This article is part of Asia Law Network’s partnership with Tech in Asia where we publish articles written by lawyers on their advice for startup founders.
It has been said that imitation is the sincerest form of flattery. However, product owners probably wouldn’t agree. Having your competitor copy your product can lead to a range of outcomes, none of which are particularly desirable.
So, if you want to know how you can prevent others from copying your product, read on.
What intellectual property rights do you have in your product?
As a first step, it is critical to understand what intellectual property (IP) rights you have in your product. Different products have different types of IP rights. You need to understand these before you can move on to preventing others from copying your product.
The most common types of IP are briefly discussed below.
Trademark
A trademark is a “badge of origin” which distinguishes your goods and services from those of others. A trademark can be in the form of a word (or words), a logo, or a combination of both. For example, some famous trademarks are “Samsung” (a word), the Nike “swoosh” (a logo), and Starbucks’ sign (a combination of words and a logo).
If you have registered your trademark with the Intellectual Property Office of Singapore (IPOS), you will have certain legal rights. However, if you have not registered it, you will still have legal rights to prevent others from using a confusingly similar mark, provided that you can show there is goodwill in the trademark.
Copyright
Copyright grants the copyright owner a bundle of rights with respect to original works such as paintings, sculptures, novels, and musical compositions. This essentially prevents others from copying the works. An original work enjoys copyright protection as long as certain conditions are fulfilled. There is no system of copyright registration in Singapore, and no need to register your work to enjoy copyright protection.
Software source code may be protected as a literary work under copyright law in Singapore. The software owner can prevent a third party from copying his source code, but he cannot prevent someone from independently developing a new software that fulfills the same function.
Patent
Patents are rights granted under the Patents Act to protect inventions. They are only granted if an invention is novel and involves an inventive step. In order to obtain patent protection in Singapore, it is necessary to file a patent application with IPOS. While this is time-consuming and expensive, the rights granted by a patent are more extensive than other categories of IP.
Confidential information/trade secret
Confidential information refers to non-public information which is private to a company or individual. Trade secrets are a category of confidential information which is highly valuable (e.g. KFC’s fried chicken blend).
Under Singapore law, a person who has access to confidential information/trade secrets is obliged to keep that information confidential and cannot disclose the information to third parties without permission.
Registered design
A design refers to the visual features of shape, configuration, pattern, or ornament which give an article or product its appearance (e.g. the distinctive shape of the Coca-Cola bottle). The registered design regime allows design owners to protect the appearance of their product by registering the design with IPOS. Third parties are not allowed to copy this without the owner’s permission.
It is possible for a product to be protected by more than one form of IP. For instance, Apple’s iPhone would enjoy trademark protection (over the use of the “iPhone” brand), copyright protection (over the phone’s software source code), patent protection (for the technology that powers the phone), and even registered design protection (over the distinctive shape of the phone).
How was your product copied?
The next question to consider is how the copycat copied your product. Depending on this, different IP rights will come into play, and this will affect how you respond.
For example:
- Is the copycat using a similar or identical name to your product? Or are they trading under a name that is similar or identical to your company’s name? (Possible trademark infringement)
- Has the copycat reproduced your pictures of your product without permission? (Possible copyright infringement)
- Does the copycat’s product function in the same manner as what you have claimed in your patent? (Possible patent infringement)
- Have you disclosed confidential product information to an ex-employee who has joined a competitor who starts selling a product that he could not have produced without this information? (Possible breach of confidence)
- Is the copycat selling a product that has a similar or identical design to yours? (Possible infringement of registered design)
Whether a copycat has infringed your rights really depends on the type of IP rights in your product and the manner and extent to which your product has been copied.
It is important to note that just because a competitor has developed a similar product, it does not necessarily mean that he has infringed your IP rights (e.g. if a competing software developer creates a similar piece of software by writing his own code).
For certain products, it may be possible to incorporate “fingerprints” (i.e. quirks, distinguishing features, or even deliberate errors) into the products so that it would be easy to show that the copycats did not develop their own product independently.
What can you do if someone is copying your product?
Taking legal action may be the most obvious solution, but it may not always be the right one!
To illustrate this, here’s an example. In 2003, a photographer took a photo of the Californian coastline for a project and uploaded them online. One of these photos showed American singer Barbra Streisand’s residence. Streisand sued the photographer asking him to take the photo down. Before the lawsuit, the photo was only downloaded six times. However, because of the publicity created by the lawsuit, the site was visited by almost half a million people.
This phenomenon is called the “Streisand effect.” If there is a copycat who does not intend ill will (e.g. video game fans creating fan art), you may want to try a softer approach instead of taking legal action right away. If not, you run the risk of drawing more attention to the copycat and possibly damaging your own reputation.
For copycats that are not so innocent (e.g. they are passing off their product as yours and causing you a loss in profit), the standard way to take legal action is to engage a lawyer to send them a letter of demand/cease-and-desist letter, demanding that they stop selling your product and pay you damages.
If they don’t comply with this letter, you can commence with legal proceedings by filing a writ with the Singapore courts.
For IP matters, a successful claimant may obtain a range of remedies including:
- Damages
- An injunction (a court order to prevent the defendant from using the IP)
- A court order to deliver or destroy all infringing materials
This will depend on what type(s) of IP were involved.
Do note that litigation is expensive. Even if you succeed and are compensated, you may only recover 60 percent or less of your legal costs. It is therefore advisable to consider alternative methods of dispute resolution (such as mediation) at an early stage of the dispute before legal costs start mounting.
Have a question on Intellectual Property?
If you have any questions about Intellectual Property, you can request a quote with Jeremiah Chew. Alternatively, you can get a Quick Consult with one of the practicing lawyers on our platform. With Quick Consult, you can check out in minutes and for a transparent, flat fee, the lawyers will call you back on the phone within 1-2 days to answer your questions and give you legal advice.
This article is written by Jeremiah Chew from Ascendant Legal LLC.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.
Continue reading:
- 3 ways to legally avoid co-founder conflicts
- Registered Designs Act: A Brief Introduction
- Copyright Law In Singapore: A Brief Overview
