Private Prosecution of IPR infringement – A Double-Edged Sword?

Singapore is unique in allowing intellectual property rights owners to privately take enforcement actions against infringers of intellectual property rights under the country’s criminal provisions. The “self-help” regime as it is aptly known, provides rights owners with the jurisdiction to commence criminal proceedings against infringers as private prosecutions.

Lawyers representing rights owners can file applications in court for warrants to search premises suspected of containing counterfeit goods, implements for the manufacture of such goods or other evidence of an offence. The rights owners then conduct the raids with the cooperation of the police who act to execute the search warrant in cooperation with the rights owners’ lawyers and investigators. During the raid, investigators will assist the police in searching the premises and seizing infringing goods and documents evidencing the infringement. If the raid is successful and infringing goods are found, the rights owners can then apply through their lawyers for a fiat from the Attorney-General’s Chambers to prosecute the offenders under the relevant criminal provisions of the Trade Marks Act and Copyright Act.

The “self-help” regime has been widely used by rights owners taking action against trade mark counterfeiting and copyright piracy. It complements the civil remedies available to them and avoids the need to rely solely on the resources of the police. Rights owners can seize the initiative and carry out these criminal actions to serve their needs. However, the regime has its draw-backs. Rights owners have to bear the legal and investigation fees for these cases without financial return. The rights owners also have no powers of investigation and the offenders are not arrested at the scene and there is no police questioning or investigation conducted to assist with the prosecution. The rights owners therefore have to prosecute these cases based only on the evidence of the raid and many of the offenders prosecuted are often merely pawns in the organized criminal syndicates which run the counterfeiting operations. The prosecutions are therefore not always an effective tool and may not have a significant impact on piracy other than to clear the stocks of goods on the premises.

Rights owners have therefore increasingly sought to rely on police prosecutions of IPR offences, particularly when syndicates are involved or if the case requires extensive investigation, such as in the case of a distributor or manufacturer of counterfeit goods. However, the self-help regime in Singapore provides another weapon in the arsenal for rights owners in their protracted battle against piracy.

Sheena Jacob
Partner
Intellectual Property and Technology Group
ATMD Bird & Bird LLP
Phone +65 6428 9801
Email Sheena.Jacob@twobirds.com