Sim Bock Eng, a partner at WongPartnership, shares with Juris his work as a lawyer specialising in IP Law.

Q: What is your scope of work like as a lawyer specialising in IP Law?
It is wide ranging — from the initial protection and exploitation of IP rights to its enforcement. In the exploitation of the IP rights, we could be involved in strategising the expansion of clients’ business overseas and the IP considerations critical to such expansion to ensure that the clients maximise the value of their IP (including on
relevant forms of protection in the relevant countries). In the enforcement of IP rights, we could be involved in the gathering of evidence in respect of any infringements of clients’ IP rights and consequential raids.

Q: What aspects of IP law does Wong Partnership handle?
The firm handles all aspects of IP law including registered and unregistered trade marks, patents, designs, copyright, confidential information, etc.

Q: Could you share with us some of the more interesting or memorable IP cases that you and your colleagues have done?
We were appointed by a manufacturer to maximise the value of their IP rights and their branding. The manufacturer has neglected their IP rights over the years though they have expanded their business and distribution channel of their products into various countries. This resulted in infringement products in these countries by competitors who sought to copy their name and trademark, as well as the inability to extract as high a price for their products as their competitors. Working with associates in these different jurisdictions, we were able to strategise their IP directions, better manage their IP portfolio and tighten the control and enforcement of their IP rights.

We acted for Vigers, an international property consultants, in their termination of their licensees in Singapore. Whilst the termination was provided for in the Licence Agreement, the matter was tried over more than two weeks and the local licensees fought aggressively to retain the use of the name “Vigers”. Clients succeeded in their claim for the return of their “Vigers” name in Singapore. The case is illustrative of the value which both parties place on the name and trademark.

One of the more memorable cases is probably when we were conducting an Anton Pillar search on a manufacturer of construction formworks, which infringed those belonging to clients. The entire exercise was a lesson on not to underestimate the size of the task. The office was somewhere in Tuas and whilst the operation was successful, we were left stranded for quite a while! We had also underestimated the amount of infringing materials there would be, resulting in these construction materials having to be stored in tional warehouse space.

Q: What do you think of the notion that the IP system favours the rich “genius” but not the poor one?
We do not think it is true, in fact, it is IP that protects the ingenuity of the inventor/ creator and allow him/ her to realise the true value of his/ her creation. Eg recently, the sale of Hardware Zone, a site created by six NUS engineering first year students, to Singapore Press Holdings for S$7.1 million. As an internet site, Hardware Zone would have limited tangible assets. The price paid is a recognition of the goodwill and IP rights in the name “Hardware Zone”.

The inventor/ creator may find the initial cost of seeking such protection prohibitive, especially in the case of start-ups. This “barrier” to entry can however be overcome by careful planning and allocation of available resources. In Singapore, there are also various schemes designed to help these start-up companies.

Q: In what way is the actual practice of IP law different from IP Law taught and studied in law school?
There is a fair amount of commercial knowledge and business know-how involved in the practice of IP law. One should not underestimate the influence of commercial considerations when advising clients.

Q: For those who are interested in specializing in IP law – what makes a good IP lawyer?
Faith in inventions, creations or ideas which a lot of people may put little weight on because it is out of the ordinary. An IP lawyer should remember that clients are people on the cutting-edge, with novel ideas, inventions, which may be the next “big thing” to take the
world.

He/she should also be technically and commercially savvy to better understand clients’ requirements and translate these into effective IP strategies. An acquaintance with IP protection outside of Singapore would also be very helpful.

Pey Yinjie is a third year law student and an associate editor of the Singapore Law Review.