Editorial: Trademarks in Singapore
01 October 2007
As companies continue to expand in Asia, their trademarks need new levels of protection. With the legal system becoming ever more sophisticated, protection of trademarks and trademark litigation must meet high standards in a market where the intellectual property laws can be unfamiliar to foreign companies and counterfeiting poses a particular danger.
Alban Tay Mahtani & de Silva is a firm that has been on the scene in Singapore for 13 years and in that time it has carved out “an excellent and established name in trademark work”. Lawyers from this “excellent team” offer the full range of services, from searches to preparation, filing and prosecution of trademark applications, anti-counterfeiting campaigns and litigation. Alban Kang is managing partner of the firm and was praised as a “highly successful trademark litigation lawyer”. His client list is varied and includes IT, communications and entertainment companies as well as fashion brands, hotel chains and advertising agencies. He has represented companies such as Levi Strauss, Chanel, Tag Heuer, Breitling and the Entertainment Software Association (ESA). Head of intellectual property Sheena Jacob is “very well regarded” among her peers, especially for her representation of software, pharmaceutical and biotechnology companies. She has acted as counsel to companies such as Pfizer, Autodesk, Apple, Attogenix and Singvax, advising on trademark issues.
Drew & Napier LLC has “a very large, efficient and well-regarded trademark practice” that handles an especially large amount of overseas registration for American, European and Japanese clients. The firm secures trademarks directly in Singapore, Malaysia and Brunei and handles trademarks transactions and litigation. Clients such as McDonald’s, Pfizer Pte Ltd, Intel and Adidas Salomon have sought the trademarks team’s expertise. The “highly esteemed” Morris John is the head of intellectual property and renowned as a trademark advisory and registration expert. He successfully represented Pfizer Pte Ltd in an infringement case against a pharmacist, which resulted in a two-month conviction. Dedar Singh Gill is head of the trademark business group and was recommended as “fabulous for litigation, registration, oppositions and rectification work”. Representing RH Macy against Trade Accents, he obtained a motion for the rectification of the ‘Macy’ mark, based on the bad faith of the registered proprietor Donaldson & Burkinshaw was founded in 1874 and is Singapore’s oldest established partnership. The firm serves mainly overseas clients from sectors such as publishing, entertainment, computing, advertising and technology. Clients include Abbott Laboratories, Chrysler Corporation, Kabushiki Kaisha Yakult Honsha, Nestlé and Sanyo Electric. The firm acted for Yakult (Singapore) Pte Ltd, manufacturers of the Yakult lactic acid drink against a Singapore manufacturer producing a similar drink named Vitagen. Tan Bok Hoay is “a senior, well respected” partner whose practice focuses especially upon high-technology computer and software multinational corporations. Elaine Chiam is a “recognised registration specialist” and is known for her knowledge of the Malaysian markets in particular.
Baker & McKenzie.Wong & Leow’s trademark practice is very strong in the information technology and communications products arenas. The firm has been expanding its Singapore practice, operating local portfolios for multinationals such as Unilever, as well as regional ones for Asia-Pacific companies. Lorraine Anne Tay heads the firm’s trademarks practice and was described as “among the best” by contributors. Her peers roundly praised her work on product launches and trademark prosecution, including due diligence measures. Andy Leck’s practice focuses on the litigation side. “A pleasant and efficient litigator”, his clients include multinationals such as Caterpillar.
Amica Law LLC is a specialist intellectual property and technology law firm with a “sterling reputation” for transactional and litigation work such as audits, due diligence exercises, domain name disputes and anticounterfeiting programmes. The firm worked on an infringement matter in relation to remote-controlled cars and has fought an infringement claim concerning the use of a descriptive term for beverages. This “firm of exceptional lawyers” is home to Jo-Ann See, “one of the key practitioners in trademark registration in Singapore”. Her clients hail from industries such as entertainment, cosmetics, food, technology, consumer products and hospitality.
Lee & Lee provides a “highly comprehensive service” to local and international clients. Head of intellectual property Tan Tee Jim SC was extolled as “a lawyer of the utmost integrity” and received a slew of nominations from his peers, who rated him “one of the top litigators in Singapore”. Acting for Da Vinci Collection Pte Ltd he set aside an injunction for Richemont International in an infringement case regarding watch straps.
Haq & Selvam’s “highly reputable group” handles all aspects of the trademarks process, from conducting searches and filing renewals to handling opposition and defence against infringement. Murgiana Haq is recognised as a “high-profile practitioner” by sources.
Rodyk & Davidson LLP represents clients from individual inventors to multinationals in turnkey agreements, disaster arrangements and cross-border exploitation of trademark rights. Lee Ai Ming has a “very well established” practice and was widely complimented for the quality of his trademark registration work. She is well known for complex trademark dispute resolution through arbitration, counselling and litigation, she also manages trademarks portfolios.
One Legal LLC specialises in corporate and intellectual property law, and was established in 2005. Co-founder Regina Quek is well versed in all aspects of trademarks law and “is confident with local and cross-border law”. Her clients can come from the automobile, shipping, information technology, fashion and consumer products industries as well as working for academic institutions. She advised a Singapore chain of restaurants on the protection of its trademarks in different jurisdictions and represents an Indonesian conglomerate on the acquisition of an intellectual property rights portfolio, which includes European trademarks.
Prithipal & Associates is another recent addition to the Singapore IP law landscape. This “high quality boutique law firm” specialises in all areas of information technology and intellectual property. Prithipal Singh, its founder, was praised for his “smart, flexible decision-making”.
Trademarks work is a big focus at Infinitus Law Corporation, where all areas are covered for local and foreign clients. Litigation and enforcement constitute particular specialities at the firm. Teresa O’Connor is a “smart, dedicated practitioner”, who concentrates on trademarks advice for local clients and prosecution for foreign companies.
Allen & Gledhill LLP’s “strong IP practice” contains an “excellent trademarks capability”, according to sources. Elaine Tan’s practice concentrates particularly on litigation and anti-piracy actions as well as advising on issues such as computer system access and domain names.
Tan Peng Chin LLC is the final firm to be mentioned in this chapter. The firm manages the worldwide trademark portfolios of a number of companies. Mark Lim is the head of the intellectual property, media and entertainment department. Representing clients such as Asia Pacific Breweries, Autodesk Asia Pte Ltd, Jollibean Foods, Music Publishers (S) Ltd and Nokia, Lim has worked to establish a “dynamic trademarks department” within the firm. He is involved in both litigation and non-contentious matters and manages the entire worldwide trademark registration portfolio of the BreadTalk group.