly believes that no client should be deterred from pursuing his or her legal rights by reason of costs constraints. We shun “over-lawyering” practices by working in lean teams, leveraging on technology solutions, and focusing on the end-goal to deliver efficient and value-driven results at proportionate cost.

Legal Opinions

Being a specialist IP practice, we are well-placed to advise you in all aspects of IP matters, which include the following matters:

• IP infringement and responding to infringement claims
• Registrability of IP rights such as trademarks and patents.
• IP ownership and entitlement issues
• Review of documents such as IP franchising, distributorship, license and assignment agreements
• Advertising and media issues, which includes legal and regulatory compliance
• Data protection compliance

Alternate Dispute Resolution

Depending on the nature and quantum of the matter at hand, not all disputes have to be brought or resolved in court proceedings. We have a keen appreciation of recommending a forum of adjudication that will be cost-effective and relevant to the client’s specific needs.

In this regard, our firm can represent clients in mediation proceedings as well as arbitration proceedings.

Hearings before IPOS

Our firm also maintains an active practice in hearings before the Intellectual Property Office of Singapore (IPOS). We have acted for clients in trade mark opposition, invalidation, and revocation proceedings.

UDRP

Where a person registers for a domain name which is confusingly similar to a registered trade mark, the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) and the various country level domain name dispute resolution policy [e.g. the Singapore Domain Name Dispute Resolution Policy (“SDRP”)] offers a streamlined process to trade mark proprietors to resolve their disputes with the registrant.

Our firm can advise and represent clients on the recovery and transfer of domain names via the UDRP complaint procedure (for generic top-level domains) or the SDRP complain procedure (for .sg domain names). We can contact our foreign associates to advise on other country code top-level domain disputes.