IPL 2 - Trademark Exclusive PDF

Takeaways Remedies in intellectual property infringement cases can include damages, statutory damages, additional damages, and accounts of profits. Damages compensate the claimant for their actual losses, while statutory damages help when it is difficult to prove actual losses. Additional damages...

Takeaways Remedies in intellectual property infringement cases can include damages, statutory damages, additional damages, and accounts of profits. Damages compensate the claimant for their actual losses, while statutory damages help when it is difficult to prove actual losses. Additional damages have a punitive element and are less focused on compensation. Accounts of profits look at the defendant\'s profits from the infringement rather than the claimant\'s losses. Different IP rights have provisions for different remedies, and there may be mutual exclusivity between certain remedies. In some cases, a claimant may be able to obtain both damages and an account of profits. Defendants can challenge the validity of the trademark or patent as a defense in infringement cases. Invalidation or revocation of the trademark or patent can result in the claimant losing the case. Andrew Yip (00:00.906) After looking at infringement, let us now consider remedies and putting validity into issue in defence and counterclaim. First, remedies. A claimant may want a variety of remedies in an enforcement action, including search orders and injunctions, but we will just focus on damages These are the pertinent sections of the X that we are concerned with dealing with remedies in general. You would already be familiar with the concept of damages, but how about statutory damages? These are available under the Trademarks Act and Copyright Act. Have a look at the factors in the Act yourself. Under Section 307 of the Copyright Act, there is also a different creature called Additional Damages. We understand that in ordinary damages, the claimant is compensated for the loss he suffered. However, the case on this slide reinforces the principle that statutory damages help a claimant when he finds it difficult to prove his actual losses. The court applied the relevant factors for statutory damages to the facts of the case, as you can read on this slide and the next. Andrew Yip (01:38.922) As mentioned earlier, there is a different creature called additional damages under the Copyright Act. These have less to do with the compensatory principle and have more to do with the punitive element. In the case on this slide, the judge looked at whether there was deplorable conduct on the part of the defendants. You would also already be familiar with accounts of profits. Instead of looking at what the claimant lost, one looks at what the defendant profited from the infringement. In calculation of profits, the defendant\'s costs would be deducted from its receipts. If a chain of activities generated the profits, one would have to apportion the profit attributed to infringing acts and the profit due to non -infringing acts. The claimant should only get the former. As you read the respective remedies provisions of the IP rights, you will notice that there are some mutual exclusivities. The rationale for election between alternative remedies is to prevent double recovery. Under the Copyright Act and Trademarks Act, damages, account of profits and statutory damages are mutually exclusive, so a claimant has to elect his choice of remedy. Exceptionally, however, there are circumstances under which a claimant might obtain both damages and an account of profits. Read the provisions to find out more. Likewise, under Section 67.2 of the Patents Act, damages and an account of profits are mutually exclusive in respect of the same infringement. In the mainline case, Section 67.2 was considered. Andrew Yip (03:38.318) In this case, the claimant claimed different remedies, namely damages and an account of profits, against different defendants. At first glance, this seems to go against Section 67.2. So why did the High Court allow the claimant\'s election? The High Court observed that the causes of action against the defendants were separate and distinct. The defendants were thus separately liable for patent infringement. the claimant\'s election of both damages and an account of profits was not in respect of the same infringement. Section 67 -2 therefore did not apply and the claimant could get its different elected remedies against the different defendants. Having looked at remedies in the context of infringement suits, let us now consider the matter from the defendant\'s perspective. This is the typical scenario. The claimant starts an infringement action alleging that its trademark or pattern has been infringed. The defendant\'s case is that the claimant\'s trademark or pattern should not be on the register at all. It files a defense encounter claim to say why. If the trademark is found invalid or the trademark or patent is revoked, the basis for the claimant\'s case is gone and it will lose the case. What then are the grounds for invalidation or revocation? I will leave you to read the provisions here and recap the earlier coverage on trademark invalidation and revocation as well as patent revocation. B24 IPL - Trademarks - TM Basics - Trade Mark Basics - Symbols - what is a trademark? - Benefits of registration - **[Practical considerations pre-registration]** - Registration process - **[Opposition process]** - Criteria: **[Absolute Grounds]** for Refusal - s7(1)(b) devoid of distinctive character s7(1)(c) designate objection 1. 2. 3. 4. - Han's (F & B) Pte Ltd v Gusttimo World Pte Ltd \[2015\] 2 SLR 825 ("Hans") - Love & Co Pte Ltd v The Carat Club Pte Ltd \[2009\] 1 SLR(R) 561 ("Love") - In the Matter of a Trade Mark Application by Marvelous AQL Inc \[2017\] SGIPOS 3 ("Marvelous") - s7(2) Acquired distinctive character as a result of use - Criteria: **[Relative Grounds]** for Refusal - ▪ Relative grounds vs absolute grounds ▪ What is an earlier trade mark - ▪ Section 2(1) - earlier trademark by priority by date of registration - ▪ Section 8 - ▪ Section 8(2) - ▪ Section 8(2)(b) (most common objection) - Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal \[2014\] 1 SLR 911 ("Staywell") - three-stage test - Stage 1 mark-for-mark comparison. **[Are the marks more similar than dissimilar?]** If the marks are not similar, then there is no need to evaluate steps 2 and 3 - As a **[whole]**, but with varying **[threshold]** for technical distinctiveness - Whose perspective? - **[impression]** of the **[avg consumer]** - Visual similarity - 4 points - Oral similarity - 2 approaches - Conceptual similarity - Stage 2 : Compare the goods and services - British Sugar factors - Stage 3: Assess the likelihood of confusion - impermissible/ permissible factors - permissible factors - impermissible factors - non-exhaustive factors - Registration and Renewal of Trade Marks - Registration - Renewal