TAN Tee Jim S.C.

Tan Tee Jim, S.C. graduated from the University of Singapore in 1979 and obtained a Master’s degree in law from London University in 1983. In 1999, he was appointed a Senior Counsel (a prestigious appointment which is equivalent to Queen’s Counsel in the United Kingdom) by the Supreme Court of Singapore. He is one of a very few select group of Senior Counsel in practice.

The elite senior counsel scheme was introduced in 1997 to recognise outstanding advocates who have extensive knowledge of the law and the highest professional standing in Singapore.

Tee Jim has been involved in numerous court cases, including cases which have become landmarks in the local dispute resolution and intellectual property fields. He has written several articles on competition and intellectual property laws, and is a regular speaker at local and international conferences. A list of his cases and articles is available upon request. He is a contributing editor of several publications, including “Trade Marks: World Law & Practice, Trademark Law and the Internet, Domain Name: Law & Practice and Intellectual Property Protection in Asia”. He is also the author of the book entitled “Law of Trade Marks & Passing Off in Singapore” (Sweet & Maxwell, 3rd ed., 2014)) and the General Editor of “Halsbury’s Laws of Singapore (Intellectual Property)”.

Tee Jim is a former Deputy President of the Copyright Tribunal and the Income Tax Board of Review as well as a current member of the Competition Appeal Board. He is a founder and a Past President of the Association of Singapore Patent Agents (ASPA), a past Vice-President of the Asian Patents Attorney Association (APAA), a past President of the Singapore section of the APAA and a founding Council member of the ASEAN Intellectual Property Association. Tee Jim has also served as an arbitrator for the Singapore International Arbitration Centre, the World Intellectual Property Organisation and the Singapore Domain Name Dispute Resolution Panel.

Tee Jim has been regularly cited as a leading intellectual property lawyer in Singapore and Asia by various legal publications, including The Asia Pacific Legal 500, Global Counsel 3000, AsiaLaw Leading Lawyers and Global Counsel’s Intellectual Property Handbook. He has been described as “brilliant” and an “iconic figure” in patent litigation in The World’s Leading Patent Practitioners 2013.

Tee Jim also leads the firm’s Competition Law Practice which has represented, amongst others,

  • a major multinational company in an investigation by the Competition Commission of Singapore (“CCS”) concerning tenders for contracts in the pest control industry;
  • local modelling agencies in successfully reducing the fines imposed by the CCS for infringements of section 34 of the Competition Act (“Act”); and
  • a major global financial services provider in making leniency applications to the CCS for suspected infringements of section 34 of the Act.

Tee Jim has advised various clients on the Personal Data Protection Act and has also given talks and seminars on this subject.

Selected Cases

  • Davidoff Extension SA v Davidoff Commercio E Industrial Ltd;
  • Tai Muk Kwai v Luen Hup Medical Co.;
  • Singapore Broadcasting Corporation v Performing Rights Society;
  • Haw Par Brothers International Ltd v Chiarapurk Jack & Ors;
  • Hung Ka Ho v A-1 Office System Pte Ltd;
  • Swanfu Trading v Beyer Electrical Enterprises Pte Ltd;
  • Econlite Manufacturing Co. Ltd v Technochem Holdings Pte;
  • Saga Foodstuffs v Best Food Pte Ltd;
  • Risis Pte Ltd v Polar Gems Pte Ltd;
  • Expanded Metal Manufacturing Pte Ltd v Expanded Metal Co. Ltd;
  • Exhibitions Pte Ltd v Khoo Yak Chuan Thomas;
  • Essen System Builders (S) Pte Ltd v Essential Roofing Systems Pte Ltd and others;
  • V-Pile Technology v Peck Brothers Construction Pte Ltd;
  • CDL Hotels International Ltd v Pontiac Marina Pte Ltd;
  • Singapore Post Pte Ltd v Cyberville Technologies Pte Ltd;
  • Remus Innovation v Hong Boon Siong & 2 Ors;
  • Kellogg Company v Pacific Food Products Sdn Bhd;
  • Tiffany & Co v Fabriques De Tabac Reunies S.A.;
  • Hunter Manufacturing Pte Ltd & anor v Soundtex Switchgear & Engineering Pte Ltd;
  • Genelabs Diagnostics Pte Ltd v Institut Pasteur & Anor;
  • Fragrance Foodstuff Pte Ltd v Bee Cheng Hiang;
  • McDonald’s Corporation v Future Enterprises Pte Ltd;
  • Richemont International SA v Da Vinci Collections Pte Ltd;
  • Amanresorts Limited & anor v Novelty Pte Ltd;
  • Wing Joo Loong Ginseng Hong (Singapore) Co. Pte Ltd v Qinghai Xinyuan Foreign Trade Co. Ltd & anor.;
  • City Chain Stores (s) Pte Ltd v Louis Vuitton Malletier;
  • ABB Holdings Pte Ltd & ors. v Sher Hock Guan Charles;
  • Mitac International Corp. v Singapore Telecommunications Ltd & anor.;
  • Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd;
  • Sarika Connoisseur Café Pte Ltd v Ferrero SpA;
  • The Singapore Professional Golfers’ Association v Chen Eng Waye and others;
  • Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resort Worldwide, Inc.

Selected Conference Papers

  • “Legal Problems in the Transfer of Technology, Trade Marks and Computer Programs” in the Asean Law Association Conference held in Bangkok;
  • “Patents, Copyright and Legal Implications” in the Seminar on “Innovations – a Key To Corporate Growth” organised by the Economic Development Board;
  • “Copyright Protection of Computer Program and Parallel Imports” in a forum organised by The Consumers Association of Singapore;
  • “Copyright and Confidential Information – the Engineer’s Perspective” organised by the Institute of Engineers;
  • “Ex-parte Injunction and Anton Piller Order” organised by the Singapore Academy of Law;
  • “Use of Intellectual Property Rights” in the Conference on International Business Law organised by the Faculty of Law, National University of Singapore;
  • “Intellectual Property Enforcement in the Pacific Rim” in Washington D.C. organised by the International Anti-Counterfeiting Coalition;
  • “Design Protection in Singapore” organised by the Singapore Furniture Industries Council;
  • “Search & Seizure of Incriminating Evidence Including Counterfeit Goods: Civil and Criminal Aspects” in the Conference on International Business Law organised by the Faculty of Law, National University of Singapore;
  • “Protecting Intellectual Property Rights in Telecommunications Contracts” organised by IBC Technical Services Ltd;
  • “Principles of Copyright Law” organised by the Singapore Academy of Law;
  • “Intellectual Property & Technology Transfer in Singapore” in Adelaide organised by LAWASIA;
  • “IP Protection of Information in Digital Libraries” organised by Asia Business Forum Pte Ltd ;
  • “Asian Trademark Summit” Conference organised by Asia Law & Practice Ltd;
  • “The Trips Agreement and Its Implications for Business Enterprises” organised by the Singapore Productivity & Standards Board;
  • “Patents & Parallel Imports in Asia – A Brief Review of Law & Practice” organised by Asia Law & Practice Ltd;
  • “Electronic Document Management System” Conference organised by AIC Conferences;
  • “Cheque Imaging” Conference organised by AIC Conferences;
  • “E-Commerce & the Cyberlaws” Conference organised by AIC Conferences;
  • “IP Strategies in Commercialising Innovations” at the Singapore-WIPO Joint Training Course for Asia and the Pacific Region on the “Use of the Industrial Property System by Research & Development Institutions” organised by the World Intellectual Property Organization;
  • “Current Developments concerning Internet Governance” at the 43rd Asian Patent Attorneys Association (APAA) Council Meeting in Kyongju, Korea;
  • “Trade Mark Use on the Internet” at the 5th Open Forum of the Federation Internationale des Conseils en Propriete Industrielle (FICPI) in Monte Carlo;
  • “Infringement on the Internet” at the APAA-FICPI Forum in New Delhi;
  • “Managing a Web of Liabilities” at the seminar organised by the Singapore IT Dispute Resolution Advisory Committee;
  • “Enforcement Issues for the branded goods industry” at the APEC Industry-Government Workshop in Sydney;
  • “Trademark Laws in Asia” at the INTA Annual Meeting in San Francisco;
  • “The Madrid Protocol in Singapore” at the FICPI/APAA Joint Symposium in Newport Beach, California;
  • “IPRs & Advertising” at the Butterworths’ Advertising Law & IP Seminar;
  • “Data Protection in Singapore” at the Malaysian Bar Council’s Conference on “IT and the Law: Recent Developments”;
  • “Patenting of Software and Business Methods” at the Singapore Subordinate Courts to the Legal Service Technology Law Core Group;
  • “Recent Developments in IP Laws in Singapore/Asia” at the Intellectual Property & Technology Exploitation Forum;
  • “Review of Singapore IP Laws” at the Joint Symposium of the Intellectual Property Office of Singapore (IPOS) and the IP Academy;
  • “Intellectual Property Laws of Singapore” at the Singapore-Yangtze River Delta Investment & Legal Practice Forum in Shanghai jointly organised by the Law Society of Singapore and the Bar Associations of Shanghai and Zhejiang;
  • “Recent IP Developments in Singapore” at the Technology Commercialisation & Investment Forum organised by the National University of Singapore;
  • “Protection of Non-Traditional Trade Marks in Asia” at the Global IP Forum organised by the IP Academy of Singapore;
  • “Remedies for Breach of Contract and Copyright” at the Journal of Contract Law Conference organised by the Singapore Management University;
  • “The Role of IPRs in a Franchising Agreement” at a seminar jointly organised by WIPO and Lahore Chamber of Commerce in Lahore, Pakistan;
  • “Intellectual Property Laws of Singapore” at the 1st Annual Intellectual Property Summit organised by the Y. J. Trivedi-AMA Academy for Intellectual Property Rights in Ahmedabad, India;
  • “An Introduction to Franchising and its Importance to Entrepreneurs and Small and Medium-sized Industries” at a seminar jointly organised by WIPO and the Malaysian Licensing Association in Kuala Lumpur;
  • “Exploiting IP Assets” and “IP in the Digital Economy” at a Training of Trainers Program on IP organised by WIPO in Bangkok, Thailand;
  • “Making a Mark” at a Training of Trainers Program on IP organised by WIPO and the Vietnamese IP Office in Hanoi, Vietnam;
  • “Effective Use of IP Assets by SMEs” at a Training of Trainers Program on IP organised by WIPO in Bangkok, Thailand;
  • Keynote speech on “Trade Marks, Internet and Social Media” at IP Management Community of Practice Forum organised by IPOS;
  • “IP and Finance: Accounting and Valuation of IP Assets and IP-based Financing” at a Training of Trainers Program on IP organised by WIPO and the Cambodian IP Office in Phnom Penh, Cambodia;
  • “IP in the Online World – Social Media, Domain Names, Copyright Issues” at the Global IP Forum organised by the IP Academy of Singapore;
  • “Recent Copyright Developments” at the Seminar Series on Latest IP Developments organised by the IP Academy of Singapore;
  • “Recent Developments in Copyright Law” at the IP Academy’s Global Forum on Intellectual Property.

Selected Articles

  • “Recent Benchmarks in the Law of Passing-off Action”;
  • “Trafficking in Registered Trade Marks: Illegality Reviewed”;
  • “The Anton Piller Order”;
  • “Legal Problems in the Transfer of Technology, Trademark and Computer Programs”;
  • “Interface between Computer Programs and the new Copyright Laws of Singapore and Malaysia”;
  • “Singapore: Copyright Protection of Foreign Works and Subject-matter – a brief survey”;
  • “Transferring Technology to Singapore”;
  • “Ex-parte Injunction and Anton Piller Order”;
  • “Surveying the Law on Food Labelling”;
  • “Control of the Search & Seizure Order”;
  • “Copyright Protection of Satellite & Cable Broadcasts in Singapore”;
  • “Net Effect: Copyright Conundrum in Cyberspace”;
  • “Net Effect II: Marked_Concern.com”;
  • “Patenting of Software and Business Methods”;
  • “Becoming an Asian IP hub: Here’s what it takes”;
  • “New Law for Compilations and Databases in Singapore?”;
  • “Copyright Law for the Digital Age”.

Books

  • “Law of Trade Marks & Passing Off in Singapore” (Sweet & Maxwell), 3rd ed., 2014.
  • “Halsbury’s Laws of Singapore on Intellectual Property”.

Chapters in books

  • “Intellectual Property Protection in Asia – Practical Strategies”,
  • “Trademark Anti-counterfeiting in Asia and the Pacific Rim”;
  • “Trademark Law and the Internet”;
  •   Law Academy’s “Review of Singapore IP cases” (2000 to 2015);
  • “Trade Marks, Trade Names & Unfair Competition: World Law & Practice”;
  • “Domain Name Law and Practice – An International Handbook”;
  • Orders 87 and 87A in “Singapore Court Practice 2009”.

Others

  • “Representation to the Parliamentary Select Committee on the Copyright Bill 1986” (reproduced in “Report of the Select Committee on the Copyright Bill 1986, Parl. 9 of 1986”)