Reading the Tea Leaves in Singapore: Who Will Be Left Holding the Bag for Secondary Trademark Infringement on the Internet
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This Article explores the issue of secondary liability in Singapore trademark law, with particular attention to intermediaries on the Internet, including Internet service providers (ISPs), e-commerce companies, search engines, website operators, online financial service providers and social media sites. Section 27(5) of the Singapore Trade Marks Act attributes liability to those who use a mark "knowing or having reasons to believe" that such use is not authorized by the trademark owner or licensee. More precisely, the provision excludes trademark liability for those "persons" who use a trademark in the course of trade, namely "for labelling or packaging goods" or as "a sign" on commercial documents or in advertising, provided that they "do[] not know nor ha[ve] reason to believe" that the owner of the mark or his licensee has not consented to such use. Although the provision was adopted before widespread use of the Internet, its wording excludes Internet intermediaries from liability just as it excludes intermediaries in the brickand-mortar world. Section 27(5) does not elaborate, however, on the meaning of "knowing or having reasons to believe" or on the level of knowledge necessary to infer liability under the provision. In particular, must the "person" referred to in section 27(5) have actual knowledge that the use of the mark was unauthorized, or is constructive knowledge sufficient to find trademark liability? Similarly, does the phrasing "have reasons to know" include the concept of willful blindness-that is, shutting one's eyes in the face of an obvious infringement? Moreover, the provision does not mention whether courts, in assessing secondary liability for trademark infringement, should consider intermediaries' degree of control over the activities at issue in addition to intermediaries' knowledge of such activities. Yet, on a general level, the element of control constitutes one of the most relevant elements to consider in assessing claims of secondary liability, particularly as evidence supporting a presumption of constructive knowledge or willful blindness when the plaintiffs cannot prove that intermediaries had actual knowledge. Intermediaries who have a degree of control over the activities of their users may in fact be more likely "to know or to have reasons to believe" that the use of the mark was not authorized, when compared to the intermediaries who did not have such control. Adding to this statutory uncertainty, the courts in Singapore have not had the opportunity, to date, to apply or interpret the language of section 27(5), either in general or with respect to intermediaries on the Internet. This Article addresses this interpretative vacuum and suggests that some useful guidelines in this area could be derived from existing judicial precedents in Singapore in the copyright context, specifically those cases in which the Singapore courts have interpreted the concepts of "authorizing" and secondary copyright infringement under the Singapore Copyright Act. In these cases, the courts elaborated on the level of knowledge required to find intermediaries liable for copyright infringement. In relation to this analysis, the courts also discussed the level of control that intermediaries must have over their users, either in practice or by contract, to find secondary copyright liability. As a result, the principles elaborated on in these decisions could assist the courts in future trademark cases under section 27(5). Furthermore, the analysis in these decisions indicates that, when addressing secondary liability copyright claims, courts in Singapore carefully considered public interest and market competition concerns stemming from the imposition of copyright liability. Building upon the courts' analysis in these cases, this Article observes that the same concerns would certainly guide the courts when deciding claims relating to secondary trademark liability. In line with the theme of this Symposium, this Article additionally considers the ongoing debates over increasing the duty of care of online intermediaries and the possibility that such a requirement would be adopted in Singapore. Trademark owners have advocated for the introduction of a duty of care requirement in multiple jurisdictions (so far with no success), yet this Article notes that the introduction of such an additional requirement for online intermediaries seems unlikely in Singapore, at least for the time being. Notably, the current text of section 27(5) already provides a comprehensive framework to address claims of secondary trademark liability, including for Internet intermediaries. As a result, to directly paraphrase the title of this Symposium, trademark owners may be left "holding the bag" of continuing to assist intermediaries in monitoring the Internet for possible trademark (and copyright) infringement. This, however, may not represent a negative development for trademark owners, as they remain the best equipped to assist intermediaries with this duty of care. Ultimately, as the title of this Article suggests, the observations elaborated on in the following pages remain a matter of personal (academic) speculation since the precise answers to the questions addressed could be provided only when, and if, the courts in Singapore rule on the issue of secondary trademark liability. Yet, academic exercises frequently involve "reading tea leaves," and Singapore judicial precedents in copyright law certainly offer important insights with respect to the topic at issue.
