Intellectual Property

Overview

The firm’s Intellectual Property Practice provides an integrated service advising on both contentious and non-contentious intellectual property matters.

Lee & Lee’s well-established team of IP experts has extensive experience in advising on the full range of intellectual property matters and can help you manage and protect your IP rights globally. Led by Senior Counsel Tan Tee Jim S.C., our team represents a wide variety of entities, ranging from multi-national corporations and government-linked companies, to major IP rights bodies and small and medium enterprises.

Our Work

Our practice covers:

Intellectual Property Litigation, Prosecution and Enforcement

Our team has extensive experience in trade mark, copyright and patent infringement litigation. Led by Tan Tee Jim S.C., our team handles the full spectrum of IP and IT-related disputes, including the following aspects:

  • Trade mark opposition and revocation actions
  • Civil proceedings for trade mark, copyright and patent infringement
  • Actions for passing off
  • Actions for breach of confidence and/or trade secrets
  • Disputes arising from IT and telecommunications-related agreements
  • Domain name litigation
  • Disputes arising from franchise, distribution and supply agreements and technology licences
  • Pharmaceutical patent prosecution

Our team also represents major clients, including IP rights bodies in the film, sound recording and software industries. We work closely with them to protect their interests via:

  • Prosecution of trade mark and copyright-related offences
  • Offering advice on entrepreneurial rights
  • Offering advice on strategies to best protect our clients’ interests

For further information, please contact:
Tan Tee Jim, S.C.
Toh Kok Seng
Maurice Cheong
Zechariah Chan


Brand Protection Strategies & Managing IP Portfolios

Our dynamic team is able to advise on strategies to best protect your intellectual property rights and manage your IP portfolios. We are also able to procure registrations of your trade mark, patent, registered designs and domain names internationally, and to ensure that the value in your intellectual property rights is adequately protected. We also have lawyers who are also qualified patent agents.

For further information, please contact:
Tan Tee Jim, S.C.
Boo Yee Swan


IP/IT Transactional Work

Our team is equipped to advise on all aspects of IP exploitation and protection, including franchise documentation, licensing and technology transfer agreements, research collaboration agreements, joint development agreements and supply agreements.

We offer the full complement of services relating to IP/IT transactional work, including:

  • Restructuring of IP asset holding vehicles
  • Drafting IP investment and funding agreements
  • Technology licensing
  • Joint venture, research collaboration and development agreements
  • Technology transfer agreements
  • Information technology related agreements
  • Franchise and sub-franchise agreements
  • Distribution agreements
  • Supply agreements

Some of the more notable IP/IT-related transactions we have provided advice on include:

  • Advising a Singapore listed company in negotiating a research collaboration agreement with an educational institution
  • Advising on the acquisition of a well-known Singapore website by a Singapore listed company
  • Advising on the purchase of a technology company by a well known consulting firm
  • Advising a subsidiary of a Singapore listed company on a research and development agreement with a statutory board and an educational institution
  • Advising on a franchising agreement with a celebrity chef
  • Advising on a franchising agreement with a well-known confectionary brand
  • Advising a major international bank on data leakage policies and personal data protection

For further information, please contact:
Tan Tee Jim, S.C.
Boo Yee Swan
Zechariah Chan


Technology, Media & Telecommunications

As Singapore strives to become a global Intellectual Property hub in Asia, our team is in the forefront of developing new licensing frameworks and strategies in the areas of technology, media and telecommunications. We regularly draft, review and advise on complex software and related technology agreements. We have also advised on software and internet-based transactions, as well as personal data protection and management.

Our team has represented a wide range of major clients, including statutory boards, media regulators, local and foreign media and entertainment companies, and IP rights bodies in the film, sound recording and software industries. Our broad experience and in-depth knowledge of the industry allows us to offer expert advice on matters such as commercialization and exploitation of creative works, enforcement of IP rights, licensing matters and regulatory compliance.

We also work jointly with our firm’s Corporate Department with regard to media-related corporate transactions. In recent years, one such transaction involved advising the vendors in respect of the acquisition of a leading online food portal in Singapore in a multi-million dollar deal.

Other work highlights include:

  • Advising a major player in Singapore’s next-generation nationwide broadband network industry, in respect of a contentious matter involving a contractual dispute
  • Advising a start-up company on its obligations under several popular open-source software licences such as the GNU General Public Licence and Lesser General Public Licence, as well as the creation of a discussion forum on their website
  • Reviewing multiple agreements relating to the licensing of software and copyright between the Singaporean branch of a Japanese mobile giant and a Korean counterparty
  • Advising a statutory board on the impact and effect of the Code of Practice for Market
  • Conduct in the Provision of Media Services introduced by the government to regulate the cable television industry
  • Reviewing multiple technology licensing agreements for one of the largest national oil companies of China

Lee & Lee’s head of Intellectual Property, Mr. Tan Tee Jim, S.C, has also written numerous articles analysing the legal developments in this fast-paced and dynamic area of law, including the recent article “New Law for Compilations and Databases in Singapore?”, which was published in a special 2012 issue of the Singapore Academy of Law Journal.

For further information, please contact:
Tan Tee Jim, S.C.
Toh Kok Seng
Maurice Cheong
Zechariah Chan


Privacy & Data Protection

Overview

The emerging area of personal data protection law has created new and often complex legal issues for companies that deal with employees’ and clients’ personal information. Organizations must now ensure compliance with statutory regulations that require them to ensure that personal data is collected and managed subject to informed consent, and to develop and communicate policies that facilitate the safe handling of personal data, both within the organization and beyond. Lee & Lee’s Privacy and Data Protection Practice, led by our Senior Counsel, Tan Tee Jim, S.C. leads the way in helping organizations respond to new challenges brought about by the rapidly-changing legal environment surrounding privacy and personal data protection.

Our Work

Lee & Lee’s Privacy and Data Protection Practice evaluates, advises and assists clients by bringing their organizations into compliance with personal data protection laws. We are able to conduct a privacy impact assessment for the organization to understand and appreciate the existing state of compliance with statutory requirements. This would identify the needs of the organization so that active steps may be taken to conduct or oversee a compliance exercise to bring their organization in line with current personal data protection laws.

Highlights

In addition to advising on numerous website privacy policies and queries, Lee & Lee has also received many queries regarding the impact and application of the Personal Data Protection Act to organizations in Singapore. We have conducted several personal data protection seminars for our clients and friends to help our clients manage the transition to bring their organizations into compliance with the personal data protection regime in Singapore.

For further information, please contact:
Tan Tee Jim, S.C.
Francis Lim
Zechariah Chan


Competition

Overview

The steadily developing area of competition law creates new and complex legal issues to be resolved. Business agreements, commercial practices and corporate transactions are increasingly subject to intense scrutiny for anti-competitive practices. Led by experienced Senior Counsel Tan Tee Jim, Lee & Lee’s Competition Practice is able to respond to such legal developments as clients face new challenges in a rapidly changing environment.

Our Work

Lee & Lee’s Competition Practice advises and represents clients on the complete range of competition law issues. The issues principally relate to anti-competitive agreements, abuse of dominant position and mergers which have resulted, or may result, in a substantial lessening of competition in any market in Singapore. Our practice has represented clients in relation to such issues before both the Competition Commission of Singapore (CCS) and the Competition Appeal Board (CAB).

Case Highlights

In 2008, Lee & Lee represented a major multi-national in an investigation by the CCS concerning tenders for contracts in the pest control industry. The investigation resulted in the first written, and landmark, decision by the Commission.

Between 2009 and 2010, Lee & Lee represented the Singapore branch of a major multi-national technology company that was required by the CCS to provide information and documents to assist the CCS in investigations concerning a possible breach of section 34 of the Competition Act in relation to the supply and procurement of optical disk drives. Our practice advised the client on key concerns, including the scope and extent of information to be provided to the CCS, and the protection of confidential commercial information.

In 2011, Lee & Lee represented 7 modelling agencies in an investigation by the CCS concerning an agreement by the Association of Modelling Industry Professionals (AMIP) to fix prices for services in the modelling industry. Whilst the facts of the matter resulted in the CCS finding that the members of the AMIP had breached the prohibition against price fixing under section 34 of the Competition Act, successful representations were made on behalf of the 7 agencies and the penalties imposed by the CCS on them were substantially reduced.

Between 2012 and 2013, Lee & Lee also represented 4 of the 7 modelling agencies in a successful appeal to the CAB wherein the penalties imposed on the 4 modelling agencies were further reduced by a significant percentage. The CAB accepted submissions made on behalf of the said modelling agencies that the high turnover and low margin characteristic of the modelling industry was a mitigating factor and accordingly, the penalties imposed by the CCS ought to be further reduced.

Most recently, Lee & Lee represented a major global financial services provider in making leniency applications to the CCS under the CCS Guidelines on Lenient Treatment for Undertakings Coming Forward with Information on Cartel Activity Cases 2009. The leniency applications relate to suspected breaches of section 34 of the Competition Act. The CCS’ investigations are currently ongoing.
For further information, please contact:
Tan Tee Jim, S.C.
Mervyn Foo

 

Case Highlights

See Details
  1. Representing a major local property developer before the High Court and Court of Appeal in the first contested action on well-known trade marks in Singapore
  2. Representing a company before the High Court and Court of Appeal in a trade mark revocation and invalidation action in relation to a dispute over Chinese herbs worth approximately S$20 million
  3. Representing a foreign IT equipment and services provider in a trade mark revocation and invalidation action against a major telecommunications corporation
  4. Advising and representing a multi-national group of companies in civil and criminal actions brought by a major foreign luxury goods brand
  5. Representing a popular coffee chain before the High Court and Court of Appeal against a well-known manufacturer of confectionery products
  6. Representing a leading offshore oil and gas equipment manufacturer before the High Court in a claim involving a leak of confidential information
  7. Advising and representing major pharmaceutical companies in enforcing and protecting their patent rights in Singapore
  8. Advising one of the world’s largest software makers in prosecuting its IP rights in Singapore
  9. Advising major IP rights watchdogs in the protection of their IP rights in Singapore
  10. Assisting a major oil and gas company in the investigation of leaked confidential documents

Notable decisions in which Lee & Lee’s head of Intellectual Property, Mr. Tan Tee Jim, S.C., has been involved in include the following:

  1. Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2012] SGCA 56 – trade marks
  2. PH Hydraulics & Engineering Pte Ltd v Intrepid Offshore Construction Pte Ltd and another [2012] 4 SLR 36 – copyright, confidential information and breach of restraint of trade clause
  3. The Singapore Professional Golfers’ Association v Chen Eng Waye and others [2012] 3 SLR 699 – passing off
  4. Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011] 4 SLR 381 – copyright and passing off
  5. City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 – trade marks
  6. Novelty Pte Ltd v Amanresorts Ltd and another [2009] 3 SLR(R) 216 – passing off and trade marks
  7. Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and another and another appeal [2009] 2 SLR(R) 814 – trade marks and copyright
  8. Mitac International Corp v Singapore Telecommunications Ltd and another action [2009] 4 SLR(R) 961 – trade marks
  9. The Chinese Calligraphy Society of Singapore v Khoo Seng Kong [2008] SGHC 121 – passing off
  10. Amanresorts Limited and another v Novelty Pte Ltd [2008] 2 SLR 32 – passing off and well known marks
  11. Richemont International SA v Da Vinci Collections Pte Ltd [2006] 3 SLR 560 – trade marks
  12. McDonald’s Corporation v Future Enterprises Pte Ltd [2005] 1 SLR 177 – trade marks
  13. Fragrance Foodstuff Pte Ltd v Bee Cheng Hiang [2003] 1 SLR 305 – trade marks and copyright
  14. Genelabs Diagnostics Pte Ltd v Institut Pasteur & Anor [2001] 1 SLR 121 – biotechnology patent
  15. Hunter Manufacturing Pte Ltd & anor v Soundtex Switchgear & Engineering Pte Ltd [2000] 1 SLR 401 – registered designs
  16. Tiffany & Co v Fabriques De Tabac Reunies S.A. [1999] 3 SLR 147– trade marks
  17. Kellogg Company v Pacific Food Products Sdn Bhd [1999] 2 SLR 651 – trade marks
  18. Remus Innovation v Hong Boon Siong & 2 Ors [1999] 1 SLR 179 – passing off
  19. CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 2 SLR 550 – passing off
 

Contact Partners

For further information, please contact:
Tan Tee Jim, S.C.
Toh Kok Seng
Boo Yee Swan
Maurice Cheong
Zechariah Chan