Remedies Defence and Counterclaim (Validity) PDF

Corporate & Commercial Practice Intellectual Property Remedies Defence and Counterclaim (Putting Validity into Issue) Intellectual Property Office of Singapore Remedies Remedies Statutory Damages Additional Damages Elect...

Corporate & Commercial Practice Intellectual Property Remedies Defence and Counterclaim (Putting Validity into Issue) Intellectual Property Office of Singapore Remedies Remedies Statutory Damages Additional Damages Election of Remedies Remedies Copyright Act (CA): section 305 Trade Marks Act (TMA): section 31 Patents Act (PA): sections 67, 75, 76 Statutory Damages Section 31(5)-(6) TMA Section 308 CA Factors are not the same under each Act Statutory v Additional damages: section 307 CA Statutory Damages PH Hydraulics & Engineering Pte Ltd v Intrepid Offshore Construction Pte Ltd and another SGHC 133 Principle: Statutory damages were introduced to aid a copyright owner when he encountered difficulty in proving actual losses (at ) Factors in s119(5) of old CA applied (at ) Nature and purpose of the infringing acts were commercial. Defendants geared themselves up as a potential competitor. Statutory Damages Infringement was flagrant Defendants hid their acts of copying, through name changes and flipping some of the profiles of winches from left to right in infringing drawings Little or no regret was expressed by either defendant Defendants benefited from being spared the time and expense in preparing the drawings Defendant’s conduct of proceedings less than satisfactory e.g. raised unsupportable defences which were abandoned at trial Need to deter such infringements in the future, considering the unfair appropriation of others’ work Additional Damages Section 305(1)(b) CA, damages include additional damages Section 307 CA Flagrancy of infringement Benefit gained by defendant because of the infringement New Line Productions Inc and another v Aglow Video Pte Ltd and others 3 SLR(R) 660 applied similar factors in s119(4) of old CA Punitive in nature, should not translate into extraordinary profit for claimant Look at whether there was deplorable conduct on the part of the defendants e.g. infringing products advertised as original and anti-piracy stickers even placed on infringing products to deceive the public Account of Profits Copyright Act (CA): section 305(1)(c) Trade Marks Act (TMA): section 31(2)(c) Patents Act (PA): section 67(1)(d) Bosch Corp v Wiedson International (S) Pte Ltd SGHC 105 Actual profit made by the infringer which is derived from the infringement Reduction in 2 ways: Deduct costs and expenses from receipts Apportionment of profits if the profits are generated by a chain of activities and the infringing acts occupy only a part of this chain (the other acts do not infringe) Election of Remedies General Principle Prevent double recovery Copyright and Trade Marks Damages, account of profits and statutory damages are mutually exclusive: s305(2) CA, s 31(4) TMA Exceptionally, damages + account of profits: s305(3) CA, s31(3) TMA Election of Remedies Patents Section 67(2) PA: The court must not, in respect of the same infringement, both award the proprietor of a patent damages and order that the proprietor be given an account of the profits. Main-Line Corporate Holdings Ltd v UOB and Anor (First Currency Choice, Third Party) SGHC 232 Election of Remedies Main-Line successfully sued UOB and FCC for patent infringement. Patent related to a Dynamic Currency Conversion system. FCC provided the system that processed transactions entered in point of sale systems with various merchants. UOB used the infringing FCC system. Main-Line elected the remedy of an account of profits against UOB and a remedy of damages against FCC. Defendants objected. High Court allowed claimant’s election. Election of Remedies -, Causes of action were separate and distinct in that one stemmed from FCC’s infringing acts relating to the creation of the FCC System prior to UOB’s involvement, and the other cause of action stemmed from the subsequent agreement between UOB and FCC. UOB and FCC were separately liable for patent infringement and had caused different damage. The remedies available to Main-Line were cumulative and not alternative. Section 67(2) does not apply. Defence and Counterclaim (Putting Validity into Issue) Defence and counterclaim Claimant starts infringement action against defendant Alleges that a registered TM or patent has been infringed Defendant files a defence and counterclaim that the registered TM is invalid / should be revoked for non-use; or that the patent is invalid and should be revoked If TM is found invalid, or TM or patent is revoked, claimant no longer has a basis to go after defendant for infringement Grounds for Invalidation/Revocation Revocation of TM Registration: section 22 TMA Invalidation of TM Registration: section 23 TMA Revocation of a Patent: section 80 PA Notice Copyright © 2024, Singapore Institute of Legal Education. All rights reserved. The Course materials are developed by the Singapore Institute of Legal Education, based on the content, syllabus, and guidance provided by the Chief and Principal Examiners and their teams. 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