Intellectual Property (Border Enforcement) Bill

Order for Second Reading read.

1.59 pm

The Senior Minister of State for Law (Mr Edwin Tong Chun Fai) (for the Minister for Law): Mr Speaker, on behalf of the Minister for Law, I beg to move, “That the Bill be now read a Second time.”

Under our current Intellectual Property (IP) border enforcement regime, Singapore Customs (Customs) can seize or detain goods that are suspected to have infringed trademarks or copyright at the borders in two different situations.

First, upon the IP right holders' request, that is, right holder-initiated actions, for imports only.

Second, by ex officio action, that is, Customs acting on their own volition, for imports, exports and goods in transit with local consignees.

Following the conclusion of the European Union-Singapore Free Trade Agreement (EUSFTA) in 2014, Singapore agreed to add new border enforcement measures to deal with goods infringing various IP rights. As such, amendments are required for our Copyright Act, Trade Marks Act, Registered Designs Act and Geographical Indications Act, collectively known in this speech as the "various IP Acts". The border enforcement measures for geographical indications have already been introduced in the new Geographical Indications Act (GI Act), that was passed in April 2014 but not yet brought into force.

This Bill now seeks to amend the Copyright Act, Trade Marks Act and the Registered Designs Act to implement our EUSFTA obligations as follows.

Firstly, to enhance existing border enforcement measures in the Copyright Act and Trade Marks Act; and second, to establish a new border enforcement regime in the Registered Designs Act.

Next, the Bill will provide new powers for Customs to obtain and provide information relating to the goods they seized or detained to facilitate the taking of infringement action.

In addition, this Bill will standardise and clarify the terms and provisions relating to border enforcement across the various IP Acts.

I will now take the House through the main features of this Bill.

First, the Bill will implement our EUSFTA obligations to enhance existing border enforcement measures in the Copyright Act and Trade Marks Act and establish a border enforcement regime in the Registered Designs Act.

Currently, a right-holder-initiated action under the Copyright Act and Trade Marks Act is limited to only suspected infringing goods which are to be imported into Singapore. No such equivalent power is found in the Registered Designs Act currently.

The amendments in the Bill will now allow Customs to seize, on the right holders’ request, (a) goods which are suspected of infringing copyright or trade marks that are to be exported, and (b) goods which are suspected of infringing registered designs that are imported or are to be exported.

These measures are set out in Part 1, Division 2; Part 3; and Part 4, Division 2 of the Bill.

An owner of a valid copyright or registered trade mark in Singapore, or a licensee with the power to give a notice of seizure, will be able to avail themselves of these new measures. The same applies to an owner or an exclusive licensee of a registered design.

Similar safeguards under the existing border enforcement regime will also apply to ensure that these new measures are not abused. For example, right holders must provide a security deposit if they would like Customs to seize certain suspected infringing goods. Also, a person aggrieved by the seizure can apply to the Court for compensation, if the right holder fails to take infringement action after filing a request for seizure.

The second set of new features are powers for Customs to detain and provide rights holders with information relating to the infringing goods seized or detained by Customs. These powers will be provided for in the various IP Acts, and are set out in clauses 4, 7, 25, 39, 47, 53, 57, 60 and 78 of the Bill. They are intended to complement Customs’ border enforcement duty and facilitate right holders in instituting IP infringement proceedings.

The power to provide information to right holders will be a narrow exception to Customs’ obligations to keep any information obtained under the Customs Act and the Regulation of Imports and Exports Act confidential.

The information to be provided will be limited to the names and contact details of any person connected with the import or export of the seized or detained goods that are necessary for instituting IP infringement proceedings.

In order to guard against right holders abusing this power to “fish” for information, the information sought will only be provided after Customs have seized the infringing goods, and the IP rights holders have provided Customs with a security deposit and supporting documents evidencing their IP rights.

The third feature of the Bill involves standardising and clarifying the terms and provisions relating to border enforcement across the various IP Acts. For example, clauses 25, 47 and 78 of the Bill will clarify the processes for ex officio seizures in the Copyright Act, the Geographical Indications Act and the Trade Marks Act. These changes will streamline Customs' border enforcement operations and procedures.

The changes sought under this Bill, together with the enhanced border enforcement measures under the GI Act passed already in April 2014, will be implemented in three stages to meet Customs’ operational needs, provide businesses with sufficient time to adapt and also correspond with our obligations under the EUSFTA, which is in the process of being ratified. Sufficient notice will be provided before the commencement of the relevant provisions.

In conclusion, Mr Speaker, these amendments will ensure Singapore’s obligations under the EUSFTA are implemented and also cement and enhance Singapore’s reputation as a jurisdiction that respects IP. Mr Speaker, I beg to move.

Question proposed.

Mr Speaker: Mr Christopher de Souza.

2.06 pm

Mr Christopher de Souza (Holland-Bukit Timah): Mr Speaker, Sir, I support this Bill because it strengthens our border enforcement of IP rights and honours our international obligations.

IP rights are important. They promote creativity, innovation. The four statutory IP rights regimes, which this Bill seeks to amend, relate to copyright, registered design, geographical indicators, and trade marks. At this point, I should declare that I am a practising lawyer whose practice includes IP Law.

IP rights allow branding and quality assurance through exclusive access to goodwill of products from a particular brand or a place of origin. They also allow “creators” to support themselves through their creations by recognising and protecting the property within their creations. In fact, the Copyright (Gramophone Records and Government Broadcasting) Act 1968 was enacted to “deal with the increase in the importation and sale of pirated records of copyrighted musical works”, which “threatened the livelihood of local artistes, composers and musicians”. Therefore, protecting IP rights prevents theft – not of tangible goods per se, but of an intangible good. The protection of IP provides an incentive for and rewards creativity and innovation, extending even to software creation! By promoting innovation and art, society benefits through the protection of IP rights.

How this Bill strengthens the enforcement of IP rights is through the framework of detention, further supported by easier access to information.

Detention is important because the protection of the intangible IP right rests in the tangible goods which bear the IP right. This Bill expands the scope of the power to detain to include, not just the import, but also the export of copies of alleged infringing goods. Additionally, detention can be initiated by the IP right holder and not just a state official.

However, the consequences of a wrongful detention of allegedly infringed goods can be very costly and disruptive to the importer and exporter. To prevent abuse, a balance has been struck by getting the requestor to pay compensation for loss or damage as a result of the seizure if the requestor requests to detain the suspected infringing goods but did not institute any infringement action in the end.

While the test is not new, for example, section 140IA of the current Copyright Act, I would like to ask how effective has this test been in striking the balance between swift and effective action and deterring potential misuse of power.

I would also like to seek more clarity on the difference between what the Director-General can prescribe and what the Minister can make rules on. This is in relation to the notice to request for detention of suspected infringing goods. The Director-General is to determine the form of the notice, which is supported by such documents and information as the Director-General may require, yet the Minister is to make rules for the manner in which notices are to be given and for the giving of information and evidence to the Director-General.

Additionally, the explanatory statement says that clause 35 enables forms of notices “to be determined by the Director-General (instead of being prescribed in the rules).”

Because of the distinction drawn by the High Court in the case of Cheong Seok Leng, between actions that have a legislative effect and those that are executive or administrative, rule prescription and executive decisions do not seem interchangeable. Therefore, I would like to seek clarification from the good Senior Minister of State the respective roles of the Minister and Director-General in this area.

This power to detain is supported by making it easier for the authorities and the IP right holder to get certain information. As the phrase “any information or document that the officer considers relevant for”… “statistical or research purposes” is quite broad, I would like to seek, therefore, clarification on what sort of document, information, research or statistic is envisioned behind the grounds to get such information.

This broad access to information is augmented by preserving the privilege against self-incrimination. I am referring to the new section 140EA(5) of the Copyright Act as inserted by clause 4 and other similar clauses. I have two questions regarding this. One, would a bare assertion that the information would expose a person to criminal liability be sufficient to trigger this provision; and two, the provision says that the document or information is not admissible in evidence against the person in criminal proceedings except under some circumstances, for example, where false information was provided. But, for example, in a normal criminal trial, if the accused chooses to give evidence, he would generally need to answer any question or risk having an adverse inference drawn against him. Therefore, to what extent is this provision meant to operate?

This Bill, which implements our obligations under the EUSFTA, will be implemented in phases, as indicated in the press release and reflected in the Bill. According to the press release, this is “in accordance with Singapore’s EUSFTA obligations and Customs’ operational needs.” Therefore, I would like to ask, what is being done to ensure that we have sufficient operational resources such that the relevant officers will have the necessary knowledge or expertise to be able to discern what information is necessary “to enable any action to be taken in relation to future shipments of goods” and whether information sought is, indeed, “necessary” to institute infringement action?

This Bill also seeks to rationalise border enforcement procedure across the four statutory regimes under the Copyright Act, Trade Marks Act, Registered Designs Act, and Geographical Indicators Act 2014. In relation to this, why is it that the distinction between goods in transit that are consigned and those that are not consigned is not drawn for the Geographical Indicators Act and Registered Designs Act at clauses 47 and 53 but are drawn for the Copyright Act and Trade Marks Act at clauses 7, 25, 60 and 78?

Because costs involved in exports and imports have tended to decrease and exported and imported goods have become more widely available, this Bill plays an important role in enhancing our border enforcement of intellectual property.

Besides enhancing our border enforcement of IP rights, this Bill helps us honour our obligations under EUSFTA.

Furthermore, international agreements are particularly important in IP law because of the principle of territoriality which states that “IP rights granted and recognised in one country are protected within the territory of that country only.” In an increasingly interconnected world and globalised market, the importance of international agreements is heightened further.

Therefore, Mr Speaker, because of these two broad reasons, first, this Bill honours our international obligations, and second, it strengthens the enforcement of IP rights across our border, I support the Bill.

Mr Speaker: Mr Azmoon Ahmad.

2.15 pm

Mr Azmoon Ahmad (Nominated Member): Mr Speaker, the IP (Border Enhancement) Bill, which seeks to address and enhance our position as a champion of IP rights and our tough stand on IP infringement, has my full support. This Bill, which also runs in tandem with the Copyright Act, the Geographical Indications Act 2014, the Registered Design Act and the Trade Marks Act, is timely and in accordance with our obligation under the proposed FTA between the EU and Singapore.

A report made in September 2017 by the International Property Rights Index, which ranks countries according to their protection of physical and IP rights, has placed Singapore as the best in the region for protection of IP rights.

An article reported by Forbes last year, stated that numerous global studies revealed that countries with the strongest IP protections have the tendency to employ more full-time researchers, leading to greater investments in research and development (R&D) and Foreign Direct Investment. This results in large portions of their workforce in higher paying IP-intensive organisations and industries. Thus, inventions, artistic works and brands are meaningless and determined to have no value without IP rights. It is estimated that income per capita to be 13 times greater in countries with strong IP protections than those with weak protections.

With no natural resources, and human capital as its only offering, it is by no chance that Singapore will have to emerge as a champion of IP rights, competing with other developed economies.

While I support the Bill, I would like to highlight the following concerns with regard to the Enhanced Border Enforcement Measures under EUSFTA.

Pursuant to the EUSFTA obligation, it is my understating that upon request by the IP Right (IPR) holder, it is allowed to seize suspected infringing goods that are exported under the Copyright Act and Trade Marks Act, as stipulated in clause 12 section 140B of the Copyright Act and clause 65 section 82 of Trade Marks Act.

Now, my questions: how does one qualify a suspected infringing goods as genuine? What would happen if suspected infringing goods are proven to be not correct? For the enforcement under these clauses, when can we expect that these are to be implemented and enforced?

Similar to the above, the seizure of suspected infringing goods that are imported or to be exported under the Registered Design Act, when is this expected to be implemented and enforced? Will it be on a different timeline and schedule? Or will it be done at the same time as the above?

Moving ahead, this Bill is also intended to allow Customs to provide IPR holders with names and contact details of any persons connected with the import or export of the seized goods in facilitating IPR infringement proceedings. These are stipulated in clause 4 of new sub-section inserts 140EA, 140EB, 140LD and 140LE of the Copyright Act.

While I can see the rationale and merits to these changes, thus speeding up and facilitating fast and efficient IPR infringement proceedings, nevertheless, I have the following queries: (a) why was this not implemented before? Was there a specific reason that this has to be changed and implemented now? (c) Is this in any way related to EUSFTA? (d) Even if the information can be provided to the IPR holder after the seizure of infringed goods and security deposit has been placed and supporting documents are submitted, how do we ensure that such information is well-protected and does not fall into the wrong recipient? (e) Lastly, if there is a lapse in (d), is there any clause that states the course of action?

Mr Speaker, the right to IP is as valuable as any physical property. Protection of IP rights must be taken with utmost importance and its infringement must be severely and appropriately dealt with. The IP (Border Enforcement) Bill is a step forward in the right direction. I truly believe that not only will it re-enforce our position as a champion of IP rights; it will also bring us as one of the many international IP hubs.

With that, Mr Speaker, notwithstanding the comments and suggestions made, I support the Bill.

Mr Speaker: Assoc Prof Fatimah Lateef.

2.21 pm

Assoc Prof Fatimah Lateef (Marine Parade): Mr Speaker, I stand in support of this Bill. Being a country at the crossroads of the world, between east and west, north and south, as well as one of the busiest travel hubs, we must certainly put in the effort to prevent and reduce breaches in IP and our Border Enforcements. Officers and staff have to be highly vigilant, observant and astute, knowing the high numbers they have to deal with.

It is critical for our Customs officers to work together with IP rights holders to protect their IPs, to conduct product training session and how to differentiate between genuine and counterfeit products. These differences can be so subtle, so easily missed if not handled with a high index of suspicion. How often and how extensive are the training provided for our officers? The range of products is tremendous and ever increasing, thus the need for extremely robust and updated training and knowledge. How do we cope with this?

How do our officers assess goods and products that are in transit? Are there certain guidelines to ensure these are not missed or overlooked?

Are there border measures in Singapore for parallel imported goods? Or goods carried in travellers’ private luggages?

Once the goods and products that are counterfeit are confiscated, are they all destroyed? Will there be a conduct of a fact-finding mission or an evidence-based assessment? Are our laws and policy in this aspect well aligned with other jurisdictions for some degree of uniformity? Otherwise, there may be contrasting issues that arise and can be challenging to resolve, I feel. Also, as it is being implemented in phases, how is the practical execution going to be done and what is the proposed timeline?

Mr Speaker: Mr Louis Ng.

2.23 pm

Mr Louis Ng Kok Kwang (Nee Soon): Sir, I welcome this move to standardise border enforcement provisions across our IP Acts. These provisions allow information and documents possessed by the Government to be shared, upon request, for private purposes, such as research, or to institute infringement proceedings.

I would like to raise questions and comments on amendments relating to requests for information, retention of allegedly infringing goods and implementation of Singapore's EUSFTA obligations.

Amendments to the four IP Acts provide authorised officers or senior authorised officers the power to require a person to provide information or documents for three purposes. One, to satisfy a request for information; two, to enable actions to be taken relating to future shipments of goods; and three, for statistical or research purposes.

I would like to ask, at the point of request, will the person whose information or document is being requested, be informed about the basis for this request?

Furthermore, will the period which the information or document be retained be limited to the purpose for which it has been requested?

As for amendments allowing officers the power to require a person to provide information or documents for a statistical or research purpose, can the Senior Minister of State clarify whose statistical or research purposes these provisions refer to?

What safeguards are there to ensure that the information and documents will be kept confidential during the research process?

In addition, amendments to the four IP Acts provide officers powers to require a person to provide information or documents to fulfil future requests for the information to institute infringement actions. How would the officer determine what information or documents might be required for the hypothetical proceedings? Would this lead to indiscriminate seizure of information or documents?

Also, how long would these information or documents be retained for? Would the retention period be subject to the limitation period of potential claims? When the information or documents are obtained, would the person be informed of the possibility that their information would be provided to the copyright holder for the purposes of instituting private proceedings?

Next, I understand that the amendments also allow the Director-General to provide a person information for instituting an infringement action. The language of the provision which allows the provision of information relating to “any person connected” with the import or export of the seized goods is very broad. What are the categories of connected persons intended to be covered by this provision? Is there a limit again to the period that a person may request for the information to institute an infringement action? Would the person whose information is being provided be informed of the fact that the information has been shared?

The IP Students’ Association (IPSA), comprising law students in both the National University of Singapore and Singapore Management University, raised a number of concerns on the retention of allegedly infringing goods after their seizure and detention.

Currently, the Copyright and Trade Mark Acts simply states that the Director-General will specify a retention period for the goods, after which, it will be returned to the owner unless the objector files an infringement suit.

Can the Senior Minister of State clarify the retention period for alleged infringing goods if an infringement suit is started? Will they only be released after the decision of the infringement suit is out? In the meantime, what remedy does the importer or exporter have?

Even if the goods are released to the original owner, pending the decision of the infringement suit, does this confer an automatic injunction on the original owner to sell the goods within Singapore? If yes, does this injunction extend to being prohibited from further exporting the returned goods to another country and selling them there? This could cause potential losses to the importer or exporter that may not be sufficiently remedied through the provision of security or damages.

One recommendation suggested by IPSA would be to have a review process called an “Indication” where a committee or the Intellectual Property Office of Singapore (IPOS) tribunal has an expedited process for evaluating if the goods are, indeed, infringing. They can issue an “Indication” which operates as a non-binding preliminary opinion on the matter. This can inform the objector or IPR holder and the alleged infringer on how they should choose to resolve the matter. Has the Ministry looked into setting up a similar review process?

I also have a number of clarifications to make on the implementation of Singapore's EUSFTA obligations. These were similarly highlighted to me by IPSA.

First, Article 10.50 of EUSFTA requires customs authorities to adopt a range of approaches to “facilitate the effective enforcement of IP rights”. Under EUSFTA, this includes patents. Given that one of the purposes of the Bill is to “standardise the terms and provisions relating to border enforcement across the IP Acts”, why are patents not afforded the same enforcement processes as copyrights, geographical indications, trademarks and registered designs? Further, can the Minister clarify why ex officio actions are not provided for the imports and exports of registered designs?

Next, there is a minor inconsistency between the definition of “counterfeit trademark goods” under EUSFTA and the Bill. Under the EUSFTA Article 10.48(b), it is defined as goods bearing a trademark that is identical or “which cannot be distinguished in its essential aspects”. In contrast, it is defined under section 3(5) and (6) of the Trade Marks Act as a good that has a sign that is identical or is so identical “as to be calculated to deceive”. This requirement of an intention to deceive is noticeably lacking from the EUSFTA’s definition, which, therefore, appears to be slightly broader than that under the Trade Marks Act. Can the Senior Minister of State clarify the rationale for deviating from the EUSFTA definition of counterfeit trademark goods?

Sir, notwithstanding these clarifications, I stand in support of this Bill.

Mr Speaker: Senior Minister of State Edwin Tong.

2.29 pm

Mr Edwin Tong Chun Fai: Mr Speaker, I thank the Members who have spoken and for their full support of the Bill. I also appreciate the IPSA's inputs to Mr Louis Ng and I thank them for their contributions as well.

Members have raised several points for clarification and I would break them down into four main areas. They are, firstly, the scope of the Bill; secondly, the border enforcement process and how it compares with other jurisdictions; and thirdly, Customs’ powers to request and provide information or documents; and finally, the timeline for implementing the Bill. I will address them in turn.

In relation to the scope of the Bill, Assoc Prof Fatimah Lateef and Mr Christopher de Souza enquired specifically about goods in transit. Goods in transit are, by definition, here for only a short duration of time. This makes any border enforcement action challenging. In addition, enforcement actions have to be balanced against the need to maintain our port efficiency. So, generally, for goods in transit, Customs officers do not detain the goods. However, Customs officers will still perform the usual checks, and when they detect suspected IP infringing goods, they will convey the information to their counterparts in the destination country. This then allows for effective enforcement to be undertaken in the destination country.

However, as part of our existing international obligations, for suspected copyright infringing copies or counterfeit trade mark goods in transit which are consigned to a local party, Customs officers have the power to initiate ex officio action to detain such goods, because there is a local consignee. Therefore, to address Mr Christopher de Souza's question, there are no similar international obligations for geographical indications and registered designs, and we, therefore, make no distinction between goods in transit with a local consignee and goods in transit without a local consignee for geographical indications and registered designs. To aid Customs, IPR holders can provide information on shipments that are suspected to contain IP infringing goods.

Mr Louis Ng also asked why the Bill does not implement border enforcement measures for patents and ex officio action for registered designs, as part of our obligations under Article 10.50 of EUSFTA. Article 10.50 provides that "the customs authorities shall adopt a range of approaches to identify shipments containing counterfeit trademark goods, pirated copyright goods, pirated design goods, and counterfeit geographical indication goods". There is no obligation, under this Article, to implement border enforcement measures for patent infringing goods.

In addition, it is also impracticable to do so because the detection of a suspected patent infringing good generally requires a higher level of specialised technical knowledge and expertise. Patents are, therefore, unlike copyright, trade marks, registered designs and geographical indications, where a visual inspection can usually be used to detect the IP infringement. Given the high level of specialisation required to detect patent infringing goods, it is not feasible for Customs officers to make such assessments.

There are also no international obligations to take ex officio action in relation to registered designs. Unlike copyright or trade marks, it is difficult for our Customs officers to identify whether particular goods infringe a registered design without any information. However, where a registered design owner files a formal request for seizure with specific information to identify a shipment with goods suspected of infringing registered designs, for example, when the shipment will reach Singapore, our Customs officers can assist in detecting and seizing such goods. I hope that addresses Mr Louis Ng’s queries.

Mr Louis Ng also sought clarification on the rationale for the difference between the terminology and definition of "counterfeit trademark goods" between the EUSFTA definitions and section 3(5) and 3(6) of the Trade Marks Act. The definitions in both provisions are substantially similar and Mr Louis Ng may also know that the definition was put into force in the Trade Marks Act in 2004, which is about 14 to 15 years ago, and we have kept that definition throughout. And the intention is to remain with that definition, but the level of obligation would not deviate substantially or materially from the EUSFTA definition.

Assoc Prof Fatimah asked whether our border enforcement regime covers parallel imports and goods in travellers' personal luggage. Parallel imports are not counterfeit goods and are, therefore, not considered infringing under our IP laws. Therefore, in such a situation, they would not be detained. However, goods in travellers’ personal luggage may be detained if they are suspected of infringing IP rights and right holders are prepared to take action. This has been the case even before these amendments apply.

I will now turn to questions on our border enforcement processes. By definition, in enhancing the border enforcement provisions through this Bill, it necessarily comes with enhanced powers and with some additional degree of intervention. With that, Members have raised several queries on the processes involved where goods are seized, for example, the period of detention, whether they will be destroyed, how a defendant can show that the goods are genuine, and the remedies available where the goods were wrongly detained and found to be non-infringing. I think the majority of the Members raised questions around these few issues.

Let me, first, be clear that Customs are not allowed, without more, to destroy the goods which are seized. The various IP Acts all contain a framework to ensure that there is due process in the manner in which seized goods are dealt with, and I will now briefly describe this framework. Upon seizure, Customs will notify IPR holders to verify the authenticity of the goods and commence civil actions for IP infringement against relevant parties within the period specified in Customs’ notice, or any extended period, as may be so notified. The status of the goods will then depend on whether an infringement action is commenced.

Where an infringement action is commenced, the importer or exporter will be notified by the IPR holder if he is the defendant to the action and have the opportunity to defend himself in Court. Therefore, to address Assoc Prof Fatimah Lateef's query, the Court process will entail fact-finding and an evidence-based assessment, in relation to the relevant copyright and IP provisions that are currently in place. Within three weeks of instituting an infringement action, IPR holders will need to obtain a Court order to prevent the release of the goods. So, there is a three-week timeline. Whether such a Court order is granted or not, will be decided by the Court on a case-by-case basis, applying again, the relevant IP provisions and laws.

Where there is no such Court order, the goods shall be released. Whether an individual is liable for IP infringement or not will be determined by the Courts based on the facts of a particular case. Where the infringement action succeeds, the Court may then, as part of the order, also order that the goods to be destroyed. However, where the infringement action fails or is dismissed or is discontinued, the Court may order that the IPR holder pay compensation to the defendant. The goods will then be returned to the importer or exporter as the case may be.

In a situation where no infringement action is taken, any person aggrieved by the seizure may then apply to the Court for an order of compensation for any loss or damage suffered as a result of the seizure. Mr Christopher de Souza raised a question on that, and quite rightly so. The legal regime does protect the person in such a situation where no subsequent follow-up infringement action is then taken by the right holder. The Court may order compensation in such amount as the Court thinks fit. The goods will then be released to the importer or exporter.

Mr Christopher de Souza asked: "how effective [the mechanism] has been in striking the balance between swift and effective action in deterring potential misuse of power”. I think it is a question quite rightly asked. We do not track the requests for compensation via civil actions under this mechanism, but the Member will be assured to know that, to date, we have not received any complaints of IPR holders abusing our border enforcement measures, given this mechanism and the other safeguards, such as the need to provide a security deposit, before the goods are seized.

I now move on to the proposed expedited review process or indication that Mr Louis Ng and, through the help of IPSA, has raised. The proposal is a thoughtful one, and one that we can consider further. But so far, the evidence we have suggests that IPR holders are already capable themselves of making a quick assessment on whether there are goods which have infringed their IP rights or not. In fact, it will be in their interest to do so, because if someone is peddling infringing goods, then it will be in the right holder's interest to move quickly and act swiftly.

Where an expedited decision is required, parties can seek a summary judgment from the Court. That is also a procedure they can avail themselves of, setting out their grounds. Nonetheless, we welcome IPSA to provide us with more details, as I said earlier about this proposal, which we can then consider further.

I will now turn to deal with Assoc Prof Fatimah Lateef's question on the training that is provided for our Customs officers to identify counterfeit goods. Presently, Customs has already worked with a number of brand owners to conduct training for officers from Customs, the Immigration and Checkpoints Authority (ICA) and the Singapore Police Force IP Rights Branch to look at, evaluate and discern between genuine and counterfeit goods. It is not always easy, but it is something that we work very closely with the brand owners. Upon detecting suspected counterfeit goods, our officers will also engage the IPR holders to seek verification of the authenticity of the goods.

Mr Christopher de Souza sought clarification on the difference between what the Director-General of Customs can prescribe and what the Minister can make rules on, particularly in relation to the notice to request for detention of suspected infringing goods. The clauses 12, 25, 35, 47, 53, 65 and 78 of the Bill grant the Minister the power to make the necessary rules and regulations to provide for, amongst others, the manner in which notices have been given, and for the giving of information and evidence, where the rules and regulations have a legislative effect. I know that Mr Christopher de Souza drew our attention to the case in question but, in this case, the Customs Director-General is given the discretion to determine the specific form of notice – in other words, what exactly is the form he needs, what are the documents or information that is required in that particular case – having had the powers already prescribed. These are administrative in nature and, therefore, need not be legislated by the Minister, as the case is generally for forms that are administered by public agencies. These are forms which will be readily accessible to the public on the website of Customs.

I turn now to address Assoc Prof Fatimah Lateef's query on whether our border enforcement laws and policy align with those of other jurisdictions. The short answer is, generally yes, although inevitable differences will exist from one country to another, depending on the local context and flavour. Singapore is also part of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, where all WTO countries are required to put in place border enforcement measures. These measures allow IPR holders to request Customs officers to seize suspected copyright and trade mark infringing goods that are imported into the country.

Many other established jurisdictions, such as the US, the EU and Australia also provide further border protection mechanisms which extend to ex officio action and other types of IP infringements. Some of these jurisdictions also cover goods which are to be exported as well, as we are now seeking to do.

Finally, let me move on to address the Members' queries relating to Customs' powers to request and provide information under the various IP Acts. Customs has been and will continue to handle sensitive commercial data obtained from traders. They are empowered to disclose such information as necessary to IPR holders or use such information internally for border enforcement purpose. These powers are given to Customs so as to facilitate the administration of justice and uphold our reputation of having a strong IP enforcement regime.

Nonetheless, let me reassure traders at the outset that confidentiality of their data will be respected. Their data will remain confidential and will be used or provided only under limited circumstances in relation to the border enforcement matters as legislated.

I wish to now address the Members' queries on this matter in some greater detail: first, on the rationale for introducing these powers; and second, Customs' power to request information; and finally, Customs' power to provide the information.

The Member, Mr Azmoon Ahmad, asked for clarification on why the new powers for requesting and providing information are being implemented now and were not implemented before and whether they are related to the EUSFTA. These new powers are not implemented pursuant to our EUSFTA obligations but are intended to complement Customs’ border enforcement duties. In the course of Customs’ border enforcement work over the years, this was one area that was identified that needed some streamlining and which they felt would facilitate the work that it had, with these adjunct and peripheral powers. The need to amend our legislation to fulfil our EUSFTA obligations now gives us the opportunity to do so. And I would also add that the EUSFTA, whilst concluded in 2014, was a subject of some challenge. It was only in the course of last year, 2017, that the EU Court of Justice pronounced that the EU entering into it was competent to do so and was able to proceed with it, and hence, we waited till this time to introduce our Bill.

Various Members have asked about the scope of Customs' power to request information, the relevant safeguards, and the privilege against self-incrimination in relation to the requested information. To be clear, Customs will only be empowered to ask for any information that is relevant to border enforcement for the three defined purposes, and they are very clear. First, to provide IPR holders with the name and contact details of any person connected with the import or export of the seized goods, where necessary, for instituting infringement actions. We will regard that as quite basic information before such actions can be instituted. Second, to facilitate enforcement against future shipments of goods; and third, for other statistical or research purposes relating to border enforcement.

Various Members have raised this point about information being requested. What does it entail? It would more likely than not in most cases include commercial invoices, packing lists, bill of lading, airwaybill or shippers’ details and so on. In other words, information that will allow one to identify the goods, identify the source and the shipper and perhaps its destination. These are all useful for identifying the relevant parties involved in suspected IP infringement and the activities around the IP infringement.

As for the type of information that can be requested for “statistical or research purposes”, this refers to information that can help Customs build profiles of high-risk shipments and also enhance their capabilities to anticipate and target shipments which tend to be involved in shipping IP infringing goods. These will be details, such as the names and contact details of the importer or exporter, and the description of goods and so on. In other words, to add to the Customs database, to ensure that, in future, these mechanisms become more and more sophisticated and Customs can be better equipped to anticipate and also target these specific shipments in question.

Mr Louis Ng and Mr Christopher de Souza also asked what is being done to ensure that Customs are able to determine or discern the necessary information that should be requested for the three stated purposes. Customs will conduct relevant training for their officers. This is also a new area in terms of the enforcement and so training will be done for the officers. They will seek to put in place a standard operating procedure as far as possible to make the guidance available to Customs officers to guide them in terms of seeking the relevant type of information and to be more discerning and to be able to raise the right questions and focus their minds on the right issues and the right observations in relation to the three stated purposes.

Mr Louis Ng also asked whether there is a limited period that Customs will retain the information for, and what this period will be. Customs will retain the information to the extent the purpose for collecting the information remains relevant and also, generally, in accordance with the Government’s record-retention policy, depending on the platform on which the information is received.

Next, I will address the concerns raised by Mr Louis Ng and Mr Azmoon Ahmad on the safeguards relating to the information requested by Customs.

First, a person will be informed about the purpose for Customs’ request for his information at the point of request, and not when the information is shared with an IPR holder for the purposes of instituting infringement actions.

Second, there are safeguards to ensure that the information will be kept confidential, particularly during the research process. The information must be used strictly and only for the three purposes, as explained earlier. Each request for the information and each proposed use of the information by Customs officers for research or statistical purposes will be considered carefully.

In addition, as provided in the Bill, any person who discloses or uses the information for any other purposes shall be guilty of an offence and be liable on conviction to a fine not exceeding $6,000 or to imprisonment for a term not exceeding 12 months or to both. In addition, the information disclosed to the domestic public agencies will also be governed by the Official Secrets Act.

Mr Christopher de Souza raised two questions regarding the privilege against self-incrimination that is provided in connection with the obligation to provide information as requested by Customs.

First, he asked whether a bare assertion that the information would expose a person to criminal liability will be sufficient to trigger the privilege.

The short answer is yes, even if the information may not turn out to be self-incriminating ultimately. This would, of course, also be something which the Court takes into account as may be appropriate as it would do with any proposed adverse influences to be drawn, as Mr Christopher de Souza raised.

Second, he also sought clarification on the extent to which the privilege against self-incrimination is meant to operate.

Where a person claims that his statement is self-incriminating and claims the privilege, the statement then cannot be admitted against him in criminal proceedings for any offences. The statement cannot be used at trial, whether as corroboration or for impeachment, as Mr Christopher de Souza knows. And the Prosecution's case then has to be based on other evidence.

However, where a person provides false information, that is quite a different situation. Such information may then be admissible against him in a prosecution for an offence for providing false information. It will not be justifiable to shield or protect a person from being prosecuted for providing false information as this will be entirely contrary to the interests of justice.

Next, I will clarify the points that Mr Louis Ng raised about the scope of Customs’ power to provide information. There are several points.

The first relates to the categories of persons whose names and contact details may be disclosed to IPR holders. These are persons, whom I think I referred to earlier, who are likely to be the importer, exporter, consignee or any other person involved in the shipping chain from which the IP infringing goods were seized.

The second point that Mr Louis Ng raised concerns the timeframe within which a person may request for information to institute an infringement action. There is no specific timeframe in the Act itself. But, for reasons that I have outlined earlier, it will be in the interest of the right holder to move expeditiously. That is also because there is a stipulated timeline within which he must institute infringement action in relation to the seized goods. Therefore, I think it would be expedient to seek the information within this timeline, and not outside. In this context, he has also got to do so after providing Customs with a security deposit and supporting documents evidencing their IP rights.

Finally, I wish to elaborate on the timeline for the implementation of the new border enforcement measures for copyright, trade marks and registered designs, as requested by Mr Azmoon Ahmad.

The enhanced border enforcement measures for copyright and trade marks will be effected once the EUSFTA enters into force or comes into force. As explained earlier, it has not yet come into force. So, we will have the measures coincide with that.

The new border enforcement measures for registered designs will be effected within three years after the EUSFTA enters into force. As I have explained at the outset, it gives time for businesses and people to adjust to it. And as I mentioned earlier, sufficient notice will also be provided before the commencement of the relevant provisions.

Finally, in conclusion, I wish to thank all Members who have spoken and supported the Bill. The Bill represents our commitment to honour our international obligations by strengthening our border enforcement processes and also instill in us the importance of upholding IP rights, as Mr Christopher de Souza mentioned. This is critical not only to IP but also to various aspects of business in Singapore. Mr Speaker, I beg to move.

Question put, and agreed to.

Bill accordingly read a Second time and committed to a Committee of the whole House.

The House immediately resolved itself into a Committee on the Bill. – [Mr Edwin Tong Chun Fai.]

Bill considered in Committee; reported without amendment; read a Third time and passed.