2. Remedies, defence and counterclaim (validity)

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Questions and Answers

What is the effect on the claimant's action if the registered TM is found invalid?

The claimant can appeal the decision immediately.

The claimant can continue with the action regardless of the TM's validity.

The claimant must withdraw the entire claim.

The claimant no longer has a basis for pursuing infringement. (correct)

Under which section can a registered TM be revoked for non-use?

Section 23 TMA

Section 80 PA

Section 15 TMA

Section 22 TMA (correct)

Which of the following actions can a defendant take during an infringement proceeding?

File a defence and counterclaim regarding the validity of the TM or patent. (correct)

Immediately halt the claimant's action through a preliminary injunction.

File a claim for damages against the claimant.

Demand evidence of prior use from the claimant.

What is the purpose of sections 22 TMA and 23 TMA?

To provide grounds for the invalidation or revocation of TM registrations. Signup and view all the answers

What happens if a patent is invalidated during an infringement action?

The claimant no longer has a basis to pursue infringement. Signup and view all the answers

What is the primary purpose of statutory damages in intellectual property cases?

To provide a deterrent against future violations Signup and view all the answers

Which provision outlines the factors impacting statutory damages under the Trade Marks Act?

Section 31(5)-(6) Signup and view all the answers

In the case of PH Hydraulics & Engineering Pte Ltd v Intrepid Offshore Construction Pte Ltd, which behavior by defendants influenced the judgment on statutory damages?

Concealing their infringing acts Signup and view all the answers

What is one key difference between statutory damages and additional damages?

Statutory damages are fixed and additional damages vary based on circumstances Signup and view all the answers

Which of the following factors is relevant when determining additional damages under Section 305(1)(b) of the Copyright Act?

Flagrancy of infringement Signup and view all the answers

In assessing additional damages, which of the following behaviors is NOT considered deplorable conduct?

Admitting to the infringement Signup and view all the answers

What sections of the Patents Act relate to remedies in intellectual property?

Sections 67, 75, and 76 Signup and view all the answers

Why are statutory damages seen as significant in copyright cases according to the PH Hydraulics case?

They help deter future infringements effectively Signup and view all the answers

What is the main purpose of the account of profits in copyright infringement cases?

To determine the actual profit made by the infringer derived from the infringement. Signup and view all the answers

Which section of the Copyright Act states that damages and account of profits are mutually exclusive?

Section 305(2) Signup and view all the answers

In the context of patent remedies, what does Section 67(2) of the Patents Act prohibit?

Awarding both damages and a profit account for the same infringement. Signup and view all the answers

How was the decision made in the Main-Line Corporate Holdings Ltd v UOB case regarding the remedies election?

The court ruled that the remedies available were cumulative and not alternative. Signup and view all the answers

How can profits be reduced when calculating the account of profits?

By deducting costs and expenses and apportioning profits from non-infringing activities. Signup and view all the answers

What was the relationship between UOB and FCC in the context of patent infringement?

UOB used FCC's infringing system but did not participate in the creation. Signup and view all the answers

Under what circumstance can a claimant seek both damages and an account of profits in copyright infringement cases?

In exceptional cases as noted in section 305(3) CA. Signup and view all the answers

What is a potential outcome of infringing products incorporating misleading anti-piracy stickers?

Higher penalties for the infringers due to deceptive practices. Signup and view all the answers

Study Notes

Remedies in Intellectual Property Law

Statutory Damages: Awarded to compensate copyright owners when proving actual losses is difficult. Factors considered vary between the Copyright Act (CA), Trade Marks Act (TMA), and Patents Act (PA).
Additional Damages: Awarded under the CA for flagrant infringement and benefit gained by the defendant, intended to deter future infringement.
Account of Profits: Aims to recover the actual profit made by the infringer due to infringement. Deducting costs and expenses, or apportioning profits if infringement is only part of a chain of activities, are methods to adjust the account.
Election of Remedies: The general principle prevents double recovery.
Copyright and Trade Marks: Damages, account of profits, and statutory damages are mutually exclusive. Exceptionally, both damages and an account of profits can be awarded under certain circumstances.
Patents: Awarding both damages and an account of profits for the same infringement is prohibited.

Defence and Counterclaim - Putting Validity into Issue

A defendant facing an infringement action can defend by challenging the validity of the registered trademark (TM) or patent.
If the TM is found invalid or revoked, or the patent is revoked, the claimant loses grounds to pursue infringement claims against the defendant.

Grounds for Invalidation/Revocation

Trademarks: Section 22 TMA addresses revocation of a TM registration, while Section 23 addresses invalidation.
Patents: Section 80 of the PA outlines grounds for revocation.

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Description

Explore the various remedies available in Intellectual Property Law, including statutory damages, additional damages, and accounts of profits. Understand the principles that govern these remedies and the circumstances in which they can be combined or applied. This quiz covers key concepts from copyright, trademarks, and patents.