Singapore

Singapore is on its way to solidifying its position in the global IP arena with the unveiling of the Singapore IP Strategy 2030 (SIPS 2030) on April 26, 2021, during World IP Day. SIPS 2030 is a 10-year blueprint anchored on innova-tion, intangible assets (IA) and IP. Building on the 2013 IP Hub Master Plan, SIPS 2030 aims to maintain the country’s position as a top-ranked IA/IP regime and bolster its reputation as a global hub for IA and IP activities and transactions. Among the initiatives are the development of a next-generation IP filing system, collaborations with law schools and professional training providers, stronger ASEAN and global linkages, development of good jobs and valuable skills in IA/ IP and growing innovative companies with strong IA/IP foundations. The latter will be achieved via an online marketplace for IA/IP services called IP Grow and a credible and trusted IA/IP valuation ecosystem.

In line with the IP Strategy 2030, the government announced additional IP resources for business enterprises in the country and overseas during IP Week SG 2021 in August. The new suite of IP resources aims to assist businesses in their growth despite Covid-19 and help them emerge stronger from the pan-demic by helping them to maximize the value of their IP and IA. Among the new resources are the following: an expanded pool of practitioners whom enterprises can access for business advice during IPOS’s weekly IP business and legal clin-ics; the Mentoring IP Leaders programme for third- and final-year law students; introduction of Brand Search, the four-in-one search function on the IPOS GO mobile app; enhancement of regional IP cooperation programmes; extension of the Patent Prosecution Highway (PPH) pilot between IPOS and the China Nation-al Intellectual Property Administration for five years until August 31, 2026; and the virtual ASEAN IP Academy which provides IP training and capability building activities in all ASEAN countries.

Additionally, the government is also working on a major overhaul of Sin-gapore’s copyright law. The new bill is expected to be enacted in November 2021 and is set to introduce a number of new rights and exceptions that are not found in the current Copyright Act.

Previously, on June 28, 2021, negotiations for the first digital trade agree-ment between an Asian country and a European country kicked off when Singa-pore’s minister of trade relations S. Iswaran and the United Kingdom’s trade sec-retary Liz Truss spoke via videoconference to begin talks for the UK-Singapore Digital Economy Agreement (DEA). The agreement seeks to eliminate barriers to successful and efficient digital trade initiatives between Singapore and the UK, including red tape. Key focus areas of the negotiations are free and trusted cross-border data flows and protection of personal data as well as protection of intellectual property assets, including source code and cryptography.

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Allen & Gledhill provides advice on both contentious and non-contentious matters including prosecuting, enforcing and defending IPRs worldwide. Part-ner Stanley Lai heads the IP department with well-known clients such as Turner Broadcasting System, Pfizer, Inland Revenue Authority of Singapore, Nanyang Technological University and Singapore Telecommunications. Other leading practitioners at the firm include Pei Lin Low for patents and trademarks and Kok Leong Tham for copyright matters.

Established in 2006, Amica Law is a specialist intellectual property and technology practice with patent and trademark practitioners, attorneys and associates. Cofounder and director Jason Chan and JoAnn See respectively lead the litigation and enforcement team as well as IP protection and management matters. The firm, which bagged the patents firm of the year for Singapore at the 2020 Asia IP Awards, manages the worldwide patent portfolio of Accelerate Technologies, the commercialization arm of Singapore’s Agency for Science, Technology and Research. The team also manages the regional trademark portfolio of Amazon.com.

With more than 30 years of experience operating in Singapore, Baker McKenzie Wong & Leow provides full IP services including enforcement and litigation, patent transactions as well as portfolio management. Walt Disney and Ralph Lauren are clients. Managing principal Andy Leck has more than 20 years of experience in contentious and non-contentious IP matters and currently heads up the firm’s IP practice. In April 2021, Leck was appointed by IPOS to its panel of IP adjudicators. Principal Celeste Ang leads the litigation team.

Bird & Bird ATMD opened in Singapore in 2009 and has since represented high-profile clients, including Nestlé and Fox Network, in infringement disputes as well as BBC, Discovery and La Liga in securing site blocking orders in Singapore, among others. Partner Alban Kang is well-known for his significant expertise in representing major companies in complex litigation, while joint managing partner Lorraine Tay is noted for her experience in international and cross-border issues. Anan Sivananthan is a top practitioner for patent and copyright matters. Litigation specialist Lijun Chui joined the firm as a partner in its dispute resolution practice.

Davies Collison Cave, one of Australia’s oldest and largest intellectual property law firms, has opened an office in Singapore. The office is led by four partners with over 70 years combined experience in IP law. This depth of expe-rience ensures clients are well-equipped to safeguard their IP in Australia, Sin-gapore and New Zealand.

Global law firm Dentons and venerable Singapore firm Rodyk & David-son formalized their combination on April 25, 2016. In Singapore, the firm op-erates as Dentons Rodyk, and the IP practice was rebranded as Rodyk IP. Key contacts include Woon Chooi Yew, Gilbert Leong and Catherine Lee. The firm, named copyright firm of the year for Singapore at the 2020 Asia IP Awards, of-fers transactional and contentious services as well as portfolio management. The firm successfully acted for Bavaria N.V. (Swinkels Family Brewers N.V.), manufac-turer of the popular Bavaria Holland Beer, in its opposition to a Singapore trade mark application for “BAVARIAN BEER”, a collective mark used by members of the Bavarian Brewers Federation to indicate the origin of beer made in Bavaria according to the specified regulations.

Established in 1874, Donaldson & Burkinshaw is the second-oldest law partnership in Singapore and has seven decades of experience in providing a full range of IP services to multinational corporations and businesses. Managing partner Michelle Ng is a key specialist who leads a team of professionals that have served clients including Coca-Cola, Nestlé, Colgate-Palmolive, GlaxoSmithKline and Red Bull.

Named trademark firm of the year for Singapore at the 2020 Asia IP Awards, Drew & Napier is a full-service firm with expertise across the range of conten-tious and non-contentious IP work including litigation, trademarks and service marks, copyright and designs, licensing, distributorship, franchising and confi-dentiality agreements. The firm is acting for an international tech startup – an applicant of various trademarks in Singapore and around the world for an up-and-coming super mobile app – as well as for Royal Caribbean Cruises, Henkel AG & Co. KGaA and its group of companies, Victoria Beckham Limited and oth-ers. The firm accounts for approximately 20 percent of all patent filings in Singa-pore with the largest IP department. Director of IP Yvonne Tang, is a key contact.

Ella Cheong’s Singapore office handles IP work, particularly trademark matters, for clients across Southeast Asia and the Indian sub-continent. Managing director Soh Kar Liang and director Kevin Wong are key contacts.

Francine Tan Law Corporation might be a small firm, but it is well re-spected by both local and international clients. Managing director Francine Tan has practiced in the IP field, particularly with regards to trademark portfolio work, for numerous clients over the past two decades.

Gateway Law Corporation is a regional legal practice with particular strength in the areas of intellectual property, advisory and enforcement, franchising, technology and communications, and media and entertainment law. The firm has acted for Formula One Licensing against the registration of the trademark F1H2O. It also successfully acted for Bosch in a private prosecution and a civil claim against an infringing company and its two directors for trademark infringement and passing off. Managing director Max Ng heads up the firm’s IP law practice.

George Hwang specializes in intellectual property, information technolo-gy, entertainment and media law. The firm, led by George Hwang, is particularly known for its work in the entertainment, information technology and engineer-ing industries, as well as its work assisting clients in commercializing their IP. His portfolio includes IP infringement proceedings, brand management and transfer of technology transactions. In May 2019, he was appointed as vice chair for the copyright committee of the Licensing Executive Society International (LESI).

Singapore firm Harry Elias Partnership was founded almost 30 years ago; after a merger with Eversheds Sutherland in 2017, the firms amicably demerged in June 2020. It assists clients with defending and taking action against offenders in trademark infringement and passing-off claims as well as in patent, design and copyright litigation. The firm has an advance system that enables it to man-age the filing and registration of large trademark, design and patent portfolios in a timely and cost-effective manner. Esther Wee is of counsel at the firm and head of IP; her expertise lies in devising and managing comprehensive IP filing and protection strategies. Former regional head of IP Brian Law has left the firm to become the managing partner of LAW Partnership in Kuala Lumpur.

Holborn Law is a member of CMS Holborn Asia, a Formal Law Alliance with CMS Cameron McKenna Nabarro Olswang (Singapore). It provides advice on dis-pute resolution, corporate transactions including fund raising and mergers and acquisitions as well as regulatory affairs. The firm services the technology, media and telecommunications industries. Heading up the IP practice of CMS Holborn Asia is Sheena Jacob, who has 25 years of experience as an international IP attor-ney under her belt.

Infinitus Law Corporation is a medium-sized full-service law firm. The IP practice is led by director Teresa O’Connor, and advises on a wide range of issues, including non-contentious prosecution work as well as anti-counterfeit-ing, patent and trademark litigation.

Joyce A. Tan & Partners is a business-centric commercial law practice with particular strengths in intellectual property, technology, telecommuni-cations, media and privacy. Director Daniel Lim’s practice focuses on dispute resolution and advisory work, with particular strengths in intellectual property, information technology and telecommunications matters.

Regional commercial law firm Kelvin Chia Partnership has a strong IP and IT practice. Managing partner Kelvin Chia oversees IP registration matters and seasoned litigation attorney Yee Ming Lim takes the lead on the contentious and opposition actions.

Co-founded in 1955 by Lee Kuan Yew, the late prime minister of Singapore, Lee & Lee is a comprehensive law firm that also provides an integrated service advising on both contentious and non-contentious IP matters. The firm’s trade-mark opposition and revocation actions and pharmaceutical patent prosecution work are also recognized. Leading practitioners include Tee Jim Tan and Yee Swan Boo.

Marks & Clerk comprises 15 attorneys and seven patent trainees in Singapore. The patent attorneys and patent trainees all have technical degrees, and most of the attorneys are qualified in two jurisdictions or more. Their strategy is to not only provide expertise in the law but also technical proficiency across a range of technologies. Managing partner Jim Greene-Kelly and head of trademarks Candice Kwok are key contacts.

Boutique firm McLaughlin IP has significant experience and expertise of drafting and prosecuting patent applications in a wide range of areas. It also practices patent litigation and provides technical and legal support to advocates and solicitors. In 2015, Michael McLaughlin acted as the patent attorney in the team which successfully defended a patent infringement claim brought by local company Mobilestats against the Attorney General of Singapore for an alleged patent infringement by the Ministry of Defense Singapore.

Mirandah Asia (Singapore) coordinates the activities of the firm’s other Asian offices and thus provides one-stop services for all IP matters in South-east Asia and Indian sub-continent. The firm has represented United States Polo Association before IPOS against a trademark opposition from The Polo/Lauren Company. The opposition was ruled invalid and the firm’s client was awarded costs. Other clients include Facebook and Salvatore Ferragamo, for which the firm secured registration for the 3D shape mark of a plate used on the brand’s product offerings. Director and patent agent Gladys Mirandah and consultant Prithipal Singh are key contacts in Singapore.

OC Queen Street, the Singapore office of Osborne Clarke, is a full-ser-vice firm with particular strengths in IP, tech and cybersecurity matters. At the forefront of that practice area is director Chia-Ling Koh, whose online bio de-scribes him as a “tech lawyer” – which is an understatement if we’ve ever heard one, because if you’re looking for a FinTech lawyer, Koh is probably your best starting point. He has acted in a number of high-profile IT/IP disputes, including PropertyGuru Pte Ltd v. 99 Pte Ltd, a copyright infringement case, and Main-Line Corporation v. United Overseas Bank Ltd, a patent infringement case.

Orrick, Herrington & Sutcliffe announced plans in late August 2021 to open an office in Singapore. The office, which will replace the office it closed in Hong Kong in mid-2020, will initially focus on energy and infrastructure, ac-cording to a Reuters news report. Although the firm hasn’t publicly announced plans for an IP practice in Singapore, intellectual property figures prominently in the firm’s other Asia offices, located in Tokyo, Beijing, Shanghai and Taipei.

Rajah & Tann’s IP team in Singapore handles contentious and non-con-tentious aspects of intellectual property law, with a special focus on the IT, en-tertainment, sports and media industries. Head of the team Kok Keng Lau’s main practice areas are IP law, gambling law and sports law. Some of the firm’s clients include the Singapore government, Sony, Lenovo and Nanyang Technological University. Wern-Jhien Yam has been promoted to partner in the firm’s com-mercial litigation practice group.

Founded in 1993, IP boutique Ravindran Associates handles patent, trade-mark and design filings and prosecutions. It also drafts agreements and provides opinions on IP matters as well as pleading in courts. Partner Paul Teo has rep-resented Kimanis Food Industries before the High Court and successfully de-fended its “Angry Bite” trademark application against Rovio Entertainment, the creator of Angry Birds. Other top IP practitioners include founding partner M Ravindran and partner Sukumar Karuppiah.

Leading regional firm RHTLaw Asia is a multi-disciplinary law firm, with practices including IP&T, litigation and dispute resolution, corporate and capital markets, financial services, aviation, real estate and tax. Rizwi Wun, one of the firm’s founding partners, currently serves as acting head of the IP&T practice; he advises on a wide variety of matters, including technology, telecommunications, fashion and luxury, food and beverage and games. The firm’s IP&T clients include companies in the advertising, media, tech, manufacturing, F&B, financial services, educational services and other consumer goods sectors. In early 2020, the firm split with its long-time legal ally Taylor Wessing, ending an eight-year relationship between the Singapore- and London-based firms. In May 2021, the firm celebrated the 10th anniversary of its founding in Singapore.

Robinson specializes in intellectual property law, and is particularly noted for its work in IP enforcement, commercialization and registration. Cyril Chua is the firm’s founder and managing director; over the past two decades, he has advised major clients in the telecommunications, software, luxury goods, automotive parts and IT sectors in relation to IP enforcement and anti-counterfeiting work in Asia.

Samuel Seow Law Corporation prosecutes trademark, patent and design applications in Singapore as well as overseas through an extensive network of international affiliates. The firm is also active in enforcement covering a wide range of industries from fashion apparel and F&B to information technology and media/ entertainment.

Shook Lin & Bok boasts of strong cross-border experience and relation-ships. The diverse legal education and language competencies of its 54 partners, 70 associates and foreign lawyers further solidify the firm’s standing as one of Singapore’s top-notch law firms. Its team of practitioners – many of whom have qualified in China, UK, India, Singapore and elsewhere – advise on protection of trademarks, patents, registered designs, trade secrets, confidential information, copyrights and domain names; online enforcement; dispute resolution; data pri-vacy compliance and risk management; IP audit, strategy & valuation; transfer and assignment of IP; and commercialization, among others. Partner Jevon Louis is a key practitioner.

With a strong group of qualified patent attorneys and technical special-ists, Australia-listed IP firm Spruson & Ferguson maintains a strong position in Singapore for patent and design filing and prosecution. The firm houses many professionals with various technical backgrounds and files more than 20 percent of patents in Singapore. Kristian Robinson is the managing director and as a qualified patent agent in Singapore, he is primarily involved in the preparation, drafting and prosecution of patent applications and also provides advice in all patent matters. It remains the top filer in Singapore in fiscal year 2018 according to search data from IPOS. It was the number one filer of patents (by total volume) and also the number one filer of PCT applications in Singapore. Other leading practitioners include principals Choo Chiou Yu, Le Hong Minh and Amy Chan. The firm is part of IPH Limited, the IP company holding company.

Boutique firm That.Legal demonstrates its highly-sought expertise culled from the strong international experience of its legal team as it delivers its ser-vices. These are: intangible asset (IA) protection and international IP portfolio management, IA/IP exploitation and commercialization, dispute resolution and others. The firm jointly acted for international hotel chain The Ritz-Carlton Ho-tels (Marriot Group) and The Ritz Hotel in a trademark infringement and passing off matter. It has also commenced legal proceedings on behalf of Eco World In-ternational and Eco World Development Group against ECOWORLD Inc for pass-ing off relating to the unauthorized use of “ECOWORLD.” Managing director Jon-athan Foong and executive director Mark Teng are key practitioners. New hires include Gillian Tan, senior of counsel, and ChaoYing Tang, senior legal manager. Their area of expertise is international IP portfolio management.

Munich-based Viering, Jentschura & Partner has been providing patent advisory and filing services in Singapore since 1997. Some of its notable clients include Singapore Health Service, Nanyang Technological University, OSIM International and Davos Life Science. Managing partner and Singapore patent attorney Adam Bogsch established and has since run the Singapore office. Other key practitioners include partners Audrey Goh and Peter Lian.

WongPartnership advises on the full spectrum of IP matters. Its IP team specializes in transactional, enforcement and advisory work including IP investment agreements, research & development collaborations, joint venture agreements, franchising and IP due diligence. Since its formation in 1992, it has worked with some of the best-known brands and IPR owners in the region. The firm acted for The Football Association Premier League Limited as well as for seven leading South Korean broadcasters and/or production houses on their copyright site blocking actions before the Singapore courts. The group also advised GovTech in relation to the phased roll out of the wearable devices to facilitate Covid-19 contact tracing in the country which involved IP issues, among others. Partner and patent agent Chung Nian Lam heads the firm’s intellectual property practice.