Singapore border enforcement legislation bares teeth

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The Intellectual Property (Border Enforcement) Act 2018 (IPBE Act) was passed by Singapore’s parliament on 9 July 2018, and was assented to by the president on 2 August 2018. The IPBE Act implements a phased approach to fulfilling Singapore’s obligations under the EU-Singapore Free Trade Agreement (EUSFTA) and Singapore’s commitment to enhancing its border enforcement measures. It will also provide Singapore customs and intellectual property rights (IPR) holders with new and enhanced anti-counterfeiting powers.

The IPBE Act will include amendments to the Copyright Act (CA), Trade Marks Act (TMA), Registered Designs Act (RDA) and Geographical Indications Act (GIA).

The IPBE Act is being implemented in three phases. The first phase came into force on 10 October 2018, and made amendments to the powers under the CA and TMA. The second phase, which focuses on enhancing and standardizing the provisions in the CA and TMA, is scheduled to be implemented by 2019, when the EUSFTA is expected to come into force. The third phase, which focuses on changes to the RDA and GIA, is anticipated to come into effect within three years of the EUSFTA coming into force.

Previously, anti-counterfeiting efforts by Singapore customs were hindered by difficulties in obtaining and providing IPR holders with the information necessary for instituting IP infringement proceedings. However, the phase 1 amendments have diminished the information asymmetry between infringers and customs and IPR holders such that they are able to acquire necessary information – for example, the name and contact details of a person connected with the infringing goods – which will enable proper institution of proceedings.

With the recent phase 1 amendments, companies should bear the following in mind if any of their trademarks are the subject of an importation or exportation of counterfeit goods that are subsequently seized or detained by customs:

  • Customs have the power to acquire information from relevant persons who they reasonably believe might have any information or documents relevant for the IPR holder to institute intellectual property infringement proceedings against relevant parties in relation to seized imports; and
  • IPR holders have the right to acquire from customs the names and contact details of any person connected with the detained imports or exports necessary for instituting intellectual property infringement proceedings against relevant parties.

Companies should note that information may only be disclosed only after the goods have been seized and IPR holders have provided Customs with a security deposit and supporting documents evidencing their IPR rights.

KEY CHANGES IN EACH PHASE

PHASE

POWERS

Phase 1: In force since 10 October 2018

Phase 1 amendments to CA and TMA empower:

(1) Customs to acquire information from persons whom they reasonably believe to have any information/document relevant for the purpose of enabling IPR holders to institute IP infringement proceedings against persons connected with the seized imports (sections 4 and 57 of the IPBE Act); and

(2) IPR holders to acquire, from customs, the names and contact details of any person connected with the detained imports/exports necessary for instituting IP infringement proceedings (sections 7 and 60 of the IPBE Act).

Phase 2: Upon entry into force of EUSFTA, by 2019

Phase 2 amendments to the CA and TMA will:

(1) Enhance border enforcement measures, including empowering IPR holders to request customs to inspect and seize infringing exports, which currently only apply to imports, and extending customs’ power to acquire information on seized goods to exports as well as imports (sections 12 and 65 of the IPBE Act); and

(2) Standardizing the terms and provisions relating to border enforcement in the CA and TMA.

Phase 3: Within three years of the EUSFTA coming into force

Phase 3 amendments to the GIA and RDA will:

(1) Enhance border enforcement measures, including empowering IPR holders to request customs to inspect and seize infringing exports/imports (sections 35 and 53 of the IPBE Act), and empowering customs to acquire information from persons whom they reasonably believe to have any information/document relevant for the purpose of enabling IPR holders to institute IP infringement proceedings against persons connected with the seized exports/imports (sections 39 and 53 of the IPBE Act); and

(2) standardizing the terms and provisions relating to border enforcement in the GIA and RDA.