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Intellectual Property Law Annual Review of Singapore Cases (9, 2008)

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Title: Intellectual Property Law

Textbook Title: Singapore Academy of Law Annual Review

Chapter No: 17

Author | Editor: Ng-Loy Wee Loon, Tan Tee Jim

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Trade marks

17.1 The body of local law on the registration criteria in the Trade Marks Act (Cap 332,

1999 Rev Ed) is building up. The year 2008 saw the report of two High Court cases, one dealing with

the ―distinctiveness‖ criterion and the other dealing with the prohibition relating to ―conflicts with

earlier rights‖.

Section 7: Distinctiveness

17.2 The High Court‘s judgment in Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v

Qinghai Xinyuan Foreign Trade Co Ltd [2008] 3 SLR 296 has some interesting implications on the

distinctiveness requirement. Let us first look at what distinctiveness means in trade mark law, as laid

down in case law from Singapore, the UK courts and the ECJ decided prior to this case.

17.3 The distinctiveness requirement is set out in s 7 of our Trade Marks Act (Cap 332,

1999 Rev Ed). This is modelled on s 3 of the Trade Marks Act 1994 (UK) (and correspondingly, on

Art 3 of the EU Trade Marks Directive 1988). This requirement is intimately tied to the ―badge of

origin‖ function of a trade mark, that is, its ability to inform the consumer that the goods or services in

question come from a particular trade source. There are actually three concepts in the distinctiveness

criterion: ―capacity to distinguish‖, ―inherent distinctiveness‖ and ―de facto distinctiveness‖.

17.4 An example of a mark which does not possess any ―capacity to distinguish‖ is the word

―SOAP‖ used in relation to the product soap. If a soap manufacturer/trader applies to register the word

―SOAP‖ in respect of soap, his application must be refused, and the reason is obvious: ―SOAP‖

cannot in any way be said to be the trade mark of this soap manufacturer/trader or, for that matter, of

any soap manufacturer/trader. The word ―SOAP‖ is not a trade mark at all; it is the name of the

product itself. (This ―SOAP‖ for soap example was given in the English case, British Sugar Plc v

James Robertson & Sons Ltd [1996] RPC 281.) The Trade Marks Act puts it in this way: a sign which

is incapable of distinguishing goods or services provided in the course of trade by a person from

goods or services provided by any other person does not qualify as a ―trade mark‖ and, therefore,

cannot be registered (see s 7(1)(a) read with the statutory definition of ―trade mark‖ in s 2(1)). It is not

difficult to cross this ―capacity to distinguish‖ threshold. The High Court in Nation Fittings (M) Sdn

Bhd v Oystertec Plc[2006] 1 SLR 712 has described ―capacity to distinguish‖ as a ―relatively low

threshold criterion‖ (at [136]). One might even say that this is a very low threshold meant only to foil

attempts to register generic descriptions of products or services, such as ―SOAP‖ for soap.

17.5 A mark which crosses the ―capacity to distinguish‖ threshold may not necessarily possess any

―inherent distinctiveness‖. A local example of a mark falling into this category is the word

―BREATHABLE‖ used in relation to sanitary napkins. (See Uni-Charm Corp v The Procter &

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Gamble Co [2003] SGIPOS 12, a decision of the Singapore Trade Marks Registry). The word

―BREATHABLE‖ is not so descriptive of sanitary napkins that it denotes the goods themselves, but it

does have some (positive) descriptive connotations in the context of these goods. There is a reason

why the law should prima facie refuse to let a business register ―BREATHABLE‖ as a trade mark for

its sanitary pads: the public seeing or hearing the word ―BREATHABLE‖ in the context of sanitary

napkins will take it at its face value, that is, as a word which describes the quality of the goods. In

other words, the word ―BREATHABLE‖ inherently cannot operate as a badge of origin for sanitary

napkins. The types of marks which lack ―inherent distinctiveness‖ are specified in ss 7(1)(b) to 7(1)(d)

of the Trade Marks Act. These provisions are set out below:

Section 7(1) — The following shall not be registered:

…

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to

designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of

production of goods or of rendering of services, or other characteristics of goods or services;

and

(d) trade marks which consist exclusively of signs or indications which have become

customary in the current language or in the bona fide and established practices of the trade.

17.6 It is especially clear from ss 7(1)(c) and 7(1)(d) that the objection to registration therein lies in

the descriptive nature of the mark in the context of the goods or services in question. Section 7(1)(b)

captures marks which may not be descriptive but which are, nonetheless, not normally perceived by

the public as badges of origin. The ―devoid of distinctive character‖ phrase used in s 7(1)(b) may be

regarded as a sort of general ―catch all‖ formula for marks which lack ―inherent distinctiveness‖.

Examples of marks which can fall into s 7(1)(b) are common surnames (eg, Nichols plc‟s Trade Mark

Application [2003] RPC 16) and colours (eg, Libertel Groep BV v Benelux-Merkenbureau [2004] FSR

4).

17.7 The third type of distinctiveness, ―de facto distinctiveness‖, operates as an exception to the

prohibition set out in ss 7(1)(b) to 7(1)(d). The Trade Marks Act (Cap 332, 1999 Rev Ed) puts it this

way in s 7(2):

A trade mark shall not be refused registration by virtue of subsection (1)(b), (c) or (d) if, before

the date of application for registration, it has in fact acquired a distinctive character as a result

of the use made of it.

17.8 A local example of a mark that was allowed registration under s 7(2) is ―MTV‖ for

entertainment services provided via the internet: see Viacom International Inc v Gary Lee

Ongkowidjaja [2004] SGIPOS 9, a decision of the Singapore Trade Marks Registry. The mark

―MTV‖, which is defined in dictionaries to be an abbreviation for ―music television‖, could be

descriptive in the context of the entertainment services. This, however, was not fatal because it was

proved that this mark had been sufficiently used by the applicant prior to the date of the application

such that it had become distinctive for the service of providing entertainment programmes via the

Internet. In other words, as a result of the applicant‘s use and promotion of the ―MTV‖ mark, the

public no longer perceived the mark merely as a word descriptive of the services in question. Instead,

the public on seeing or hearing ―MTV‖ in the context of internet services recognised the mark to be a

trade mark in the sense that they associated it with the applicant. Evidence of such recognition or

association in the mind of the public indicates the mark is doing exactly what a trade mark is

supposed to do. Once that happens, there is no reason why the mark should not be allowed registration.

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17.9 One very important principle emerges from the above overview of the distinctiveness

requirement: if a mark is so descriptive of certain goods (or services) that it is really a generic term for

certain goods or services and, therefore, lacks ―capacity to distinguish‖, it must necessarily be a mark

that is caught by ss 7(1)(b) and/or 7(1)(c) and/or 7(1)(d). This principle finds judicial support

in Nation Fittings (M) Sdn Bhd v Oystertec Plc[2006] 1 SLR 712. In this case, Andrew Phang J, as he

then was, found that the two marks before him, which were 2-dimensional plan views of the

plaintiff‘s pipe-fitting, were incapable of distinguishing pipe-fittings supplied by the plaintiff from

those supplied by other traders, and for this reason, they did not qualify as ―trade marks‖. Having

reached this conclusion, this is what the judge said of the ―inherent distinctiveness‖ threshold (at

[137]):

[I]t is clear that if, as I have found, both these marks do not even satisfy the definition of a

―trade mark‖ under the TMA in the first instance, it would follow that they would fall foul of

s 7(1)(b) as well.

17.10 When we look at the ―capacity to distinguish‖ threshold from this perspective, it is fair to

say that it doesn‘t add anything to the distinctiveness discussion. Why bother with ―capacity to

distinguish‖ if a mark which lacks this capacity will necessarily fail at the ―inherent distinctiveness‖

threshold? This is why, in the UK/EU, they ignore the ―capacity to distinguish‖ threshold, and focus

solely on the ―inherent distinctiveness‖ threshold and the ―de facto distinctiveness‖ threshold. This is

the approach endorsed by the ECJ in Philips Electronics NV v Remington Consumer Products

Ltd [2003] RPC 2. The effect of this ECJ decision has been considered by the UK Court of Appeal

in West v Fuller Smith & Turner Plc [2003] FSR 44 at [35]. If we transpose the Singapore provisions

on distinctiveness to what the UK Court of Appeal said, this is what we will get (at [35]):

The effect of the judgment of the ECJ is that [the ‗capacity to distinguish‘ concept] ... must be

viewed as imposing no distinctiveness requirement separate from that imposed by s 7(1)(b), (c)

and (d) and 7(2). Thus, there is no requirement that the mark be both ‗capable of distinguishing‘

and ‗not devoid of any distinctive character‘.

17.11 We now look at Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan

Foreign Trade Co Ltd [2008] 3 SLR 296. The plaintiff sought in these proceedings to remove the

trade mark (shown below) from the register.

17.12 The Chinese characters appearing in this trade mark mean ―rooster‖. This ―Rooster Brand‖

mark was registered in respect of cordyceps (a type of Chinese traditional herb) and the defendant,

a company incorporated in China, was the registered proprietor. (There was also a copyright issue

with respect to the device in this trade mark. This review, however, will not cover the copyright claim.)

17.13 When one looks at the ―Rooster Brand‖ mark, it is not immediately apparent why

distinctiveness is an issue. On its own, this mark (whether the word ―rooster‖ or the picture of a

rooster) has no descriptive connotations in relation to cordyceps. The plaintiff‘s complaint that this

mark lacks distinctiveness was based on the use of this mark prior to the date of the application for

registration in Singapore. The following time-line sets out the history surrounding this mark. (This

timeline is a summary of the facts taken from the segments of the judgment relating to the trade mark

claim and the copyright claim. There is a slight variation in the names of the parties in the different

segments.)

1950s: The state-owned company known as ―CNP‖, which was originally the only

supplier of cordyceps harvested in China, set up various companies in different

provinces. CNP (Qinghai branch) was one such company.

1960s: CNP (Qinghai branch) came up with the ―Rooster Brand‖ mark. This mark was

used by the CNP (Qinghai branch) for its cordyceps, but it was also used by other

state-owned companies in China in relation to their cordyceps, including CNC

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(Qinghai Branch) and Qinghai Medeco. (This should not be surprising since all

these companies were state-owned. Perhaps another reason was the absence of the

concept of private ownership of property in China at that time. It was noted in the

case that there was no system for registration of trade marks in China until 1983.)

1985: CNC (Qinghai branch) registered the ―Rooster Brand‖ mark in China. This

registration was made, it was alleged, with the consent of CNP (Qinghai branch)

which had by then assigned the copyright in the ―Rooster Brand‖ mark to CNC

(Qinghai branch).

1989: CNC (Qinghai branch) assigned the Chinese registration of the ―Rooster Brand‖

mark to Qinghai Medeco.

1995: Qinghai Medeco, now the registered proprietor of the ―Rooster Brand‖ mark in

China, applied for and obtained registration of the mark in Singapore. At the time

of application, cordyceps from China were sold in Singapore under the ―Rooster

Brand‖ mark by Qinghai Medeco and by other Chinese companies.

2003: The Singapore registration was assigned to the defendant. Upon recordal of this

assignment with the Registry of Trade Marks, the defendant became the registered

proprietor.

17.14 What is important to note from this history is that, at the time of Qinghai Medeco‘s

application to register the mark in Singapore, Qinghai Medeco was not the only party using the mark

in Singapore. It is unclear from the judgment when exactly this ―sharing‖ of the mark amongst the

various suppliers of Chinese cordyceps stopped in Singapore. But eventually it did stop – when the

defendant exercised its rights as the registered proprietor of the mark and took steps to stop the use of

the mark without its licence. The plaintiff was one of those traders selling Chinese cordyceps which

was affected by the defendant‘s move. Hence, the plaintiff‘s application to have the ―Rooster mark‖

expunged from the register.

17.15 From the point of view of the plaintiff, the registration of the ―Rooster Brand‖ mark in 1995

was wrong. At that time, the mark was not used exclusively by Qinghai Medeco. The plaintiff claimed

that in 1995 the public in Singapore associated the ―Rooster Brand‖ mark with cordyceps from China,

and not cordyceps from Qinghai Medeco. In this sense, the ―Rooster Brand‖ mark was descriptive of

the goods, and hence non-distinctive. The plaintiff pleaded two types of non-distinctiveness: (a) that

the mark had become customary in the current language or in the bona fide and established practices

of the trade, and hence breached s 7(1)(d); and (b) the mark was incapable of distinguishing the

defendant‘s cordyceps from those supplied by other traders, and hence breached s 7(1)(a).

17.16 Perhaps it was the sequence in which the plaintiff had put forward its case of non-

distinctiveness – breach of s 7(1)(d) first, and then breach of s 7(1)(a) – that caused the judge, Kan

Ting Chiu J, to consider the two grounds in this sequence. Otherwise, it would have been better to

consider the complaint under s 7(1)(a) first. After all, as we have noted earlier, if a mark lacks

―capacity to distinguish‖ for the purposes of s 7(1)(a), it must follow that the mark lacks the type of

―inherent distinctiveness‖ referred to in s 7(1)(d).

17.17 On s 7(1)(d), Kan Ting Chiu J held that the ―Rooster Brand‖ mark had not become

customary in the current language or in the bona fide and established practices of the trade. For the

intent of this paragraph, he relied on the English case Homel Foods Corp v Antilles Landscape

Investments NV [2005] RPC 28 which held that this paragraph was aimed at signs which were generic

either amongst the general public or amongst the trade. This being the test, the issue was whether the

public or the trade saw the mark as synonymous to cordyceps. The evidence adduced by the plaintiff

did not convince the judge that the ―Rooster Brand‖ mark had become generic of cordyceps, not in the

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way that ―thermos‖ is synonymous to vacuum flasks. What the evidence showed, he found, was that

the ―Rooster Brand‖ mark when used in the context of cordyceps was understood to refer to Chinese

cordyceps: Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade

Co Ltd [2008] 3 SLR 296 at [33]. This is an important finding, one that we will return to shortly.

17.18 On s 7(1)(a), Kan Ting Chiu J first considered whether a mark‘s ―capacity to distinguish‖

should be assessed by looking at (a) the mark alone, or (b) the mark and the surrounding

circumstances. Kan J preferred (b), an approach taken in the English case Bach and Bach Flower

Remedies Trade Marks [2000] RPC 513. In this case, one Dr Edward Bach created herbal remedies,

which he referred to as ―Bach Flower Remedies‖. He encouraged others to make and use his herbal

remedies. Over time, and certainly by 1979, retailers and the general public used the words ―Bach

Flower Remedies‖ and even the word ―Bach‖ as a generic term to describe herbal remedies made in

accordance with Dr Bach‘s teachings and recipes. In 1979, some followers of Dr Bach registered the

word ―Bach‖ in respect of herbal preparations derived from herbs or flowers for medicinal purposes.

Did this word have ―capacity to distinguish‖ given that, at the date of the trade mark application, it

had become generic through use? It was in this context that the UK Court of Appeal had to decide

whether it was permissible to assess a mark‘s ―capacity to distinguish‖ by looking at prior usage of

the mark. The answer was ―yes‖, and it followed that ―Bach‖ lacked ―capacity to distinguish‖.

17.19 Bach and Bach Flower Remedies Trade Marks [2000] RPC 513 (―the Bach case‖) is also

authority for the proposition that the ―capacity to distinguish‖ concept is aimed at generic terms for

goods or services. Recall ―SOAP‖ for soap in our overview. But there is a difference between

the Bach case and the ―SOAP‖ for soap example. In the latter, ―SOAP‖ started off life as a generic

term for soap whereas the word ―Bach‖, when it was first put to use, was not generic of herbal

remedies. The word ―Bach‖ evolved into a generic term through use. Another way of putting this is

that the word ―Bach‖ lost its ―capacity to distinguish‖ through use. So, theBach case stands for the

proposition that a mark can lose its ―capacity to distinguish‖. Kan Ting Chiu J implicitly recognised

this proposition because in deciding that it was necessary to look at the mark itself and surrounding

circumstances, the judge said that ―capacity to distinguish‖ can be ―lost because the mark is used by

multiple parties (as in Bach) or has become generic‖: Wing Joo Loong Ginseng Hong (Singapore) Co

Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2008] 3 SLR 296 at [45].

17.20 But there is a very interesting aspect to this comment: the judge did not see the Bach case as

dealing with generic marks. Rather, he saw the Bach case as one where the word ―Bach‖ was held to

be lacking in ―capacity to distinguish‖ because it was used by ―multiple parties‖. This is not surprising.

After all, on the plaintiff‘s complaint based on s 7(1)(d), the judge had concluded that the ―Rooster

Brand‖ mark was not generic of cordyceps. By treating the Bach case as a ―multiple user‖ case, this

provided him with an alternative basis for finding that the ―Rooster Brand‖ mark lacked ―capacity to

distinguish‖. The evidence before him clearly showed that, at the date of registration, the ―Rooster

Brand‖ mark was not used by the trade mark proprietor Qinghai Medeco exclusively; rather, it was

also used by other suppliers of Chinese cordyceps.

17.21 It is useful, at this point, for us to summarise Kan Ting Chiu J‘s conclusions on the

distinctiveness issue: the ―Rooster Brand‖ mark did not lack the ―inherent distinctiveness‖ described

in s 7(1)(d) because it was not generic, but it lacked ―capacity to distinguish‖ because it was used by

multiple parties. A couple of points arise from these conclusions.

17.22 First, the ―Rooster Brand‖ mark lacked ―capacity to distinguish‖ because the mark was being

used by ―multiple parties‖ at the time of its registration. One can see that it is unfair to allow one of

these traders to seek registration of the mark, and thereby prevent others from using it. On the other

hand, we should also remember that the trade mark registration system works on a ―first to file‖

principle in that it favours the trader who is the first to apply to register a mark, provided always that

this registration does not conflict with another party‘s earlier right to that mark. This concept known

as ―conflicts with earlier rights‖ is set out in s 8 of the Trade Marks Act (Cap 332, 1999 Rev Ed). The

concept of ―conflicts with earlier rights‖ in s 8 is distinct from the ―distinctiveness‖ requirement in s 7.

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In our view, the fact that there are ―multiple parties‖, other than the applicant, using the same mark at

the relevant time should be dealt with under s 8, and not under the concept of ―capacity to distinguish‖

in s 7. If we look at the Bach case, it was not the presence of ―multiple users‖ per se that prompted the

UK Court of Appeal to conclude that the word ―Bach‖ lacked ―capacity to distinguish‖. It was the fact

that use of the word ―Bach‖ by multiple parties had reached a stage when the word had become a

generic term.

17.23 Second, the ―Rooster Brand‖ mark offended s 7(1)(a) but not s 7(1)(d). This conclusion

suggests that it is possible for a mark to lack ―capacity to distinguish‖ and yet have ―inherent

distinctiveness‖ – a result which is contrary to the principle we looked at earlier, namely, that a mark

which lacks ―capacity to distinguish‖ must necessarily be a trade mark that lacks ―inherent

distinctiveness‖, a principle that finds support in Andrew Phang J‘s judgment in Nation Fittings (M)

Sdn Bhd v Oystertec Plc [2006] 1 SLR 712. Kan Ting Chiu J‘s conclusion appears to challenge this

principle. But it is submitted that there is another way of looking at his conclusion. It was noted

earlier that, when the judge was assessing the evidence to determine whether the ―Rooster Brand‖

mark had become generic of cordyceps for the purposes of s 7(1)(d), he found that the public

understood ―Rooster Brand‖ cordyceps to mean cordyceps from China. Now, can‘t it be said that this

mark is descriptive of the geographical origins of the goods and, thus, offends s 7(1)(c)? Recall that

this provision is targeted at marks which are inherently non-distinctive because they:

[D]esignate the kind, quality, quantity, intended purpose, value, geographical origin, the time

of production of goods. [emphasis added]

17.24 The plaintiff argued its case on distinctiveness relying only on ss 7(1)(a) and 7(1)(d). The

plaintiff did not raise s 7(1)(c). It is submitted that, had s 7(1)(c) been argued before Kan Ting Chiu J,

he would have held that the ―Rooster Brand‖ mark offended s 7(1)(c), and maybe even s 7(1)(b)

which is the general ―catch all‖ paragraph.

17.25 A final comment to make about Kan Ting Chiu J‘s judgment. He followed the approach

taken in Bach and Bach Flower Remedies Trade Marks [2000] RPC 513 (―the Bach case‖), which

allows a court to look at prior usage of the mark for the purpose of determining if the mark has

―capacity to distinguish‖. The authority of the Bach case was put into question in West v Fuller Smith

& Turner Plc [2003] FSR 44 (―Eastenders‖), a case mentioned earlier. This is the case where the UK

Court of Appeal held that, after the ECJ‘s judgment inPhilips Electronics NV v Remington Consumer

Products Ltd [2003] RPC 2 (―the Philips Electronics case‖), there is no requirement for a mark to

fulfil, as separate conditions, the ―capacity to distinguish‖ threshold and the ―inherent distinctiveness‖

threshold. The court then noted that the Bach case, which was decided before thePhilips

Electronics case, was no longer valid. This is hardly surprising. If the principal ground for the

decision in the Bach case is on the ―capacity to distinguish‖ threshold and this threshold has been

abolished in the UK/EU, the Bach case is no longer relevant. But in Singapore, where this threshold is

still part of the distinctiveness scene, we should not be too concerned with the views expressed in

the Eastenders case about the Bach case.

17.26 It is submitted that the approach taken in Bach and Bach Flower Remedies Trade

Marks[2000] RPC 513 (―the Bach case‖) is correct. As mentioned at the start of this review, the

distinctiveness criterion is intimately tied to the ―badge of origin‖ function of a trade mark, that is, its

ability to inform the public (including consumers, and retailers) that the goods or services in question

come from a particular trade source. This indicates that the perception of the public is important in

this inquiry. How is the mark understood by the public? What does the mark signify to the public of

the goods or services in question? In particular, when the public encounters the mark, is its first

impression of the mark that it is in some way descriptive of the goods or services? If these questions

are answered by reference to the mark alone, without taking into account the circumstances

surrounding the mark, including any prior usage of the mark, the answers would not be an accurate

reflection of what the mark actually means to the public. It is submitted, with respect, that Kan Ting

Chiu J was right when he held that a mark‘s ―capacity to distinguish‖ must be assessed by looking at

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the mark itself and the surrounding circumstances. It does not matter that the Bach case has been

sidelined in the UK/EU.

17.27 Kan Ting Chiu J‘s finding that the ―Rooster Brand‖ mark lacked ―capacity to distinguish‖

meant that the registration of this mark in 1995 was wrongful. This mark, however, was not expunged

from the trade mark register. This was because Kan J also held that there was discretion on the part of

the court to allow an invalid registration to remain on the register. This second part of the battle is

reviewed later under ―Section 23: Discretion in rectification proceedings?‖

Section 8: Conflicts with earlier rights

17.28 In the review of the ―Rooster Brand‖ case, it was mentioned that s 8 of the Trade Marks Act

(Cap 332, 1999 Rev Ed) prohibits registration of a mark if it ―conflicts with an earlier right‖. Section

8 has different subsections, each dealing with a scenario that gives rise to a type of conflict. The next

case we are reviewing is interesting because it is the first case to look at the scope of s 8(3).

17.29 In Mobil Petroleum Co Inc v Hyundai Mobis [2008] 4 SLR 427, the High Court was

concerned with the registrability of the ―MOBIS‖ mark (shown below) for automobile parts. The trade

mark applicant was Hyundai.

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17.30 Hyundai‘s application was opposed by the Mobil petroleum company on the basis that the

―MOBIS‖ mark conflicted with its mark ―MOBIL‖ registered for oil. Three grounds of objection were

raised: under ss 8(2)(b), 8(3) and 8(7)(a). The opposition proceedings in the High Court were heard

by Lee Seiu Kin J. In these proceedings, Hyundai accepted that the two marks were at least similar to

one another.

17.31 We will first quickly discuss why the judge dismissed the objections raised under ss 8(2)(b)

and 8(7)(a). On s 8(2)(b), one of the preconditions in this provision is that the goods must be similar.

The judge held that the goods in this case – automobile parts versus oil – were not similar. It followed

that s 8(2)(b) had no application to the case. On s 8(7)(a), it was argued that Hyundai‘s use of the

―MOBIS‖ mark on automobile parts would amount to passing off these goods as Mobil‘s goods, and,

therefore, registration of ―MOBIS‖ would offend s 8(7)(a). It is well established that one of the

essential elements in the action for passing off is misrepresentation. The judge found that the limited

degree of similarity between the marks and the dissimilarity between the goods was such that there

would be no likelihood of confusion and misrepresentation. Hence, the objection raised under s 8(7)(a)

failed.

17.32 We now move to the ground of objection raised under s 8(3). This provision deals with the

situation where the goods are dissimilar, as in this case. (Note that s 8(3) applies only to applications

filed before 1 July 2004. Hyundai‘s application was filed before 1 July 2004. If Hyundai‘s application

had been filed on or after 1 July 2004, the appropriate provision would have been s 8(4), and not

s 8(3).)

17.33 Section 8(3) would operate to prevent registration of the ―MOBIS‖ mark, if all of the

following conditions were met:

(a) the ―Mobil‖ mark was well known in Singapore;

(b) use of the ―Mobis‖ mark on automobile parts would indicate a connection between these

goods and the Mobil petroleum company;

(c) there existed a likelihood of confusion on the part of the public because of such use; and

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(d) the interests of the Mobil petroleum company were likely to be damaged by such use.

17.34 The battle was fought on conditions (b)–(d). Lee J held as follows. On condition (b), the

Mobil petroleum company argued that the term ―connection‖ should be construed widely, to include

any form of commercial or trade connection, for example the public would think that Hyundai‘s

―MOBIS‖ automobile parts are associated with the Mobil petroleum company. Lee J agreed that

―connection‖ should be construed widely, but he found that on the facts of this case, because of the

very limited degree of similarity between the two marks and the dissimilarity between the goods, the

public would not make any connection between ―MOBIS‖ automobile parts and the Mobil petroleum

company. This finding itself was sufficient to dismiss the case. The judge pointed out that, without

such a connection, there could not be any confusion for the purposes of (c). But he did go on to

consider whether there was a likelihood of confusion in this case. The test, he held, was (Mobil

Petroleum Co Inc v Hyundai Mobis [2008] 4 SLR 427 at [33]):

… whether a substantial number of the relevant public (ie, people who are in the market for

such goods) would be confused. By ‗substantial number‘ I do not mean a majority, but a not

insignificant number.

17.35 Applying this test to the facts before him, he found that no likelihood of confusion existed.

This is consistent with his finding on the claim for passing off.

17.36 On condition (d), Hyundai argued that it was not possible for there to be any damage to the

Mobil petroleum company when Hyundai had not yet used the ―MOBIS‖ mark in Singapore. Lee Seiu

Kin J did not accept this argument – and rightly so. His decision on this aspect is supported by the

wording of s 8(3) itself, in particular, the reference in condition (d) that the interests are ―likely to be

damaged by such use‖ [emphasis added].

17.37 There was an appeal against Lee Seiu Kin J‘s judgment. This appeal has been heard and

dismissed by the Court of Appeal.

Section 23: Discretion in rectification proceedings?

17.38 We saw in the ―Rooster Brand‖ case (Wing Joo Loong Ginseng Hong (Singapore) Co Pte

Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2008] 3 SLR 296) that the plaintiff applied to expunge

the ―Rooster Brand‖ mark from the register. Kan Ting Chiu J‘s finding that the mark lacked ―capacity

to distinguish‖ at the time of registration (1995) meant that its registration breached s 7(1)(a). For

such marks, this is what s 23(1) has to say:

The registration of a trade mark may be declared invalid on the ground that the trade mark was

registered in breach of section 7(1). [emphasis added]

17.39 We have italicised the word ―may‖ in this provision. It was precisely because of this word

that Kan Ting Chiu J had to decide the question: what is the consequence of finding that the

registration has breached s 7(1) – does it mean that (a) this invalid registration must be removed from

the register, or (b) there is discretion to allow this invalid registration to remain on the register? Kan J

noted that this issue had arisen in the context of the provision for revocation, s 22(1) and there are

High Court decisions favouring the position in (a): see, in particular, Reemtsma Cigarettenfabriken

GmbH v Hugo Boss AG (No 2) [2003] 4 SLR 155. But he preferred the position in (b). Amongst his

reasons, he noted that there was such discretion under the old law (see, for example, the Court of

Appeal‘s decision in Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd[2000] 3 SLR

145 at [82]) and he did not see any compelling reason for a change. Kan J‘s decision on s 23(1)

(in Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co

Ltd[2008] 3 SLR 296) conflicts with the High Court decisions on the s 22(1) provision. Although the

two provisions deal with invalidation and revocation respectively, the aim of both provisions relates to

9

the removal of a registered trade mark from the register. It does not make sense that discretion exists

under s 23, but not under s 22. It would be ideal for the Court of Appeal to resolve this issue.

17.40 Kan Ting Chiu J, having decided that he had discretion, went on to look at the relevant

circumstances for the exercise of this discretion. These, he said, would include (a) the triggering

factor; (b) the conditions at the time of the application to rectify the register; and (c) the balance of

three sets of interests involved (the public interest; the interest of the trade mark proprietor and those

who derived their interests from the proprietor, such as licensees; the interest of the party who seeks

the removal of the mark). The last factor – balancing of interests – was what made Kan J decide in

favour of allowing the invalidly registered ―Rooster Brand‖ mark, to remain on the register. He noted

that, in the current situation, the defendant, the proprietor of the mark, was the only party using the

mark as the other users had ceased using the mark after the registration in Singapore (because the

defendant took action to exercise its exclusive rights in relation to the mark); hence there was no

confusion or deception arising from the defendant‘s use of the mark. The essence of the judge‘s

reasoning on this appears to be this: the circumstances that formed the basis of the invalid registration

were no longer present at the point in time when the court had to decide whether to allow the mark to

remain on the register or to remove it therefrom. In this case, the ―Rooster Brand‖ registration was

invalid because there were other parties using the mark at the time of registration, but by the time the

case came before Kan J, there was only one trader using the mark in Singapore, and for this reason no

confusion would arise and, hence, no harm to the public: Wing Joo Loong Ginseng Hong (Singapore)

Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2008] 3 SLR 296. This is a case where the

disappearance of the reason for invalidating the registration (usage of the mark by ―multiple parties‖)

is achieved by the defendant enforcing the rights under the invalid registration, that is, rights it did not

legitimately have. By declaring the invalid registration to be valid now – this being the effect of

allowing the mark to remain on the register – is not the law endorsing the defendant‘s move to

legitimise his position through enforcement of invalid rights? This, however, is not a rhetorical

question. Although the intuitive response to this question is that it would be unfair for the law to assist

the defendant, there may be cases where no injustice will ensue. Indeed, in this case when the

―Rooster Brand‖ mark was registered by the defendant in 1995, why did the plaintiff seek to remove

the mark from the register only in 2006, 11 years after the registration of the mark? Could this

constitute grounds for denying the plaintiff the remedy it was seeking?

Copyright

Mapping the boundaries

17.41 In Virtual Map (Singapore) Pte Ltd v Singapore Land Authority [2008] 3 SLR 86, the High

Court did not take the opportunity to explain why both artistic and literary copyrights could subsist in

maps. The case concerned a claim by the Singapore Land Authority (―SLA‖) against its former

licensee for infringing its copyright by continuing to sell online maps that were reproductions of its

copyright works published in the Singapore Street Directory. The court and the parties accepted

without demur that the maps were artistic as well as literary works.

17.42 The acceptance was not without basis. Under the Copyright Act (Cap 63, 2006 Rev Ed)

(―the Act‖), an artistic work is defined in s 7(1) to include a ―drawing‖, which term is in turn defined

to include a map (as well as a diagram, chart and plan). As regards a literary work, it is provided in

s 7A of the Act that for the purposes of the Act, the term ―literary work‖ includes ―a compilation in

any form‖ and the term ―compilation‖ is defined to mean, amongst others, a compilation or table of

relevant materials or data other than relevant materials or parts of relevant materials ―which, by

reason of the selection or arrangement of its contents, constitutes an intellectual creation‖.

17.43 In reality, however, the distinction between an artistic work and a literary work is not

necessarily clear-cut. For instance, in relation to circuit diagrams, there has been a lively debate in

the UK as to whether artistic and literary copyrights are overlapping or accumulative. In Anacon v

Environmental Research Technology Ltd [1994] FSR 659, the issue was whether the defendant

10

infringed the plaintiff‘s copyright in the circuit diagram by making a ―net list‖ and circuit boards from

the plaintiff‘s circuit boards. The list set out all the components in a circuit and also, in relation to

each component, what other components it was connected to and where. The list would be fed into a

computer which produced a circuit diagram and a scheme for making a printed circuit board. It was

submitted by the plaintiff that, apart from being an artistic work, the circuit diagram was also a

literary work. The reasoning for the submission was summarised by the learned judge (Jacob J) as

follows (at 663):

[Counsel for the plaintiff] says: ‗Well, if one looks at the circuit diagram it is more than just

visual information, it is in fact technical information containing a lot of writing – a lot of

writing altogether – against each component, being the information as to what is, and an

indication in visual form of what other component each component is connected to.‘ Thus, he

says, not only is it an artistic work, it is also a literary work. He says, in effect, that the circuit

diagram is a list of components together with information as to how they are connected together.

17.44 In accepting the reasoning, Jacob J opined (Anacon v Environmental Research Technology

Ltd[1994] FSR 659 at 663) that:

My first thought was that it would be absurd to regard a circuit diagram as a literary work, but

the more one thinks about the ambit of that expression, as used in the Act, the more one is

driven to the conclusion that provided it is all written down and contains information which can

be read by somebody, as opposed to appreciated simply with the eye, the more one sees that

that is just what it is.

17.45 Accordingly, the learned judge held that the defendant had wrongfully reproduced the

information which was a literary work contained in the plaintiff‘s circuit diagram.

17.46 The reasoning in Anacon v Environmental Research Technology Ltd [1994] FSR

659 (―Anacon‖) was based on s 3(1) of the UK Copyright, Designs and Patents Act 1998 which

defined a literary work as any work which is ―written‖ and ―writing‖ is further defined as including

―any form of notation or code, whether by hand or otherwise‖. Thus, the conventional symbols used

in the circuit diagram were perceived as a form of notation or code. However, in Electronic

Techniques (Anglia) Ltd v Critchley Components Ltd[1997] FSR 401 (―Critchley‖), which concerned

an application for summary judgment in respect of a claim for infringement of the copyright in certain

circuit diagrams, the late Laddie J disagreed with the Anacon reasoning. He pointed out that copyright

had historically been divided up into ―discrete categories or compartments‖ and it was not possible for

two distinct copyrights to subsist in the result of a single creative effort. He added that in the case of a

borderline work, ―there are compelling arguments that the author must be confined to one or other of

the possible categories. The proper category is that which most nearly suits the characteristic of the

work in issue‖:Critchley, at 413. In yet another circuit diagram case, namely, Aubrey Max Sandman v

Panasonic UK Ltd[1998] FSR 651, Pumfrey J favoured the Anacon reasoning. He said that it was not

necessarily right to say that it was only in borderline cases that a choice must be made in

characterising a work and cited the example of a calligraphic work which, to him, was both a literary

and an artistic work. He held that a circuit diagram as a whole could also constitute a literary work,

analogous to anything from a plot to a final draft.

17.47 It should be mentioned that, prior to the debate, Anacon v Environmental Research

Technology Ltd[1994] FSR 659 (―Anacon‖) was followed by Rubin J in Real Electronics Industries

Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd [1996] 1 SLR 336 (reviewed in (2005) 6 SAL Ann

Rev 334 at 367, para 16.111) where he held that the design of the plaintiff‘s printed circuit board for a

fax modem was a literary work as it contained much technical information by way of a multitude of

markings, lines, circles, holes, printed figures, abbreviations and codes with a view to placing thereon

resistors, capacitors, transistors, transformers, inductors and switches. It, however, remains to be seen

whether the Anacon approach will continue to be adopted by our courts or whether Laddie J‘s discrete

copyright categories will be preferred.

11

17.48 May not a similar debate arise in relation to maps (Virtual Map (Singapore) Pte Ltd v

Singapore Land Authority [2008] 3 SLR 86)? Can they, indeed, be literary works as well? Shouldn‘t

they be confined to their more logical category (namely, artistic works), a discrete category which

neatly suits their characteristics? The Concise Oxford Dictionary regards the term ―literary‖ as

associated with books, literature or written composition and the term ―writing‖ with words. As in the

case of circuit diagrams, a layperson may be excused for thinking that it would be absurd to regard a

map as a literary work. After all, one does not ―write‖ a drawing, painting and other artistic work.

17.49 The position under copyright law is, however, counter-intuitive. In the first place, there is

no attempt at defining the term “literary work” in the Copyright Act (Cap 63, 2006 Rev Ed). As

noted above, it merely provides that, for the purposes of the Act, the term includes ―a compilation in

any form‖. The word ―compilation‖ is defined to mean, amongst others, a compilation of relevant

materials or data ―which, by reason of the selection or arrangement of its contents, constitutes an

intellectual creation‖. The Concise Oxford Dictionary defines the verb ―compile‖ to mean ―to collect

(materials) into a volume‖. Further, case law has long indicated that the term ―literary work‖ does not

imply that the work must have any literary style or merit. What is required is merely that the work

should be intended to afford information or instruction: see Exxon Corp v Exxon Insurance

Consultants International Ltd [1982] RPC 69.

17.50 It is intrinsic that maps afford instruction and information which can be read by somebody,

as opposed to appreciated simply with the eye. They also invariably contain data or information which

were compiled or collected (after survey, research or other effort). In Virtual Map (Singapore) Pte Ltd

v Singapore Land Authority [2008] 3 SLR 86, the court found that all maps had their genesis in a rigid

mathematical framework with regard to the physical shape of the earth and the details and that the

details may be classified into transport networks, public and private buildings, parks, lakes, rivers, etc,

which must all be related to the framework used for the map. It is indubitable that such details are to

be regarded as data or information. The court‘s finding was made in the context of a lengthy review of

the process of map-making ―to ascertain whether there has been infringement of SLA‘s copyright

works‖: see Virtual Map (Singapore) Pte Ltd v Singapore Land Authority[2008] 3 SLR 86 at [8]–[12].

Regrettably, exactly what was the nature of ―SLA‘s copyright works‖ was not expressly stated. It is

suggested that, from the review, the court could have expressly ruled that there had been sufficient

skill, labour and/or judgment involved in the selection or arrangement of the details in SLA‘s street

directory for it to constitute an intellectual creation and, hence, a copyright literary work. Instead,

such a ruling is to be inferred from the court‘s reference to a passage from the authoritative

book Copinger and Skone James on Copyright (Garnett, Davies & Harbottle eds) (Sweet & Maxwell,

15th Ed, 2005) at para 7-44 which concerned infringement of compilations: Virtual Map (Singapore)

Pte Ltd v Singapore Land Authority[2008] 3 SLR 86 at [42]. The passage reads: ―[E]ven to copy the

claimant‘s work but then … go to the source to check that the information is correct will be an

infringement‖ of the copyright in the compilation.

Copying an artistic work

17.51 The court also found in Virtual Map (Singapore) Pte Ltd v Singapore Land Authority[2008]

3 SLR 86 that the ―data obtained in the map-making process [by SLA] may be stored either as vector

data or rastar data‖. The data referred to details such as transport networks, public and private

buildings, parks, lakes, rivers. The following explanation by the lower court concerning the difference

between vector data or rastar data was adopted by the High Court (at [10]):

Vector data is digital data in the form of points, lines and polygons having a geographic

position and shape defined by a set of coordinates. It is data which can be described as a

collection of ‗rods‘ of known length and direction. All computer-based geographical

information systems use vector data so that networks can be constructed. Rastar data is the

alternative representation of that data in pixels. It is the information used to represent a

computer image as a grid of pixels. Rastarised graphics are made up of rows of pixels, such that

12

any change in the size of the picture or the graphic itself results in a change of the pixel size as

well. Typical file formats of rastar data include jpeg and tiff.

17.52 The defendant asserted that its online maps were independently created through the use of

global positioning system data and high resolution satellite imagery. However, SLA contended that

there was copying of its works, as evidenced by the many ―fingerprints‖ (specifically, data in the form

of phantom or ghost details, deliberate errors, incorrectly-named buildings, non-existent buildings and

roads, similarities in shape, unique building name convention as well as identical X and Y co-

ordinates) in its works which were also found in the defendant‘s online maps. The court accepted

SLA’s contention and held that, while the defendant did improve and beautify SLA’s data, its

map-making process was heavily dependent on SLA’s vector data which provided the

“backbone” or skeleton” of the defendant’s online maps and this justified the finding of

substantial copying by the lower court.

17.53 A number of observations may be made concerning this aspect of the court‘s decision. It is

well settled that for there to be infringement of copyright, there must be two elements: first, the

copyright work must be the source from which the infringing work is derived and, secondly, there

must be objective similarity between the infringing work and the copyright work: Francis Day &

Hunter Ltd v Bron [1963] Ch 587 at 623. The first element was easily established in Virtual Map

(Singapore) Pte Ltd v Singapore Land Authority[2008] 3 SLR 86 as the defendant was an ex-licensee

and had prior access to the copyright works. The defendant denied that the copyright works were the

source of its online maps which, they claimed, were independently created through the use of global

positioning system data and high resolution satellite imagery. The court, however, rejected the claim

as it found that the defendant‘s witnesses failed miserably in explaining why there were many

―fingerprints‖ in the maps.

17.54 As regards objective similarity, the law does not require the infringing work to be an exact

replica of the copyright work. If this were so, it would be an eccentric law indeed. Section 10(1) of the

Copyright Act (Cap 63, 2006 Rev Ed) provides that a reference to the doing of an act restricted by the

copyright in a work is to be read as including a reference to the doing of the act in relation to ―a

substantial part of the work‖. It is clear that this section comes into play in two quite different types of

cases. The first type is where an identifiable part of the copyright work, but not the whole work, has

been taken. For example, only a section of a picture has been taken, or only a sentence or two or even

a phrase from a poem or book may have been copied (see, eg, Kipling v Genatosan Ltd [1923–28]

MCC 203 where the use of four lines from Kipling‘s inspirational poem ―If‖ in an advertisement was

held to be an infringement). The expression ―substantial part‖ is to be understood as referring not only

to the quantity of the part taken but also to the quality: see Ladbroke (Football) Ltd v William Hill

(Football) Ltd [1964] 1 WLR 273 at 276.

17.55 The other type of case is where the copying is not an exact copying of the copyright work

but a copying with modifications, deliberate variations or contrived dissimilarities. This type of

copying has been described by Laddie J in his book The Modern Law of Copyright and

Designs (Butterworths Law, 3rd Ed, 2000) (―Laddie‖) as ―altered copying‖. A paradigm of this type

of copying would be a translation of a literary work into some other language or the dramatisation of a

novel. The translation or the dramatisation may not have a single word in common with the copyright

work, but it might well, and in the case of a word-by-word translation certainly would, constitute an

infringement of copyright. However, if the alterations are sufficiently extensive, it may well be that

the copying does not constitute an infringement at all. The test proposed in Laddie (at para 3.137) for

this type of copying is: ―Has the infringer incorporated a substantial part of the independent skill,

labour, etc, contributed by the original author in creating the copyright work …?‖ This has been

judicially described as a ―useful test‖, based as it is on an underlying principle of copyright law,

namely, that a copier is not at liberty to appropriate the benefit of another‘s skill and labour: see Lord

Scott of Foscote in the House of Lords case of Designers Guild Ltd v Russell Williams (Textile)

Ltd [2000] 1 WLR 2416 at 2431. The House of Lords also held that in ascertaining whether the

13

benefit of skill and labour has indeed been appropriated, the nature and extent of the similarities

between the altered copy and the copyright work would play a critical and often determinative role.

17.56 Designers Guild Ltd v Russell Williams (Textile) Ltd [2000] 1 WLR 2416 concerned copying

of a fabric design. The trial judge had found that there were many and obvious similarities between

the parties‘ designs, which he itemised. He concluded that there had been copying by the defendant

and that, considering the plaintiff‘s design as a whole, what had been copied amounted to a substantial

part of the plaintiff‘s design. The defendant appealed against the conclusion that the copying was of a

substantial part of the plaintiff‘s design. The UK Court of Appeal allowed the appeal as, after

considering the component parts of the two designs and the differences between them, it was of the

view that the two designs did not look sufficiently similar and that the defendant‘s design had not

involved the copying of a substantial part of the plaintiff‘s design. The plaintiff appealed.

17.57 In allowing the appeal, the House of Lords held that there was no ground for interfering with

the trial judge‘s findings of fact. Of importance is Lord Millet‘s two-stage approach in relation to

infringement of artistic copyright. The first stage is to identify those features of the defendant‘s work

which the plaintiff alleges have been copied from the copyright work. A visual comparison of the two

works should be undertaken, noting the similarities and differences. The purpose of the comparison is

not to see whether the overall appearance of the two designs is similar but to determine whether the

similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of

copying than of coincidence. It is at this stage that similarities may be disregarded because they are

commonplace, unoriginal or consist of general ideas. If the plaintiff establishes sufficient similarity,

not in the works as a whole but in the features which he alleges have been copied, and establishes that

the defendant had prior access to the works, the burden passes to the defendant to establish that,

despite the similarities, they did not result from copying.

17.58 The second stage is to determine whether what have been taken constitutes all or a

substantial part of the copyright work. This is a matter of impression and must be determined by its

quality rather than its quantity. It depends on its importance to the copyright work, not the defendant‘s

work. There is no need to look at the defendant‘s work for this purpose.

17.59 The High Court in Virtual Map (Singapore) Pte Ltd v Singapore Land Authority [2008] 3

SLR 86(―Virtual Map‖) cited Designers Guild Ltd v Russell Williams (Textile) Ltd [2000] 1 WLR

2416 with approval. The court held that the case was one of ―altered copying‖ on the part of the

defendant because its maps were not an exact replica of SLA‘s works: Virtual Map, at [14]. It is

respectfully submitted that the fact that the maps were not a replica is not a good enough reason for

ruling that there was ―altered copying‖. It could equally be a case where a discrete part of the

copyright work has been taken – that is, the first type of copying as mentioned above. On the issue of

copying, the court placed heavy reliance on the presence of ―fingerprints‖ (such as phantom or ghost

details, deliberate errors, incorrectly-named buildings, non-existent buildings and roads and unique

building name convention) in the defendant‘s online maps. Presumably, following Lord Millet‘s test,

the court was satisfied that these were ―sufficiently close, numerous or extensive‖ to justify an

inference of copying rather than coincidence.

17.60 On the issue of substantiality, the defendant argued that its copying was not substantial when

compared to its overall work: Virtual Map (Singapore) Pte Ltd v Singapore Land Authority [2008] 3

SLR 86 (―Virtual Map‖) at [58]. The argument is amiss, as the comparison is to be made in relation to

the copyright work, not its work. The court noted the error and made reference to Lord Millet‘s

statement that ―while the copied features must be a substantial part of the copyright work, they need

not form a substantial part of the defendant‘s work‖. Here, the ―useful‖ test suggested by Laddie (The

Modern Law of Copyright and Designs (Butterworths Law, 3rd Ed, 2000)) is relevant: ―Has the

infringer incorporated a substantial part of the independent skill, labour, etccontributed by the original

author in creating the copyright work …?‖ The court had no hesitation in deciding that there was such

incorporation in the Virtual Map case. In reaching this decision, the court referred, with approval, to

the lower court‘s findings which focused on the presence of the ―fingerprints‖ in the defendant‘s maps.

14

17.61 It is suggested that the presence of the ―fingerprints‖ in the defendant‘s maps does not

constitute substantial copying, both qualitatively and quantitatively. As mandated under Lord Millet‘s

approach, the ―fingerprints‖ must be a substantial part of SLA‘s copyright maps, not the defendant‘s

maps. Also, whether there is substantial copying is to be determined by quality rather than quantity.

Hence, the court should also have considered the impact of the ―fingerprints‖ that were taken on

SLA‘s maps. Unlike the fabric designs inDesigners Guild Ltd v Russell Williams (Textile) Ltd [2000]

1 WLR 2416, which are ―pure‖ artistic works, the ―fingerprints‖ consist of informational and

commonplace features (such as buildings and roads) for which there is a limited scope for expression.

The nature and quality of these features should not be ignored when considering the issue of

substantial copying of the plaintiff‘s maps.

Entertaining the copyright licensee

17.62 Last year, we reviewed the case of Alliance Entertainment Singapore Pte Ltd v Sim Kay

Teck[2007] 2 SLR 869 where, after a comprehensive review of the relevant authorities, Sundaresh

Menon JC held that only the copyright owner and his exclusive licensee have the right under s 123 of

the Copyright Act (Cap 63, 2006 Rev Ed) to take action against copyright infringers. In Odex Pte Ltd

v Pacific Internet Ltd[2008] 3 SLR 18, the plaintiff tried to circumvent the effect of the Alliance

Entertainment case by submitting that Alliance Entertainment Singapore Pte Ltd v Sim Kay

Teck [2007] 2 SLR 869 concerned a claim for substantive relief whereas its claim was for pre-action

discovery of documents to identify subscribers of Pacific Internet who had downloaded some of

its anime (cartoon) programmes illegally. It relied on a Subordinate Courts practice direction (namely,

ePractice Direction 4 of 2005) which provides:

1. Pursuant to Singapore‘s obligations under Article 16.9.22(b)(xi) of the United States-

Singapore Free Trade Agreement, applications made under Order 24, rule 6(1) or Order 26(A),

rule 1(1) against network service providers for information relating to the identity of a user who

is alleged to have:

(a) infringed copyright in relation to an electronic copy of material on, or accessible

through, the network service provider‘s primary network; or

(b) made unauthorised use of a performance in relation to an electronic recording of

material on, or accessible through, the network service provider‘s primary network

will, if made in the proper form, be fixed for hearing within 5 days of the date of filing of the

application.

2. This Practice Direction puts into effect the above procedure by introducing a new

Paragraph 23A and by making the necessary updates to Appendix D.

17.63 The new para 23A states:

This paragraph applies to an application made under Order 24, Rule 6(1) or Order 26A, Rule (1)

of the Rules of Court—

(a) by or on behalf of an owner or exclusive licensee of copyright material against a

network service provider for information relating to the identity of a user of the network

service provider‘s primary network who is alleged to have infringed the copyright in the

material in relation to an electronic copy of the material on, or accessible through, the

network service provider‘s primary network;

…

[emphasis added]

15

17.64 The plaintiff placed heavy reliance on the phrase ―on behalf of‖, stating that it supported its

position that, as an authorised agent of the copyright owners of anime programmes, it could make the

application for pre-action discovery in its own name and that the application need not be in the names

of the copyright owners or of the exclusive licensees. The plaintiff stressed that the practice direction

was issued to comply with Singapore‘s obligation under Art 16.9.22(b)(xi) of the United States-

Singapore Free Trade Agreement (dated 6 May 2003). That provision states that:

Each party shall establish an administrative or judicial procedure enabling copyright owners

who have given effective notification of claimed infringement to obtain expeditiously from a

service provider information in its possession identifying the alleged infringer.

17.65 The court, however, opined that the provision did not assist the plaintiff as the provision did

not indicate that Singapore must allow an authorised agent of a copyright owner to make an

application to obtain information from a service provider. The focus of the provision was the

establishment of a procedure to enable copyright owners to obtain the information expeditiously. It

held that the provision did not create additional rights and that a practice direction did not have the

force of law.

17.66 The issue whether and in what circumstances a mere licensee could sue was a vexed one

prior to the current Copyright Act. Prior to the passing of its precursor (namely, the 1911 Copyright

Act), it was suggested that a licensee could sue, but only if he joined the copyright owner in the suit:

see Macmillan & Co v Dent[1907] 1 Ch 107. The 1911 Act provided that a copyright owner could

grant ―any interest in the right by licence‖, and it was suggested, though not finally decided, in British

Actors Film Co v Glover [1915] 1 KB 299 at 309 that this provision conferred upon a licensee a right

to sue in his own name. The current Act expressly confers on the exclusive licensee the right to

commence and maintain a copyright infringement action in his own name without joining the

copyright owner, unless the court orders otherwise. However, it is silent as to other licensees and

persons, which would suggest a deliberate legislative intent not to give the other licensees and persons

any right of action under the Copyright Act (Cap 63, 2006 Rev Ed). This was fatal to the plaintiff

in Odex Pte Ltd v Pacific Internet Ltd [2008] 3 SLR 18, as it sought the court‘s assistance in its

capacity as an authorised agent of the copyright owners and not even as a licensee. The other effect of

the case is that the legislative intent is not affected by any international obligations under the United

States–Singapore Free Trade Agreement and that the right of action includes any application for pre-

action discovery, not only a claim for substantive relief.

16

Intellectual Property Law Annual Review of Singapore Cases (8, 2007)

Information

Title: Intellectual Property Law

Textbook Title: Singapore Academy of Law Annual Review

Chapter No: 17

Author | Editor: Ng-Loy Wee Loon, Tan Tee Jim

Up

Textbooks

Trade marks and passing off

17.1 There were three trade mark judgments delivered in 2007 (in chronological order):

(a) Future Enterprises Pte Ltd v McDonald‟s Corp [2007] 2 SLR 845 (CA). These were trade

mark opposition proceedings. The main focus of the dispute was on s 8 of the Trade Marks Act

(Cap 332, 2005 Rev Ed) which sets out what are sometimes called ―conflicts with earlier marks

and rights‖. This is where one party (the opponent) opposes the trade mark application filed by

another party (the applicant) on the basis that registration of the trade mark in the name of the

trade mark application would conflict with an earlier trade mark or right belonging to the

opponent.

(b) Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR 1073 (HC). These

were proceedings to expunge a trade mark from the register. The validity of the initial

registration was challenged on the grounds that the registration was made in bad faith and/or

was obtained by fraud or misrepresentation, and here, the focus of the dispute was on ss 7(6)

and 23(4) of the Trade Marks Act. Alternatively, even if the initial registration was valid, it was

alleged that the registration ought to be revoked on the grounds of ―non-use‖ of the trade mark

set out in s 22(1) of the Trade Marks Act.

(c) Amanresorts Ltd v Novelty Pte Ltd [2007] SGHC 201. These were proceedings to stop the

use of a trade mark by a party on the basis that such use constituted passing off at common law,

and infringement of a statutory right conferred by s 55 of the Trade Marks Act on proprietors of

well-known trade marks.

17.2 The issues explored in these trade mark cases varied. But there was one issue that appeared in

all three cases, namely, the principle of territoriality in trade mark law. This common issue will be

explored first, before attention is turned to some of the other issues raised in the cases.

The principle of territoriality

17.3 At the international level, the territorial nature of trade mark rights is embodied in Art 6(4) of

the Paris Convention for the Protection of Industrial Property 1967 (the international treaty on trade

marks): ―A mark duly registered in a country of the [Paris] Union shall be regarded as independent of

marks registered in the other countries of the Union‖. Registration of a trade mark in one country

confers on its proprietor a certain monopoly in that country only. So, for example, the UK Trade

Marks Act 1994 specifies in s 9 that the proprietor of a registered trade mark has exclusive rights in

the trade mark which are infringed by use of the trade mark in the United Kingdom without his

consent. (In the US, though, they have, in a rather controversial case, applied American trade mark

17

law extra-territorially to deal with a US citizen for conducting infringing activities in Mexico:

see Steele v Bulova Watch Co 344 US 280 (1952).)

17.4 In Singapore, the territoriality principle is manifested within the Trade Marks Act (Cap 332,

2005 Rev Ed) in, for example, s 22 on revocation of registered trade marks which have not been

used in Singapore for the relevant five-year period. Thus, the registration in Singapore cannot be

saved by the fact that the registered proprietor has used the mark in other countries. Proof of user

outside of Singapore is irrelevant for the purposes of revocation for non-use.

17.5 In the common law action for passing off – the branch of the law which could be said to

protect the ―common law rights‖ of a trader to an unregistered trade mark – the territoriality principle

manifests itself in the notion that goodwill, the first element in the action, is ―local in nature and

divisible‖ (Star Industrial Co Ltd v Yap Kwee Kor [1975-1977] SLR 20 (―Star Industrial‖) at 31,

a Privy Council decision on appeal from Singapore). Thus, if a trade mark proprietor conducts

business in several countries, a separate goodwill attaches to his business in each of these countries. If

the trade mark proprietor is suing for passing off in Singapore, he must prove that he has a business in

Singapore to which goodwill attaches. Proof of his business conducted in other countries, and his user

of the trade mark in these other countries, is irrelevant for the purposes of satisfying the first element

in an action for passing off in Singapore. This requirement for goodwill to be hinged onto a

business/user of the trade mark within jurisdiction has been described as the ―hard line‖ approach

(see, eg, Mechanical Handling Engineering (S) Pte Ltd v Material Handling Engineering Pte

Ltd [1993] 2 SLR 205 at 210). TheStar Industrial case and the ―hard line‖ approach, was endorsed by

our Court of Appeal in 1998 in the Milleniacase (CDL Hotels International Ltd v Pontiac Marina Pte

Ltd [1998] 2 SLR 550 at [50]). While adopting the ―hard line‖ approach in this case, the Court of

Appeal at the same time took a liberal interpretation as to how this approach may be satisfied. It held

that it was not necessary for the trader to show that, as at the relevant date, he had commenced

business in Singapore. Pre-trading activities – in the case, it was extensive pre-launch publicity –

could also generate goodwill.

17.6 It is precisely because Singapore adopts the ―hard line‖ approach in the common law scenario

that ss 55(1)–55(2) was added into the Trade Marks Act (Cap 332, 2005 Rev Ed) when it was first

enacted. The original version of ss 55(1)–55(2) was amended in 2004. The current provisions read as

follows:

(1) A well known trade mark shall be entitled to protection under this section —

(a) whether or not the trade mark has been registered in Singapore, or an application for

the registration of the trade mark has been made to the Registrar; and

(b) whether or not the proprietor of the trade mark carries on business, or has any

goodwill, in Singapore.

(2) Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be

entitled to restrain by injunction the use in Singapore, in the course of trade and without the

proprietor‘s consent, of any trade mark which, or an essential part of which, is identical with or

similar to the proprietor‘s trade mark, in relation to identical or similar goods or services, where

the use is likely to cause confusion.

17.7 The substantive right in s 55(2) is, in many ways, similar to the protection available in the

action for passing off. The significance of this right lies in the definition of the type of trade marks

entitled to the protection that is found in s 55(1), in particular, the inclusion of proprietors of

unregistered well known trade marks who do not carry on business or have any goodwill in Singapore.

Traders in this position, whilst they do not have a remedy in the law of passing off, are compensated

by having this statutory right in s 55(2). (Note that s 55(3) provides substantive rights of other nature.

These will be discussed later.)

18

17.8 It is against this background that we assess what impact the three trade mark cases under

review have on the issue of territoriality.

17.9 In Future Enterprises Pte Ltd v McDonald‟s Corp, the fast food chain giant McDonald‘s,

relied on its earlier registered mark ―McCafé‖ for coffee and related products, to oppose the

application filed by a local company (―Future Enterprises‖) to register the mark ―MacCoffee‖ in

respect of instant coffee mixes. McDonald‘s argued that the two marks were similar, the parties‘

goods were similar if not identical, and there existed a likelihood of confusion amongst the public.

Hence, registration of the ―MacCoffee‖ mark would contravene s 8(2)(b) of the Trade Marks Act. The

High Court‘s findings were in favour of McDonald‘s, and Future Enterprises‘ trade mark application

was rejected. The High Court‘s decision (which was reviewed last year) was upheld by the Court of

Appeal.

17.10 Before the appellate court, Future Enterprises then launched a novel argument: it had a

―common law right‖ to the ―MacCoffee‖ mark which restricted and rendered inoperative

MacDonald‘s right to oppose the registration of the ―MacCoffee‖ mark, even though it was

confusingly similar to ―McCafé‖, an earlier registered trade mark. Before assessing the merits of this

novel argument, the Court of Appeal had to decide a preliminary point, namely, whether Future

Enterprises had in fact acquired a ―common law right‖ to the ―MacCoffee‖ mark.

17.11 Future Enterprises claimed that this ―common law right‖ had been acquired in two ways: first,

by its use in Singapore and secondly, by its ―international reputation‖ stemming from its sales in

Russia and other East European countries since 1995. On the first ground, the Court of Appeal

reviewed the advertisements tendered by Future Enterprises as evidence to prove user of the

―MacCoffee‖ mark in Singapore, and noted that the advertisements related primarily to marketing

efforts in Russia and other East European countries (and not in Singapore) and even these

advertisements abroad highlighted a different mark, namely, a composite mark comprising the word

―MacCoffee‖ and a prominent eagle device. Future Enterprises was really selling its coffee products

under this composite mark rather than the word mark ―MacCoffee‖. (Future Enterprises had

previously been involved in litigation over the use of this composite mark: see Future Enterprises Pte

Ltd v Tong Seng Produce Pte Ltd [1998] 1 SLR 1012; McDonald‟s Corp v Future Enterprises Pte

Ltd [2005] 1 SLR 177.) The Court of Appeal concluded that there was insufficient use of the

―MacCoffee‖ mark in Singapore so as to entitle Future Enterprises to protection on the basis of prior

use.

17.12 It is the second argument made by Future Enterprises that is interesting. By relying on its

―international reputation‖ arising from its sales of ―MacCoffee‖ products in Russia, etc, as the basis

for its ―common law right‖ to the mark in Singapore, it was in effect challenging the ―hard line‖

approach. This is what this argument amounts to, even though no reference was made to the ―hard line‖

approach or to the Privy Council‘s 1965 decision inStar Industrial Co Ltd v Yap Kwee Kor [1975-

1977] SLR 20 or to our Court of Appeal‘s 1998 decision inCDL Hotels International Ltd v Pontiac

Marina Pte Ltd [1998] 2 SLR 550. Instead, Future Enterprises referred to a more recent decision of

the Privy Council on appeal from Mauritius, Sprints Ltd v Comptroller of Customs (Mauritius) [2000]

FSR 814, and in particular to the following passage of the judgment (at 822):

[It] is essentially the reputation of the mark which will give rise to possible confusion and in

light of the growth in international commerce and communication it may now be possible in the

case of an internationally established trade mark to proceed upon evidence of its notoriety in a

country even without any actual user of the mark there.

17.13 This claim in Sprints Ltd v Comptroller of Customs (Mauritius) [2000] FSR 814 was not for

passing off. It concerned an opposition to the registration of a trade mark on the basis that such

registration would ―by reason of its being calculated to deceive or otherwise, be disentitled to the

protection in a court‖, and contravene a provision in the trade marks statute of Mauritius (Singapore

used to have this same ground for refusing registration: see s 15(1) of the repealed Trade Marks Act

19

1939). The opinion of the Privy Council cited above was given by way of obiter, since the court did

find that there was user of the mark in question within the jurisdiction. Nonetheless, this obiter given

in a trade mark registration case is significant in that it may be a signal that the Privy Council, if it has

to review the ―hard line‖ approach in passing off which it adopted in 1965 in Star Industrial Co Ltd v

Yap Kwee Kor [1975-1977] SLR 20, may find that this approach has become outdated in the

―globalised‖ world of today.

17.14 The response of our Court of Appeal to the Privy Council‘s obiter was as follows (at [14]):

We do not disagree with this observation in relation to internationally established marks. …

[W]e note that the current legal requirements of ‗actual use‘ may need to be re-conceptualised

in the wake of the Internet and the corresponding ubiquitous nature of online advertisements. It

is not difficult to envision a future trade marks regime which provides for and protects the

inevitable increase in the use of trade marks online as opposed to offline. The concept of the

territoriality of a trade mark is likely to be affected by its ubiquitous use online.

17.15 This suggests that, like the Privy Council in Sprints Ltd v Comptroller of Customs

(Mauritius)[2000] FSR 814, the Court of Appeal may be prepared to re-look the ―hard line‖ approach

in passing off. However, the factual matrix before the Court of Appeal did not allow it to embark on

this journey. The court found that Future Enterprises‘ documentary evidence related to use of the

composite mark and not the word mark ―MacCoffee‖. In making this finding, what the Court of

Appeal was saying is this: If (at all) Future Enterprises had an ―international reputation‖, it was in

relation to the composite mark and not in relation to the mark which was the subject-matter of the

dispute. In other words, Future Enterprises had not even succeeded in getting past the ―first base‖ to

show that the public in Singapore knew of its ―MacCoffee‖ products. This was not a case where the

trader had reputation but no business within the jurisdiction. The issue of whether the trade mark law

of Singapore should protect a trader‘s reputation per se was not before the Court of Appeal.

17.16 If the appropriate factual matrix presents itself before the Court of Appeal, should it decide that

the ―hard line‖ approach be abandoned? Indeed, in countries such as Australia (ConAgra Inc v

McCain Foods (Aust) Pty Ltd (1992)106 ALR 465) and Canada (Orkin Exterminating Co v Pestco Co

of Canada (1985) 19 DLR 90), the courts there have opted for a ―soft line‖ approach, allowing their

law of passing off to assist the plaintiff-trader who may not have business within the jurisdiction but

whose reputation has spread to that jurisdiction. Traders who find themselves in this position would

point to these ―soft line‖ cases, and argue that Singapore should follow suit, that the ―hard line‖

approach is not only passé in a ―border-less‖ business world, it is unfair for one trader to take a free

ride on the reputation built up by another trader. This is unfair competition, in short. They might argue

that CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 2 SLR 550, which endorsed the

―hard line‖ approach, was decided ten years ago (in 1998) and the situation since then has changed

such that adherence by the Court of Appeal to its prior decision ―would cause injustice in a particular

case or constrain the development of the law in conformity with the circumstances of Singapore‖ (see

the Practice Directions (Judicial Precedent) dated 11 July 1994).

17.17 There is, however, the other side of the story. The traditional ―hard line‖ approach is not

completely without justification: it has been argued that a country‘s trade mark law should not allow a

trader to stifle competition if he has not entered the market and contributed to the local economy (see

further Ng-Loy, ―Passing Off in Singapore: Interpreting ‗Goodwill‘ for the New Millennium‖ [2001]

JBL 74 at 82). Further, the ―hard line‖ approach as adopted in CDL Hotels International Ltd v Pontiac

Marina Pte Ltd [1998] 2 SLR 550 (―theMillenia case‖) is not as harsh or unfair as it seems. As

pointed out earlier, the Court of Appeal in the Milleniacase had already taken a step towards

―softening‖ the ―hard line‖ approach by recognising that it was not necessary for the trader-plaintiff to

have started trading in Singapore, and that his pre-trading activities in Singapore could generate

goodwill. (In fact, as we will see later in the review of the third trade mark case,Amanresorts Ltd v

Novelty Pte Ltd [2007] SGHC 201, the ―hard line‖ approach in Singapore is really not so stringent.)

Finally, the trader who has no goodwill at all – that is, no business or pre-trading activities – in

20

Singapore but whose mark qualifies as a well-known trade mark is not without remedy: he may still

turn to s 55 which entitles him to an injunction to restrain unauthorised use of his trade mark.

17.18 As for the argument that the ten-year-old rule in CDL Hotels International Ltd v Pontiac

Marina Pte Ltd [1998] 2 SLR 550 is outdated, the question to be asked should be this: have

circumstances in Singapore changed so much since 1998 as to warrant a departure from the ―hard line‖

approach? Globalisation – the increase in people travelling abroad and businesses going ―border-less‖

– is not a recent phenomenon. At that time, the statutory remedy conferred by s 55 was not even

available to the plaintiff in the Millenia case, as the Trade Marks Act (Cap 332, 2005 Rev Ed) came

into force only on 15 February 1999. In spite of all this, the Court of Appeal when deciding

the Millenia case in 1998 saw it fit to continue with the ―hard line‖ approach.

17.19 The other aspect of the Court of Appeal‘s decision in Future Enterprises Pte Ltd v McDonald‟s

Corp[2007] 2 SLR 845 was its view that ―the current legal requirements of ‗actual use‘ may need to

be re-conceptualised in the wake of the Internet and the corresponding ubiquitous nature of online

advertisements‖. The concern of the Court of Appeal was this: given that trade mark rights are

territorial in nature and hence it is use of the trade mark within jurisdiction which is relevant, does it

mean that when a trader advertises his wares via the Internet and his trade mark appears on the

website, he may be said to have used the trade mark in Singapore? This issue arose in the second trade

mark case under review, Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR 1073.

This case concerned, inter alia, an application to revoke a registered trade mark on the basis that there

had been no genuine use of the trade mark in Singapore for a period of five years (see s 22(1) of the

Trade Marks Act). The registered proprietor, a foreign company located outside of Singapore, had a

website on which its registered trade mark appeared. Before we look at how the High Court resolved

this issue, it should be noted that this issue had arisen earlier in another Singapore IP case – a patent

infringement case.

17.20 In Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd [2005] 3 SLR 389,

the plaintiff who had obtained patent registration for its invention in Singapore sued a party, located

outside of Singapore, for offering for sale the patented invention on an internet website. For this party

to be liable for patent infringement under Singapore‘s Patents Act (Cap 221, 2005 Rev Ed), its offer

for sale of the patented invention must have occurred in Singapore. (Patent rights, just like trade mark

rights, are territorial in nature.) According to the late Lai Kew Chai J, an offer for sale of the

invention via a website constituted an offer in Singapore only if a reasonable internet user (surfer)

looking at the website would understand that an offer of the patented invention was being made in

Singapore. In adopting this approach, Lai J referred with approval to Euromarket Designs Inc v

Peters [2001] FSR 20, an English trade mark case where Jacob J (as he then was) held that the

appearance of a trade mark on a website that could be accessed in the UK did not necessarily mean

that the trade mark was used in the UK. He said that ―there must be an inquiry as to what the purpose

and effect of the advertisement in question is‖ (at [16]). The views of Jacob J are even clearer in

another trade mark case, 800-Flowers Trade Mark [2000] FSR 697. This is the relevant passage of his

judgment (at 705):

[The trade mark proprietor argued that] any use of a trade mark on any website, wherever the

owner of the site was, was potentially a trade mark infringement anywhere in the world because

website use is in an omnipresent cyberspace; that placing a trade mark on a website was

‗putting a tentacle‘ into the computer user‘s premises. I questioned this with an example:

a fishmonger in Bootle who put his wares and prices on his own website, for instance, for local

delivery can hardly be said to be trying to sell the fish to the whole world or even the whole

country. And if any web surfer in some other country happens upon that website he will simply

say ‗this is not for me‘ and move on. For trade mark laws to intrude where a website owner is

not intending to address the world but only a local clientele and where anyone seeing the site

would so understand him would be absurd. So I think that the mere fact that websites can be

accessed anywhere in the world does not mean, for trade mark purposes, that the law should

regard them as being used everywhere in the world. It all depends upon the circumstances,

21

particularly the intention of the website owner and what the reader will understand if he

accesses the site.

17.21 The English Court of Appeal affirmed Jacob J‘s decision (see [2002] FSR 12). But Buxton LJ

proposed another approach to this issue. According to him, it was not enough for a trade mark

proprietor to put up his trade mark on a website, from a location outside the jurisdiction in question,

and simply wait in the hope that someone from that jurisdiction would download it and thereby create

use of the trade mark in that jurisdiction. What was required was proof that the trade mark proprietor

had taken additional ―active steps‖, other than the act of putting the trade mark on the Internet, to

market the trade-marked goods in that jurisdiction.

17.22 In Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR 1073, it was

Buxton LJ‘s approach which V K Rajah J sitting in the High Court endorsed and applied. His focus

was thus on whether the registered proprietor had taken ―active steps‖, other than putting up the

website, to market his trade-marked goods in Singapore. To prove user of the trade mark in Singapore

during the relevant five-year period, the proprietor relied on (a) e-mail enquiries it received from three

Singapore companies after seeing its website, and (b) a fax sent by the proprietor to a Singapore

company offering sale of its trademarked goods and a meeting with Singapore-based business to

discuss how to promote its trademarked goods in Singapore. With regard to (a), the court was

reluctant to regard the use of the trade mark in the email enquiries as sufficient and genuine use of the

trade mark in Singapore because this was exactly what Buxton LJ had warned against, that is, the

proprietor had merely put up a website and was waiting for someone in Singapore to make an enquiry.

However, the court was satisfied that the activities in (b) constituted the necessary ―active steps‖ from

the proprietor. The registered trade mark was saved from revocation on the basis of (b).

17.23 It would appear that V K Rajah JA was not referred to Lai J‘s approach taken in Trek

Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd [2005] 3 SLR 389 (―Trek

Technology‖) (derived from Jacob J‘s approach in 800-Flowers Trade Mark [2000] FSR 697).

Although Trek Technology was a patent case, the issue faced by Lai J on the website point was really

the same as the one before V K Rajah JA. It would have been better if we have the same approach in

the patents scene and in the trade mark scene. Conceptually, there is a difference between Buxton LJ‘s

approach and Lai J/Jacob J‘s approach: the former focuses the inquiry primarily on the conduct of the

trade mark proprietor (―Has he taken active steps to market his goods in Singapore?‖) whereas the

latter focuses the inquiry on the intention of the trade mark proprietor in setting up the website and the

understanding of the Internet surfer when he accesses the website (―Is the trade mark proprietor using

the Internet to target at, inter alia, the Singapore market? Is this website aimed at the surfer located in

Singapore as a potential customer?‖). This does not, however, mean that if V K Rajah JA had adopted

the Lai J/Jacob J‘s approach, he would have come to a different conclusion: with regard to the

proprietor‘s case in (a), the fact that Singapore companies sent email enquiries to the trade mark

proprietor could indicate that they thought, upon seeing the website, that the proprietor‘s online

advertisement was meant for people in, inter alia, Singapore. This would have satisfied

Lai J/Jacob J‘s approach.

17.24 In the third case under review, Amanresorts Ltd v Novelty Pte Ltd [2007] SGHC

201 (―Amanusa‖), the territoriality issue concerned the ―hard line‖ approach in passing off. The

claims of the plaintiffs in this case were for passing off and for infringement of s 55. The plaintiffs

owned and operated exclusive high-end resorts, for example, the Amanpuri resort in Phuket, Thailand

(since 1988) and the Amanusa in Bali, Indonesia (since 1992). In early 2006, the defendant,

a property developer, started marketing one of its condominium projects under the name Amanusa.

On the claim for passing off, the plaintiffs relied on the following to prove the first element of

goodwill: its ―International Corporate Office‖ and an ―International Reservations Office‖ in Singapore;

publicity to the public in Singapore by, inter alia, making brochures on their resorts available at their

offices in Singapore; the promotion of the resort on their websites which (unlike the Weir

Warman case) were hosted in Singapore; evidence of some 1382 Singaporeans having visited the

22

Amanusa resort between 1995 and 2005, a number which the plaintiffs argued was impressive given

that the resort targeted at high net worth individuals.

17.25 The High Court trial judge, Tay Yong Kwong J, found that the plaintiffs did have goodwill in

Singapore before 2006. Goodwill must have been acquired as at the date of the defendant‘s act

complained of, that is, in early 2006. The learned judge said (at [50]):

The plaintiffs‘ brand names Aman and Amanusa did have goodwill in Singapore (before 2006)

as evidenced by their nearly two decades of history, their huge sales revenue worldwide (more

than 35% of which is attributable to its Singapore office) and their substantial promotional and

marketing expenditure. The fact that there is no Aman resort in Singapore is immaterial

(see Sheraton Corp of America v Sheraton Motels Ltd [1964] RPC 202).

17.26 Tay J also referred to CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 2 SLR

550(―the Millenia case‖) (at [52]):

In the Millenia case, a hotel which was in the process of construction succeeded in its claim

that it had goodwill in its name. In the instant case, the first Aman resort has been in operation

since 1988, the Amanusa has been in existence since 1992 and the plaintiffs‘ International

Reservations Office has been operating here since 2001.

17.27 Although Tay J‘s discussion of the first element of goodwill did not expressly mention the

―hard line‖ approach, it is submitted that the learned judge had in mind the need for the plaintiffs to

show that they had ―business within jurisdiction‖. Sheraton Corp of America v Sheraton Motels

Ltd [1964] RPC 202, which the judge referred to (at para 17.25 above), is an English decision which

falls within the ―hard line‖ line of cases in the UK (see Ng Siew Kuan, ―Foreign Traders and the Law

of Passing Off: The Requirement of Goodwill within Jurisdiction‖ [1991] Sing JLS 372 at 387). In the

case, the plaintiff had no hotels in England at the material time, but it had a booking office in London

and there was evidence that bookings for its hotels abroad were frequently made through this office as

well as through travel agents in the UK. The court granted an interlocutory injunction to restrain the

defendant from using the name ―Sheraton Motels‖ in England.

17.28 In finding that the presence of the plaintiffs‘ International Reservations Office in Singapore,

which accepted bookings for the Amanusa resort, was sufficient to generate goodwill for the plaintiff

in Singapore, Tay J‘s judgment is very much in line with the liberal approach to the concept of

―business‖ within jurisdiction that was first taken by the Court of Appeal in the Millenia case. If pre-

trading activities can generate goodwill, why not the activities undertaken by a booking office? The

presence of the booking office in Singapore to promote the plaintiffs‘ Amanusa resort and to take

bookings from the public here indicates that the plaintiffs were very interested in the customers they

could get from Singapore. This was not a case where the court should be concerned that the plaintiff-

trader was trying to stifle competition in a market which he had no interest in exploiting. It has been

mentioned earlier that the ―hard line‖ approach in Singapore is not as harsh as it seems, and

the Amanusa case is an example of how our courts when applying this approach do take into account

the practices in the commercial world and the ways businesses are actually conducted.

17.29 There is one aspect of Tay J‘s judgment which perhaps requires some clarification. The learned

judge, in finding that the plaintiffs had goodwill in Singapore, took into account their ―huge sales

revenue worldwide (more than 35% of which is attributable to its Singapore office)‖. The plaintiffs‘

evidence was that worldwide sales of their goods and services ranged from US$39m in 1995 to

around US$86m in 2006. No matter how impressive the plaintiffs‘ worldwide sales may be, it is

ultimately the portion of the sales which could be attributed to the business in Singapore that is

relevant for the purposes of determining goodwill. This would be the 35% of the sales coming through

from the booking office in Singapore.

23

17.30 The rest of this review will look at each of the three cases in greater detail, to discuss the

important issues raised in each case.

Sections 8(7)(a) and 28(2) of the Trade Marks Act

17.31 To recap, Future Enterprises Pte Ltd v McDonald‟s Corp [2007] 2 SLR 845 involved

opposition proceedings initiated by McDonald‘s. The High Court, as well as the Court of Appeal,

found that the ―McCafé‖ mark and the ―MacCoffee‖ mark were confusingly similar and therefore

McDonald‘s opposition based on s 8(2)(b) succeeded. The whole discussion of Future Enterprises‘

alleged ―common law right‖ to the ―MacCoffee‖ mark was a preliminary point to Future Enterprises‘

case for registration, namely, a trader with a ―common law right‖ to an unregistered trade mark is

entitled to register this trade mark, and this entitlement is recognised in ss 8(7)(a) and 28(2) of the

Trade Marks Act and overrides the right of an earlier registered trade mark.

17.32 Once the Court of Appeal had reached the conclusion that Future Enterprises had no ―common

law right‖ to talk about, Future Enterprises‘ whole case for registration fell. However, because of the

novelty of Future Enterprises‘ arguments, the Court of Appeal went on to consider whether this

―common law right‖ to an unregistered mark could override the rights of the proprietor of an earlier

registered mark, as suggested by Future Enterprises.

17.33 Section 8(7)(a) provides that a trade mark shall not be registered if its use in Singapore is liable

to be prevented ―by virtue of any rule of law (in particular, the law of passing off) protecting an

unregistered mark or other sign used in the course of trade‖. This subsection, together with ss 8(1)–

8(4) and 8(7)(b), set out the grounds on ―conflicts with earlier marks or rights‖. They are traditionally

raised by the Registrar of Trade Marks as a basis for rejecting a trade mark application, and/or by the

party opposing the registration of a trade mark in the name of the applicant. Therefore, it was very

novel that Future Enterprises, the trade mark applicant in this case, should rely on s 8(7)(a). In

essence, its case was that s 8(7)(a) is not just a ground for refusing to register a trade mark, it could

also confer a right on the trade mark applicant to registering a trade mark which conflicted with an

earlier registered trade mark.

17.34 Other than s 8(7)(a), Future Enterprises also relied on s 28(2). This sets out what is sometimes

referred to as the ―prior use‖ defence to an infringement action. For example, a person who has been

using an unregistered trade mark before the date of registration of the registered trade mark is

permitted to continue using this unregistered trade mark. Again, the essence of Future Enterprises‘

case was that this defence provision did not only exonerate the ―prior user‖, it could also confer a

positive right on the ―prior user‖ to secure registration of its unregistered mark.

17.35 The Court of Appeal noted the ―supposed novelty‖ of these arguments (at [16]), but found that

they had no merit in the context of the legislative framework of the Trade Marks Act. The court said

(at [22]):

In determining the scope of the rights conferred by the system of registration of trade marks,

paramount consideration must be given to the legislative framework and the clear and

unambiguous wording of its provisions. The Act provides for several distinct types of

applications (eg, opposition, infringement, invalidation, revocation) for good reason.

Construing the provisions to create a ‗defence‘ for unregistered marks on the basis of prior use

in opposition proceedings initiated by proprietors of registered marks would undermine the

rights conferred by registration. This would be detrimental to conceptual clarity and militate

against the statutory objective of transparency and certainty sought to be achieved by a register

of trade marks.

17.36 Underlying the Court of Appeal‘s decision was the need to avoid having two similar marks for

the same kind of goods appearing on the register, as this ―would be the very antithesis of the rationale

for having a system of registered marks‖ (at [26]).

24

17.37 Increasingly, our courts are going back to the ―basics‖ when they analyse trade mark cases. For

example, in Rothmans of Pall Mall Ltd v Maycolson International Ltd [2006] 2 SLR 551, where Lai

Siu Chiu J was concerned about the ―bad faith‖ provision in the Trade Marks Act (see further below),

the learned judge spoke of the need to ―uphold the sanctity of the trade marks register and its system

of registration‖ (at [19]). Of the three trade mark cases under review this year, the Court of Appeal in

the Future Enterprises Pte Ltd v McDonald‟s Corp [2007] 2 SLR 845 case was not the only court

which checked its conclusion against the rationale of the registration system. V K Rajah JA in Weir

Warman Ltd v Research & Development Pty Ltd[2007] 2 SLR 1073 also set out at length the broad

objectives and functions of the trade mark registration system, starting with the origins of the

protection of unregistered trade marks in the 18th century (to the tort of deceit), and tracing the reasons

for the establishment of the first register in the UK in 1875. V K Rajah JA summarised the functions

of the register in the following paragraph (at [41]):

It is plain that the trade mark register is intended to be a comprehensive and accurate record of

trade marks currently in use. As such, it is crucial to maintain the accuracy of the register and to

ensure that undeserving and invalid trade marks are removed from the register without undue

delay and complication. In addition,the register is meant to assure and endorse the function of

registered trade marks as badges of origin … so as to protect the public against

deception. Hence marks that are misleading or likely to cause confusion or no longer serve their

function should not be accepted or allowed to remain on the register, as the case may be.

[emphasis added]

17.38 The italicised words in this passage of his judgment are especially appropriate in Future

Enterprises Pte Ltd v McDonald‟s Corp [2007] 2 SLR 845. This is an expansion of what the Court of

Appeal meant when it said that having two confusingly similar marks on the register was ―antithesis‖

to the function of the registration system.

“Genuine use” in revocation proceedings

17.39 We have looked at how V K Rajah JA in Weir Warman Ltd v Research & Development Pty

Ltd[2007] 2 SLR 1073 dealt with the concept of use of a trade mark in the internet context for the

purposes of determining whether there has been use of the registered mark in Singapore for the

purposes of revocation proceedings initiated under s 22(1)(a) for non-use for five years. In

V K Rajah JA‘s judgment, the proprietor of the registered trade mark was referred to as the

―defendant‖ and the applicant for revocation was referred to as ―the plaintiff‖. Henceforth, in this

review, these terms shall be used to refer to these parties.

17.40 V K Rajah JA held that there was use of the registered mark in Singapore because, other than

the use of the mark on the defendant‘s website, the defendant had taken ―active steps‖ to market the

trade-marked goods in Singapore by, inter alia, meeting with a Singapore-based business to discuss

how to promote the goods. This Singapore-based company was a potential agent or dealer who would

facilitate the supply of the goods to other parties in Singapore. No sales had been concluded during

the relevant five-year period.

17.41 To successfully fend off an application for revocation on the basis of non-use, it is not

sufficient that the use of the registered mark occur in Singapore. Such use must also qualify as

―genuine use‖. On this, V K Rajah JA gave the following guidelines. Firstly, ―genuine use‖ can be

established even if there is no evidence of actual sales being made. Therefore, the fact that the

defendant in this case had not concluded any sales was not in itself fatal.

17.42 Secondly, ―genuine use‖ does not require communication of the mark to the ultimate

consumers of the goods. Once the mark is communicated to a third party in such a way as to be

consistent with the essential function of a trade mark, that is, as a badge of origin, that communication

would constitute ―genuine use‖. In this case, the use of the registered mark during the meeting with

25

the Singapore-based company, the potential agent, was use of the mark as a badge of origin. It did not

matter that there had been no communication to the actual buyers of the goods.

Sections 7(6) (bad faith) and 23(4) (fraud and misrepresentation)

17.43 In Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR 1073, apart from

revocation proceedings, the plaintiff had also filed invalidation proceedings to challenge the validity

of the initial registration. The plaintiff argued that the initial registration was unlawful because (a) it

was made in bad faith, and hence, contravened s 7(6) read with s 23(1) of the Trade Marks Act, and (b)

it was obtained by misrepresentation and hence, contrary to s 23(4).

17.44 On what can amount to ―bad faith‖, V K Rajah JA gave the following examples (at [42]):

(a) the applicant has no bona fide intention to use the trade mark at all, but wishes to prevent a

competitor from using the, or a similar, mark;

(b) the applicant has no present or fixed intention to use the mark, but wishes to stockpile the

mark for use at some indeterminate time in the future; and

(c) the applicant becomes aware that someone else plans to use the mark, and files a pre-

emptive application with a view to selling it.

17.45 In these instances, the objection was that the applicant was ―hijacking a mark or spoiling a

competitor‘s plans‖ (at [42]). This is not the first time the term ―hijacking‖ was used by our judges to

describe the scope of the ―bad faith‖ provision in s 7(6). In Nautical Concept Pte Ltd v Mark Richard

Jeffery [2007] 1 SLR 1071, the applicant of the mark JWEST for footwear, was previously the local

agent of an English company sellingJEFFERY-WEST and JW ladies‘ shoes. Tan Lee Meng J found

that the applicant was attempting to ―hijack‖ the English company‘s marks (at [24]) and held the

application was filed in bad faith.

17.46 In Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR 1073, the allegation of

bad faith was founded on these facts. The plaintiff and the defendant had an agreement to ―divide up‖

the territorial markets between them for the purpose of making and selling WARMAN goods. The

plaintiff had the exclusive right to manufacture WARMAN goods in Singapore, but both the plaintiff

and the defendant were free to sellWARMAN goods in Singapore. (The WARMAN goods sold by the

defendant were made in Africa.) The defendant took the position that under this agreement it had a

right to register the mark in Singapore, and exercising this right, the defendant registered the mark in

Singapore. The defendant knew that the plaintiff would object to this registration in Singapore; both

were already engaged in litigation in other countries where the defendant had registered the mark. The

plaintiff argued that, by registering the application in Singapore knowing about the plaintiff‘s

objection and without disclosing the existence of the overseas litigation to the Registrar of Trade

Marks, the defendant had acted in bad faith. The plaintiff relied on Rothmans of Pall Mall Ltd v

Maycolson International Ltd [2006] 2 SLR 551, where the trade mark applicant‘s principal was

involved with a third party in overseas litigation over the use of the trade mark in question. Lai Siu

Chiu J imposed on the trade mark applicant a duty to inquire into the bona fides of a trade mark, the

scope of which included a duty to disclose to the Registrar the existence of these overseas litigation.

She found that the applicant‘s non-disclosure in the case amounted to bad faith.

17.47 The facts before V K Rajah JA were different: he found that under the agreement, the plaintiff

and the defendant were equally entitled to apply to register the WARMAN mark in Singapore. The

defendant was merely exercising this contractual right when he filed the trade mark application in

Singapore. This being the case, the defendant could not be said to have acted in bad faith in not

disclosing the plaintiff‘s objection and the existence of the overseas litigation to the Registrar.

V K Rajah JA distinguished Rothmans of Pall Mall Ltd v Maycolson International Ltd [2006] 2 SLR

26

551 (―Maycolson‖) in the following manner (Weir Warman Ltd v Research & Development Pty

Ltd [2007] 2 SLR 1073 at [89]):

The duty to inquire in Maycolson only arose in relation to a registrant feigning ignorance of

facts that would have negated its rights to register. In contrast, where one does not deny

awareness of material facts surrounding the registration of a trade mark, and relies instead on

an independent right to register, as in this case, there should not be any basis for creating a

broad and general duty to disclose on the registrant.

17.48 The other ground for invalidation was s 23(4). This provides that the registration of a trade

mark may be declared invalid on the ground of fraud in the registration on the ground that the

registration was obtained by misrepresentation.

17.49 This is the first time that the question of fraud and misrepresentation under the Trade Marks

Act (Cap 332, 2005 Rev Ed) has been considered by our courts. But the concept of fraud did exist

under the repealed Trade Marks Act 1939 (in s 48(1)), and there are local cases which have explored

what ―fraud‖ meant under the old law. It is from these cases that V K Rajah JA derived the following

principle for the purposes of the current law (at [92]): ―A registration made under fraud or with

misrepresentation is one that succeeds only on the strength of an untrue statement made by the

registrant.‖

17.50 The facts relevant for the consideration of fraud and misrepresentation in the case were as

follows. As mentioned above, it was agreed between the plaintiff and the defendant that the plaintiff

had the exclusive right to manufacture WARMAN goods in Singapore, but both the plaintiff and the

defendant had equal rights to sellWARMAN goods in Singapore. The WARMAN goods sold by the

defendant in Singapore were made in Africa. When the defendant applied to register

the WARMAN mark in Singapore, it described itself in the application form as the ―manufacturer and

merchants‖ vis-à-vis its use of the WARMAN mark in Singapore. The plaintiff argued that, in

describing itself as the ―manufacturer‖, the defendant was representing to the Registrar of Trade

Marks and the public that it had the right to manufacture the goods in Singapore and that was untrue.

17.51 V K Rajah JA disagreed. There was no untrue statement when the defendant was in fact the

manufacturer of the WARMAN goods sold in Singapore, even if these goods were not made in

Singapore (but in Africa). Without any untrue statement, there can be no fraud or misrepresentation.

Protection for well-known trade marks under s 55

17.52 The plaintiffs in Amanresorts Ltd v Novelty Pte Ltd [2007] SGHC 201 succeeded in their claim

for passing off. Apart from the goodwill element (which is discussed above), Tay Yong Kwang J

found that the other two elements, namely, misrepresentation and damage, were also satisfied.

17.53 On misrepresentation, he held that the public in Singapore would think that the defendant‘s

Amanusa condominium was somehow related or connected to the plaintiffs‘ Amanusa resort (eg, by

way of a licence to use the name). It would seem that the learned judge was of the view that the

parties – one being in the business of operating hotels/resorts and the other in the business of

developing residential properties – were in direct competition with each other. This speculation is

derived from the fact that the judge took pains to emphasise that parties in a passing off action need

not be in ―common fields of enterprise‖ (at [58]), and it was possible in such circumstances for the

element of misrepresentation to be made out.

17.54 On damage, there were two specific types of damage which the plaintiffs were likely to suffer:

first, ―the intangible loss that may be occasioned by the insidious process of dilution such that the

famous name loses its uniqueness‖ (at [65]); and second, loss of licensing revenue if developers were

permitted to appropriate the Aman names for their residential property.

27

17.55 The plaintiffs had also sued for infringement under s 55. Sections 55(1)–55(2) have been

briefly mentioned earlier. This creates a statutory right which is very useful for proprietors of ―well

known trade marks‖, a right which is not dependent on registration of the trade mark or the presence

of business or goodwill in Singapore.

17.56 To qualify for protection under s 55, the plaintiffs must first show that their marks are well

known in Singapore. In this regard, ss 2(7)–2(9) are very important. Section 2(7) lays down a non-

exhaustive list of factors (eg, duration of use; whether the mark was registered) that the court must

take into account. Section 2(8) provides that where a trade mark is well-known to ―any relevant sector

of the public in Singapore‖, the trade mark shall be deemed to be well known in Singapore. Section

2(9) defines the phrase ―relevant sector of the public in Singapore‖ to include, for example, the sector

of actual and potential consumers of the goods, or the sector of distributors of the goods. It is clear

from s 2(8) that, to qualify as a well-known trade mark, it is notnecessary for the mark to be well

known to the general public at large in Singapore. This is an important point and we shall return to

this point in a little while.

17.57 Tay J held that the ―relevant sector of the public in Singapore‖ referred to the sector dealing

with the goods or services of the plaintiffs (the high-end hotel and resort market) and not those of the

defendant (residential property market). In other words, the question ―Do you know or have you heard

of the Aman and Amanusa marks?‖ must be directed at those connected with the high-end hotel and

resort industry, and not those connected with the residential property industry. Tay J found that the

plaintiffs‘ marks were well known to the actual and potential consumers of high-end resort services as

well as the people working in the travel and leisure industry. By virtue of s 2(8), he concluded that the

plaintiffs‘ marks were deemed to be well-known in Singapore.

17.58 The next question was whether the substantive rights in s 55 were available to the plaintiffs.

The substantive rights in s 55 are found in ss 55(2) and 55(3). Section 55(2) entitles the proprietor of

the well-known trade mark to an injunction to restrain unauthorised use of the well-known trade mark

in relation to identical or similar goods or services, where the use is likely to cause confusion. (An

injunction is the only remedy available under s 55, and this is one aspect in which the statutory right

differs from passing off.)

17.59 The plaintiffs did not rely on s 55(2). This was probably because the plaintiffs did not regard

the defendant as dealing with identical or similar goods or services. It has been noted that Tay J

appeared to take this view. This being the case, s 55(2), which is confined to cases where the parties‘

good or services are identical or similar, has no application here. It must be for this reason that the

plaintiffs‘ case on s 55 was built on the other substantive provision, namely, s 55(3). Section 55(3)

provides as follows:

Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be entitled to

restrain by injunction the use in Singapore, in the course of trade and without the proprietor‘s

consent, of any trade mark which, or an essential part of which, is identical with or similar to

the proprietor‘s trade mark, in relation to any goods or services, where the use of the trade

mark —

(a) would indicate a connection between those goods or services and the proprietor, and is

likely to damage the interests of the proprietor; or

(b) if the proprietor‘s trade mark is well known to the public at large in Singapore —

(i) would cause dilution in an unfair manner of the distinctive character of the

proprietor‘s trade mark; or

(ii) would take unfair advantage of the distinctive character of the proprietor‘s trade

mark.

28

[emphasis added]

17.60 The protection in s 55(3), unlike s 55(2), is available even if the parties‘ goods or services are

dissimilar.

17.61 Within s 55(3), there are actually three substantive rights: the right in s 55(3)(a), the right in

s 55(3)(b)(i) and the right in s 55(3)(b)(ii). The plaintiffs invoked the right in s 55(3)(a). Tay J held

that the tests for determining whether the defendant‘s unauthorised use of the well-known trade mark

―would indicate a connection‖ and ―is likely to damage the interests of the proprietor‖ were no

different from those in a passing off action. In coming to this conclusion, the learned judge referred to

the WIPO Joint Recommendations for the Protection of Well Known Trade Marks. This document

sets out the ―model‖ law in implementing the protection for well-known marks required in the Paris

Convention for the Protection of Industrial Property (of which Singapore is a member). Tay J noted

that in relation to the model provision which is the equivalent of s 55(3)(a), there is a note in the Joint

Recommendations, explaining that the requirements of ―connection‖ and ―damage‖ are targeted at a

wrong connection concerning the real source of the goods or services, whether this connection is by

way of an impression that the proprietor of the well-known trade mark is the provider of the goods or

services, or that he has licensed or endorsed the goods or services. This is the confusing-type of

connection as to trade origin known to anyone familiar with the law of passing off.

17.62 This aspect of Tay J‘s judgment is very important. This is the first time that any provision in

s 55 has been considered by our courts. The scope of s 55(3)(a) has been the subject of much

speculation. In particular, the question is whether the ―connection‖ therein refers to a connection that

may be made by the public between the goods of the defendant and the proprietor of the well-known

trade mark which leads them to think that the defendant‘s goods are somehow connected with the

proprietor. If so, the ―connection‖ needed in s 55(3)(a) is the confusing-type of connection. A second

interpretation is that the ―connection‖ simply refers to the public making a mental association between

the goods and the proprietor but not to the extent where they think that the goods originate or are in

some way connected with the proprietor. In this second interpretation, the classic scenario would be

the public, on seeing the defendant‘s goods, are merely reminded of the well-known trade mark –

without more. By equating the tests in s 55(3)(a) with those in passing off, Tay J had chosen the first

interpretation. Just as the second element of misrepresentation in passing off requires proof that the

public is likely to be confused, the right in s 55(3)(a) requires proof that the public would be confused.

17.63 To some, requiring proof of a confusingly-type of connection in s 55(3)(a) is wrong because

they regard s 55(3) as embodying what is called the ―anti-dilution‖ law, where protection is not

dependent on proof of confusion. In support of this argument, they may refer to the other substantive

rights in s 55(3)(b): sub-para (i) which prevents ―dilution‖ and sub-para (ii) which prevents ―taking

unfair advantage‖. These two rights are not dependent on proof of confusion. In the case of the term

―dilution‖, this is very clear in its statutory definition in s 2(1) (―the lessening of the capacity of the

trade mark to identify or distinguish the goods or services, regardless of whether there is … (b) any

likelihood of confusion on the part of the public‖). It is also clear from English or European cases

which have interpreted the phrase ―taking unfair advantage of‖, that existence of confusion is not

necessary. (On this, the latest English Court of Appeal decision at the time of writing is L‟Oreal SA v

Bellure NV[2008] ETMR 1.) Since confusion is not needed in s 55(3)(b), neither is confusion needed

in s 55(3)(a).

17.64 To others, requiring proof of a confusing-type of connection in s 55(3)(a) makes sense. Two

arguments may be advanced in favour of this position. The first argument comes from looking at the

protection of well-known trade marks mandated in the international agreements. It is respectfully

submitted that Tay J was right to be guided by the WIPO Joint Recommendations. The joint authors

will provide some further background, for a better understanding of the position taken in the Joint

Recommendations. The starting point is Art 6bis of the Paris Convention. This article provides that

well-known trade marks must be protected against unauthorised confusinguse in relation to identical

29

or similar goods/services. The level of protection for well-known trade marks was moved up one

notch in Art 16(3) of the TRIPS Agreement. This article provides as follows:

Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services

which are not similar to those in respect of which a trademark is registered, provided that use of

that trademark in relation to those goods or services would indicate a connection between those

goods or services and the owner of the registered trademark and provided that the interests of

the owner of the registered trademark are likely to be damaged by such use.

17.65 Article 16(3) extends the protection under Art 6bis for well-known trade marks to situations

where the well-known mark is used on goods/services which are dissimilar to those of its proprietor.

Like s 55(3)(a), Art 16(3) only requires proof of ―connection‖ and damage, with no explicit reference

to confusion. But since the linchpin of Art 6bis is to prevent unauthorised confusing use, it makes

sense that the target of Art 16(3) is also the type of ―connection‖ which confuses the public. This

interpretation is consistent with the explanatory note on the model provision in the WIPO Joint

Recommendations (which Tay J referred to) that uses the language of Art 16(3).

17.66 The other argument in support of Tay J‘s interpretation of s 55(3)(a) is derived from a

comparison between s 55(3)(a) and s 55(3)(b). There can be no doubt that s 55(3)(b) embodies the

anti-dilution law. It is very important to note that the anti-dilution rights in s 55(3)(b) – both in (i) and

in (ii) – are given to a special category of well-known trade marks, namely, those that are well-known

to the public at large in Singapore. To reward the proprietors for building up this very high degree

and widespread reputation in their trade marks, they are given protection against a use which dilutes

or takes unfair advantage of their reputation even if the use does not confuse the public. The anti-

dilution rights go beyond protecting the traditional function of a trade mark as a badge of origin. On

the other hand, s 55(3)(a) is available to a trade mark which is well known to any relevant sector of

the public in Singapore. In some countries like the US, this type of trade marks are said to have ―niche‖

fame. In the scheme of s 55(3), a trade mark with only ―niche‖ fame qualifies for the protection in

s 55(3)(a) but not for the protection in s 55(3)(b). This suggests that the draftsman intended the scope

of protection in these two paragraphs to be different. The difference, perhaps, is that s 55(3)(a) is still

firmly grounded in the fundamental requirement in trade mark law for confusion, but not s 55(3)(b).

The anti-dilution rights in s 55(3)(b) are a special concession that trade mark law has made to a

special category of well-known trade marks, those known to the general public at large. Should this

special concession be extended to trade marks with only ―niche‖ fame? Those who would answer this

question with a ―no‖ will heartily support Tay J‘s holding on s 55(3)(a).

Patents

Claim construction

17.67 The extent of monopoly protection conferred by a patent is determined by the claims of that

patent. This is clear from s 113 of the Patents Act (Cap 221, 2005 Rev Ed) which provides that an

invention for a patent for which an application has been made or for which a patent has been granted

shall, unless the context provides otherwise, be taken to be that specified in a claim of the

specification of the application or patent (as the case may be), as interpreted by the description and

any drawings contained in that specification. Specifically, the extent of the protection afforded by the

patent to its proprietor is determined by how the claims are interpreted or construed.

17.68 Section 113 is identical with s 125(1) of the UK Patents Act 1977. That Act gave effect to the

1973 European Patent Convention (―EPC‖) which also provides (in Art 69) that the extent of

protection conferred by a patent is to be determined by the terms of the claims. In an attempt to clarify

the extent of protection under Art 69, the contracting states of the EPC adopted the Protocol on the

Interpretation of Art 69 which rejects a strict literal approach to claim construction, requiring that

claims are to be construed to combine ―fair protection for the patentee with a reasonable degree of

certainty for third parties‖. In Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9, the

30

House of Lords confirmed that the purposive approach to claim construction, as set down in Catnic

Components Ltd v Hill & Smith Ltd [1982] RPC 183, satisfied this requirement. The approach rejects

a ―meticulous verbal analysis‖ of the language of a patent claim and provides that it should be

construed to mean what a reasonable person skilled in the relevant technical field would, from an

objective viewpoint, understand the claim to mean in the context of the patent as a whole and in view

of the language adopted by the patent. The House of Lords described this approach as the ―bedrock‖

of patent construction.

17.69 The approach was roundly endorsed last year by our Court of Appeal in First Currency Choice

Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR 335 (―the FCC case‖). The case involved

a patent for an invention which provided an automatic means of determining the preferred currency

for a card transaction between a local merchant and a foreign cardholder. The invention was more

convenient to use and eliminated the frailties inherent in a manual system of currency conversion.

V K Rajah JA, who delivered the judgment of the court, agreed that one of the most significant issues

in patent litigation is the determination of the true construction of a patent specification and, in

particular, its claims and that in ascertaining the true construction, ―the claims themselves are the

principal determinant, while the description and other parts of the specification may assist in the

construction of the claims‖ (at [23]). In this regard, the learned judge had held that the starting point

in patent construction is to ask the threshold question: what would the notional skilled person have

understood the patent to mean by the use of the language of the claims?

17.70 In determining this question, the learned judge held in effect that in patent litigation, there is no

necessity for the court to expressly define and delve into who the notional skilled person might be in

relation to the patent in question, as long as the court has kept in mind the concept of the notional

skilled person and who this person is in relation to the patent in question. Counsel for the appellant

had strenuously argued that the trial judge had failed to identify the notional skilled person and had

not construed the claims in the patent from the perspective of the person and in the context of the

common general knowledge of the art in question. The court rejected his contention that it was

insufficient for the trial judge to simply say that the invention was not obvious to a person skilled in

the art without giving any further elucidation.

17.71 Notwithstanding the rejection, it is nevertheless prudent in practice for the patentee to identify

for the court the relevant notional skilled person and the state of his knowledge at the relevant time. It

is necessary to specify the attributes of such a person in a given case. This is because, as Aldous LJ

explained in Lubrizol v Esso Petroleum [1998] RPC 727 at 738:

[T]he court must adopt the mantle of the notional skilled addressee and determine, from the

language used, what the notional skilled addressee would understand to be the ambit of the

claim. To do that, it is often necessary for the court to be informed as to the meaning of

technical words and phrases and what was, at the relevant time, the common general

knowledge; the knowledge that the notional skilled man would have.

Obviousness

17.72 Identification of the notional skilled person and his state of knowledge is also obligatory if the

validity of the patent is challenged on the ground of obviousness. Section 13(1)(b) of the Patents Act

provides that an invention must involve an inventive step. An ―inventive step‖ is, in turn, defined in

s 15 as one which is:

… not obvious to a person skilled in the art, having regard to any matter which forms part of

the state of the art by virtue only of section 14(2) and without having regard to section 14(3).

17.73 Section 14(2) provides that the ―state of the art‖ is to be taken to comprise all matter (whether a

product, a process, information about either, or anything else) which has been made available to the

public, whether in Singapore or elsewhere, at any time before the priority date of the invention in

31

question. This seems to conflate the knowledge of the person skilled in the art with that of the general

public. If so, it would mean that there is no distinction between the requirements of novelty and

obviousness. Obviousness would cover practically every case of lack of novelty.

17.74 In First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR 335, the

court noted that this can be rather confusing. Hence, it expressed preference for Lord Reid‘s view

in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 that there

should be a distinction between the two. Lord Reid justified this view by confining the knowledge of

the person skilled in the art to that relating to matter which is or ought to have been known to a

―diligent searcher‖ whereas the knowledge of the general public includes matter which no one would

ever know or is likely to know, such as the contents of a foreign publication which a diligent search

would probably miss. The court was of the opinion that Lord Reid‘s view injected substance into the

legislative intent underlying s 15 of the Patents Act.

17.75 It is manifest from s 15 that the statutory question is whether the invention is obvious to a

notional ―person skilled in the art‖. That is, the question of obviousness is to be assessed from the

perspective of this person. This means that what he knows of the state of the relevant art at the

relevant priority date is of importance. The court has to assume the mantle of such a person and to

impute to him what was, at the relevant priority date, common general knowledge of the art in

question: see Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 at 73–

74 where the UK Court of Appeal sets out the well-known four-step structured test for considering

obviousness. This notional person has been variously, and perhaps unfairly, described as a ―normally

skilled but unimaginative addressee‖ (at 73) who is supposed ―to have an unlimited capacity to

assimilate the contents of … scores of specifications but to be incapable of a scintilla of invention‖

(Mills & Rockley (Electronics) Ltd v Technograph Printed Circuits Ltd [1971] FSR 188 at 193).

17.76 The Windsurfing test (Windsurfing International Inc v Tabur Marine (Great Britain) Ltd[1985]

RPC 59) has been adopted in Singapore in Merck & Co Inc v Pharmaforte Singapore Pte Ltd[2000] 3

SLR 717. In First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd[2008] 1 SLR 335,

V K Rajah JA observed that the test ―appears to be here to stay‖ but cautioned that it is no more than a

useful guide, adding (at [45]) that it ―is merely a manifestation of judicial inventiveness on how best

to pragmatically interpret and elucidate the requirements of section 15 of the Act‖. He said that in

straightforward cases, it is sometimes sufficient to merely rely on the test formulated in an old case

(Vickers, Sons & Co Ltd v Siddell (1890) 7 RPC 292) where the court stated (at 304) that an invention

lacked an inventive step if what was claimed was ―so obvious that it would at once occur to anyone

acquainted with the subject, and desirous of accomplishing the end‖. With this in mind, V K Rajah JA

held that the subject invention of the respondent was not obvious because no one had previously

thought of using the ―Bank Identification Number‖ to identify the operating currency of a payment

card. Indeed, no one had taken the significant step of introducing an automatic system to implement

the process of deciphering the operating currency of the payment card. The fact that the step may

appear Lilliputian or even simple is not a bar to inventiveness, as the learned judge rightly

acknowledged.

Insufficient disclosure

17.77 Identification of the notional skilled person is also highly relevant in the event of a challenge of

a patent on the ground of insufficiency of disclosure in the specifications. This is provided in s 80(1)(c)

which states that a patent may be revoked if its specification does not disclose the invention ―clearly

and completely‖ for it to be performed by a ―person skilled in the art‖. This means that the disclosure

must enable the invention to be performed to the full extent of the monopoly claimed and not merely a

single example of something within the claim: Biogen Inc v Medeva plc [1997] RPC 1 at 48. The case

also confirms that where the patent describes a principle of general application, the claims can be in

correspondingly general terms. There is no necessity to describe every possible embodiment of the

invention or to set out every detail necessary for performing the invention.

32

17.78 Whether the disclosure is sufficient is a question of fact which depends not only on the nature

of the invention but also the attributes of the skilled person and the amount of effort which he can

reasonably be required to apply. In general, the disclosure must be such as to enable the skilled person

to use his skill to perform the invention. He is not required to carry out any prolonged research,

inquiry or experiment but may need to carry out the ordinary methods of trial and error which involve

no inventive step: see Mentor Corp v Hollister Inc[1993] RPC 7 at 10–12. The contribution of First

Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR 335 to the law in this

regard is that there is sufficient disclosure if the addressee has little difficulty in reading and

understanding the specification and claims or in understanding the intended workings of the patent,

even though there may be some ambiguity regarding certain terms in the patent. As the court pointed

out, absolute clarity and completeness of the disclosure is not required, unlike in Australia where the

appellant succeeded in respect of a similar patent.

Innocent infringement

17.79 Section 69(1) provides that in proceedings for infringement of a patent:

… damages shall not be awarded and no order shall be made for an account of profits against a

defendant who proves that at the date of the infringement, he was not aware, and had no

reasonable grounds for supposing, that the patent existed.

17.80 This section was discussed in last year‘s Annual Review in relation to Main-Line Corporate

Holdings Ltd v United Overseas Bank Ltd [2007] 1 SLR 1021 where Tay Yong Kwang J held,

amongst others, that the defence of innocent infringement under the section must be positively

pleaded and must be established by absence of knowledge as well as absence of reasonable grounds.

Upon appeal in First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR

335, V K Rajah JA clarified (at [95]) that the statutory protection conferred by the section ―is not a

‗defence‘ in the strict sense of the word but is, rather, an extenuating consideration that ameliorates

unknowing and, therefore, innocent transgressions in terms of the remedy (either in the form of

damages or an order for an account of profits) that can be granted‖.

17.81 This clarification was elaborated upon recently by the Court of Appeal in Seiko Epsom Corp v

Sepoms Technology Pte Ltd [2008] 1 SLR 269 (―the Seiko case‖). The case concerned a dispute over

the parties‘ consent judgment which had provided, amongst others, that the respondents were to

furnish an account of profits. The respondents duly provided the account, but from the date (7 October

2005) when they were served with the appellant‘s statement of claim. They averred that, prior to that

date, they were not aware either that the subject patent existed or that they were infringing it. The

appellant was, however, dissatisfied with the account and filed a notice of objection on the ground

that it did not cover the entire period of infringement which, in its view, commenced on the date of

publication of the patent (20 February 1998), not on 7 October 2005.

17.82 In dismissing the appeal, the court explained that the concept of ―defence‖ encompassed a

denial of liability as well as of the relief claimed and that the term ―liability‖ involved some form of

duty or obligation. However, a duty or obligation could not exist in a vacuum and would only arise if

certain legal prerequisites are met. In patent infringement cases, liability arises only if the legal

prerequisites for infringement are established and ―the issue of the relief awardable for infringement

should not be conflated with the concept of ‗liability‘‖ (at [20]). Hence, as s 69(1) only operates to

limit the relief awardable, it cannot strictly be characterised as a defence to liability, ―although it

might operate as a defence in another sense in as much as it might restrict the relief awardable (as

opposed to liability)‖ [emphasis in original] (at [22]).

17.83 These observations were necessitated by the appellant‘s submission that the concept of

―liability‖ subsumed the issue of the relevant accounting period and that when the respondents

consented to final judgment in terms of liability, they had also consented to account for all the profits

earned during the entire period of infringement, thus rendering s 69(1) inapplicable. The court was,

33

however, of the view that an objective construction of the consent judgment indicated that it was final

only in relation to the issue of liability, with the accounting period still to be determined at a later

stage for the purposes of ascertaining the precise quantum owed upon a taking of account. That being

so, it was necessary for the court to consider the precise nature and effect of s 69(1) – specifically,

whether the section operated as a ―defence‖ to liability or in relation only to damages and account of

profits.

17.84 After reviewing the legislative history of the section, Andrew Phang Boon Leong JA, who

delivered the judgment of the court, considered the heading and marginal note of the section as well

as its text and the relevant case law and textbook commentary and concluded that they all point to the

fact that the section does not operate as a defence to liability but merely restricts the relief awardable.

It is respectfully suggested that the conclusion is unassailable. It seems plain from the language of the

section that it is directed at restricting or limiting the amount of damages or profits payable by a

defendant who successfully proves his lack of knowledge at the date of infringement. This is

supported by the fact that the section makes no reference to an injunction and other reliefs (such as

delivery up), which fact suggests that such reliefs remain available to the plaintiff despite proof of the

defendant‘s innocence. The section has been described as providing a ―special defence‖ to an

infringer (see, eg, Simon Thorley, Richard Miller, Guy Burkill, Colin Birss, Terrell on the Law of

Patents (Sweet & Maxwell, 16th Ed, 2005). The contribution of Seiko Epsom Corp v Sepoms

Technology Pte Ltd [2008] 1 SLR 269 is that it categorically clarifies that the section provides a

―defence‖ only in so far as it limits the amount of damages or profits payable.

17.85 The onus is on the defendant to establish the defence. He must prove not only that he was not

aware that the patent in question existed but also that he had ―no reasonable grounds for supposing‖

that it existed. Marking goods with the word ―patent‖ or ―patented‖ without the actual number of the

patent is not enough to justify the court in holding against him (see s 69(2)) although, it is suggested,

it is a very important factor in ascertaining his guilt or innocence. It seems clear from the authorities

that the test for ascertaining whether there are reasonable grounds for supposing that the patent in

question existed is an objective one (see, eg, Lancer Boss v Henley[1974] FSR 14). Terrell (see

para 17.85 above), however, suggests that the test is objective in the sense that the expression

―reasonable grounds for supposing‖ involves knowledge of facts from which a reasonable man would

arrive at the belief that the patent existed, not in light of all the circumstances at the date of

infringement. It further submits that this calls for an inquiry of the defendant‘s state of knowledge at

the date of infringement. The Court of Appeal in effect adopted this ―reasonable man‖ approach

in First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR 335 where the

respondent had informed UOB in an e-mail dated 10 May 2002 that a European patent had been

granted in respect of the invention and that a corresponding patent application in Singapore was

pending. The Singapore patent application was eventually granted on 30 June 2003. On these facts,

the trial judge had ruled that in view of the e-mail dated 10 May 2002, any protection accorded by

s 69(1) ceased to apply by that date.

17.86 In upholding this ruling, the court held that prior to 10 May 2002, it was not reasonable for

UOB, which was not in the software business, to have known of the publication of the Singapore

patent application. It added that it was somewhat unreasonable ―to hold that the mere publication of

the Singapore patent application [in the Patents Journal on 19 February 2002] should be deemed to

have put UOB on notice of potential patent infringement‖. The use of the expression ―potential patent

infringement‖ relates to s 76 of the Act which entitles the proprietor of a patent to claim damages for

infringement of his patent in respect of acts committed after the publication of the patent application

in Singapore, with the proviso that the claim can only be brought after the patent has been granted and

the acts would, if the patent had been granted on the date of the publication, have infringed not only

the patent but also its claims in the application.

17.87 The other important effect of the ruling is that it is not necessary to show that at the date of the

infringement, the patent in question in fact ―existed‖ (see s 69(1)) or was already granted. It suffices

that the patent was still pending in Singapore at the date of the infringement. In the case, UOB

34

implemented the infringing system on 11 October 2001 but was informed through an e-mail on

10 May 2002 that there was a pending Singapore patent application for the system. It was held by the

court to have knowledge of the existence of the patent on 10 May 2002 (and was, thus, not entitled to

the protection conferred by s 69(1) from that date), even though the patent was only granted to the

respondent on 30 June 2003 in Singapore. In this regard, the court addressed the concerns expressed

in last year‘s Annual Review at para 17.58. In the result, it is submitted that the concluding words of

s 69(1) should now in effect read as follows:

… he was not aware, and had no reasonable grounds for supposing, that the patent or a pending

application in Singapore for the patent existed. [emphasis added]

Copyright

Exclusive licensee

17.88 It is trite law that, unlike an assignment, a licence confers no proprietary interest or rights on

the licensee and is a mere permission to the licensee to do that which would otherwise be unlawful.

As such, the licensee himself cannot sue for infringement of the interest or rights. In the copyright

field, this has caused practical difficulties for the licensee in a number of situations, such as where the

copyright owner is not willing or available to prevent the infringement or is otherwise uncontactable.

Our Copyright Act (Cap 63, 2006 Rev Ed) addresses these by giving special rights to the exclusive

licensee in respect of copyright works.

17.89 The special rights arise by first defining an exclusive licence in s 7(1) as a licence in writing,

signed by or on behalf of the owner or prospective owner of copyright, authorising the licensee to the

exclusion of all other persons to exercise a right which would otherwise be exercisable exclusively by

the copyright owner and stating in s 124 that the exclusive licensee may sue in his own name to

restrain infringements of copyright without joining the copyright owner as a plaintiff or adding the

owner as a defendant in the action. He is able to do so because it is declared in s 123 that his rights

and remedies under the licence are concurrent with those of the copyright owner. This means that he

has the same rights of action as the copyright owner and is entitled to the same remedies as if his

licence had been an assignment.

17.90 The grant of these special rights was affirmed for the first time in Singapore by Sundaresh

Menon JC inAlliance Entertainment Singapore Pte Ltd v Sim Kay Teck [2007] 2 SLR 869 at [23]

where the plaintiff had valiantly argued that the rights were also given to non-exclusive licensees

under the Copyright Act. It claimed that as a result of a number of licensing arrangements in respect

of two cinematograph films and a television serial (―the copyright works‖), it had title to sue for

infringements of the copyright works and was also entitled to bring proceedings by joining the

copyright owners, even though it acknowledged that it was not an exclusive licensee. The claim was

rejected by the learned judicial commissioner who held that s 124 changed the default position under

the common law so that in certain copyright infringement proceedings, there was no need for the

exclusive licensee to join the copyright owner in the proceedings. He also held that there was nothing

in the Copyright Act to suggest that a party who was not an exclusive licensee had a right of action

under copyright.

17.91 The plaintiff sought to remedy the want of title to sue by attempting to add the copyright

owners as co-plaintiffs. One of its arguments in this regard was that it was the party who had suffered

damage as a result of the infringements and ―ought to be entitled to recover damages from the

defendants for their infringement in the form of loss of profits or an account of profits‖. The lack of

sympathy for this argument by the court emphasises the fundamental nature and scope of a licensee‘s

rights in respect of a copyright work. The rights are to be determined within the context of the

Copyright Act. No contractual arrangements between the owner and his licensee can affect or extend

the special rights granted by the Act to exclusive licensees.

35

Intellectual Property Law Annual Review of Singapore Cases (6, 2005)

Information

Title: Intellectual Property Law

Textbook Title: Singapore Academy of Law Annual Review

Chapter No: 16

Author | Editor: Ng-Loy Wee Loon, Tan Tee Jim

Up

Textbooks

Introduction

16.1 There was a bumper crop of intellectual property (―IP‖) cases in the year under review. Of these

cases, the authors have decided to review six cases concerning trade marks and passing off, and one

case each relating to copyright, registered designs, patents and breach of confidence. Many of these

cases touched on a number of knotty points (such as whether there should be trade mark use of a sign

for purposes of infringement and what principle is to be adopted when applying the purposive

approach to construing a patent claim) and are likely to be influential in establishing our own model

of IP law. They have also made the reviewers‘ task particularly challenging, which necessitated a

division of workload. Consequently, the trade marks and passing off cases were reviewed by Tan Tee

Jim SC whilst Ng-Loy Wee Loon reviewed the cases falling within the other species of IP law.

16.2 Of the ten cases reviewed, four of them were decided by the late Lai Kew Chai J, a judge who

over the years had made significant contributions to the development of our IP law. Indeed, his last

decision was inPolo/Lauren Co LP v Shop In Department Store Pte Ltd [2005] 4 SLR 816 which is

reviewed below. He will be missed by many in the IP law circle in Singapore.

Trade marks

Shape marks

16.3 Under the old law, it was difficult to register the three-dimensional shape of a product as a trade

mark. In s 2 of the repealed Trade Marks Act (Cap 332, 1992 Rev Ed), the word ―mark‖ was then

defined as including ―a device, brand, heading, label, ticket, name, signature, word, letter, numeral or

any combination thereof‖, and the term ―trade mark‖ meant:

... a mark used or proposed to be used in relation to goods ... for the purpose of indicating or so

as to indicate, a connection in the course of trade between the goods ... and a person who has

the right, either as proprietor or as registered user, to use the mark, whether with or without an

indication of the identity of that person …

16.4 In Re Coca-Cola Co [1986] 1 WLR 695, the applicants unsuccessfully applied to register the

shape of their bottle as a trade mark in respect of non-alcoholic beverages. The shape was described

as consisting of,inter alia, ―the distinctive shape and appearance applied to a bottle when used as a

container for the goods … as shown in the accompanying representation‖. The House of Lords held

that the word ―mark‖ both in its normal meaning and in its statutory definition was apt only to

describe something which distinguishes goods rather than the goods themselves. Lord Templeman

said that ―a bottle is a container not a mark‖ and that the application was another attempt to expand

36

the boundaries of IP and to convert a protective law into a source of monopoly. He added (at 698) that

the possibility of being able to register a container as a trade mark raised:

… the spectre of a total and perpetual monopoly in containers and articles achieved by means

of the Act of 1938. … In my opinion, the Act of 1938 was not intended to confer on the

manufacturer of a container or on the manufacturer of an article a statutory monopoly on the

ground that the manufacturer has in the eyes of the public established a connection between the

shape of the container or article and the manufacturer. A rival manufacturer must be free to sell

any container or article of similar shape provided the container or article is labelled or packaged

in a manner which avoids confusion as to the origin of the goods in the container or the origin

of the article.

16.5 This view is now no longer valid in Singapore, as the definition of a ―sign‖ under our Trade

Marks Act (Cap 332, 2005 Rev Ed) (―TMA‖) expressly includes ―shape‖ and ―aspect of packaging‖.

This represents one of the most significant changes to our new trade mark law.

16.6 The result is that a shape is now in principle registrable as a trade mark, and the test for

determining whether it is registrable or not is the same as that for any other sign. Specifically, the

shape must serve as a badge of origin and must not be descriptive of the goods in respect of which the

application for registration is made (see, eg,Yakult Honsha KK‟s Trade Mark Application [2001] RPC

39). This is determined by reference to the goods in respect of which registration is sought as well as

the perception of the relevant average consumers of the goods (see, eg, Linde AG v Deutsches Patent-

und-Markenamt [2003] RPC 45 at [41]).

16.7 In Nation Fittings (M) Sdn Bhd v Oystertec Plc [2006] 1 SLR 712 (―Nation Fittings‖), the

plaintiff unsuccessfully tried to invoke the new law in respect of its trade marks which were registered

under the old law. The marks consisted of two-dimensional representations of an aspect of pipe

fittings, as shown below:

[LawNet Admin Note: Click on the link to the PDF above to see Image 1]

16.8 The issue that was phrased was whether para 2(1) of the Third Schedule to the TMA operated to

render or ―convert‖ these marks (registered under the old law) into three-dimensional marks under the

TMA, without the need to make a separate application for registration under the Act. The issue was

important because if the paragraph did not so render or ―convert‖ the marks, it would seem that the

marks were not considered registered under the TMA (in the absence of a separate application) and

the plaintiff therefore had no rights under the Act in respect of the marks.

16.9 Paragraph 2(1) of the Third Schedule to the TMA states that:

Any existing registered mark, whether registered in Part A or B of the register kept under the

repealed Act, is a registered trade mark for the purposes of this Act.

16.10 The term ―existing registered mark‖ is defined in the Third Schedule as a trade mark registered

immediately before 15 January 1999. This suggests, as the plaintiff argued, that trade marks registered

under the old law would automatically also become registered trade marks under and for the purposes

of the new law.

16.11 Andrew Phang Boon Leong J (as he then was), however, did not agree with the suggestion. He

preferred to construe the paragraph from the perspective of its purpose, the purpose being to ensure

continuity and predictability. He also said that the paragraph should be construed as to avoid the

concomitant chaos that would ensue from the conclusion or assumption that existing trade marks

registered under the old law lapsed as a result of the introduction of the new law. So construed, he

held that a more reasonable interpretation of para 2(1) of the Third Schedule was that it continued to

37

provide protection under the new law for marks registered under the old law only in respect of ―the

form they were originally registered‖. Hence (at [28]):

[T]rade marks already registered under the old law as two-dimensional marks would be treated

as continuing as registered (two-dimensional) trade marks under the TMA without the need for

the additional, and practically otiose, step of registration under the TMA.

16.12 He added that any other interpretation would result in the existing marks obtaining additional

rights. Such rights could not be acquired ipso facto, but only by filing a fresh application for

registration under the new Act, as the plaintiff had done.

16.13 This decision is to be contrasted with the position in the UK. In Philips Electronics NV v

Remington Consumer Products Ltd [1999] RPC 809 (―Philips‖), the UK Court of Appeal had regard

to Sched 3 to the UK Trade Marks Act 1994 (c 26) (―the UK 1994 Act‖) and said that a trade mark

registered under the old law had effect as if registered under the UK 1994 Act so that its validity was

to be considered under the UK 1994 Act. The relevant paragraph of Sched 3 (namely, para 2(1)) reads

as follows:

Existing registered marks (whether registered in Part A or B of the register kept under the 1938

Act) shall be transferred on the commencement of this Act to the register kept under this Act

and have effect, subject to the provisions of this Schedule, as if registered under this Act.

16.14 It is evident that this paragraph has essentially the same purport as our para 2(1) – that is, a

trade mark registered under the old law shall continue to be protected under the new law. There is no

qualification to the continual protection.

16.15 In a later Philips case (namely, Koninklijke Philips NV v Remington Consumer Products

Ltd[2005] FSR 17 (―Philips 2005‖), Rimer J said (at [13]) that:

One of the significant changes introduced by the [EU] Directive and the [UK 1994] Act was the

extension of trade mark protection to the shape of goods, or to three-dimensional marks. The

452 mark is a two-dimensional drawing and was in fact registered in 1993, before the [UK

1994] Act came into force. It is, however, common ground that, if its registration was valid, it

should be treated as also covering a three-dimensional shape.

16.16 There therefore appears to be a general understanding in the UK that a trade mark registered

under the old law continues to receive the same protection under the new law, so that registration of a

two-dimensional mark under the old law is to be considered as covering a three-dimensional shape

under the new law. This means that the validity of the registration of the three-dimensional shape is to

be adjudged according to the new law. This was precisely what the court in Philips 2005 did. The

facts of that case are briefly these.

16.17 The plaintiff was the registered proprietor as of 20 April 1993 (that is, prior to the enactment of

the UK 1994 Act) of the following two-dimensional mark for an electric shaver:

[LawNet Admin Note: Click on the link to the PDF above to see Image 2]

16.18 The plaintiff sued the defendant for infringing the registered mark by selling rotary shavers with

heads identical with or confusingly similar to the mark. The defendant not only denied infringement

but counterclaimed for revocation on the ground that the mark was not registrable pursuant to s 3(2)(b)

of the UK 1994 Act (equivalent to our s 7(3)(b)) because it consisted exclusively of the shape of the

goods ―which was necessary to achieve a technical result‖. The court upheld the counterclaim and

revoked the registration. It extensively reviewed the law on s 3(2)(b) and held that the registered mark

did consist exclusively of the shape of the head (of the electric shaver) which was necessary to

38

achieve the technical function of stretching the skin and raising the hair for effective and painless

shaving.

16.19 Could Phang J have taken a similar route in Nation Fittings (supra para 16.7)? Did each of the

subject marks (shown at para 16.7 above) consist ―exclusively‖ of the shape of goods (namely, pipe

fittings) which was necessary to achieve a technical result? Here, the law is that a shape is

unregistrable if its essential feature is necessary to achieve a technical result, and it is irrelevant that

there may be another shape which can equally achieve the same result. It could perhaps be argued that

the essential feature of each of the subject marks was the ribbed shape of the pipe fittings and that the

fittings were so (ribbed) shaped because the shape was only intended to achieve, and did achieve, the

technical result of ensuring that an adjoining pipe was properly fastened. As the judge himself

indicated (at [159]), the ribbed shape ―is considered merely functional for the trade and, to that extent,

is considered to be generic‖. Unfortunately, the issue was not raised by the defendant as it did not

plead invalidation pursuant to s 7(3) of the TMA (see [142]).

16.20 The judge distinguished Philips 2005 on three grounds. First, he noted (at [34]) that Rimer J‘s

statement cited above was not the ratio decidendi of the case and that it was ―common ground‖

between the parties‘ counsel that the trade mark concerned would, having been registered as a two-

dimensional drawing, nevertheless be treated as also covering a three-dimensional shape. He was of

the view that as the point was not argued, it would be extremely unwise to treat Rimer J‘s statement as

highly persuasive. The view is valid, but the fact that the point was not argued and there was common

ground between counsel who are known to be very knowledgeable and experienced in the IP field, is

not without significance.

16.21 This aside, in principle, all rights (including IP and trade mark rights) validly obtained under an

old law should not be adversely affected or qualified in any way by the enactment of a new law. This

is also clear from s 16(1) of the Interpretation Act (Cap 1, 1999 Rev Ed) which provides that:

Where a written law repeals in whole or in part any other written law, then, unless the contrary

intention appears, the repeal shall not —

(a) …

(b) affect the previous operation of any written law so repealed or anything duly done or

suffered under any written law so repealed;

(c) affect any right, privilege, obligation or liability acquired, accrued or incurred under

any written law so repealed.

16.22 Also, in Turnbull v Forman (1885) 15 QBD 234 at 238, Bowen LJ said:

Where the legislature means to take away or lessen rights acquired previously to the passing of

an enactment, it is reasonable to suppose that they would use clear language for the purpose of

doing so, or, to put the same thing in a somewhat different form, if the words are not

unequivocally clear to the contrary, a provision must be construed as not intended to take away

or lessen existing rights.

16.23 Secondly, Phang J distinguished Philips 2005 (supra para 16.15) by drawing attention to the

fact that the mark in that case was a shape which was depicted to have depth and perspective, unlike

the shape depicted inNation Fittings, and concluded (at [35]) that the claimant (in Philips 2005) did

―the best it could under the circumstances, which was to register the trade mark in a manner that

depicted its three-dimensional aspects as well‖. In other words, because there was no protective

regime for three-dimensional marks under the old UK law (as there was none in Singapore), the

claimant in Philips 2005 did the best that it could by depicting its shape mark in the registration with

39

depth and perspective as well – that is, in a manner which depicted its three-dimensional aspects as

well.

16.24 With respect, this is a novel and robust interpretation. Its effect is that continual protection

under the new law depends in part on the subjective intention of the trade mark proprietor. If so,

determining such protection will in future be fraught with evidential difficulties, whereas the

protection ought to be grounded on an objective determination.

16.25 Thirdly, Phang J said that it was significant that in Philips 2005, the claimant applied to register

the mark only about 15 months prior to the coming into force of the UK 1994 Act (in July 1994),

stating that it was clear that its intention with regard to the mark was to apply for a mark which was

three-dimensional in nature (at [38]):

… with the at least possible hope that when the new Act came into force, there would then

accrue (to the claimant) a right in a three-dimensional shape mark that was not hitherto possible

under the previous law. [emphasis in original]

16.26 It is not entirely clear from the report of the Philips 2005 case whether the claimant had such

intention or hope. At any rate, there does not seem to be any indication in Nation Fittings itself as

regards the period between the plaintiff‘s application for registration of its two-dimensional mark

under the old law and the enactment of our TMA on 15 January 1999. Nonetheless, it is suggested

that this should not matter, as otherwise ascertaining the existence of the intention or hope and the

extent of the period required before the intention or hope can be inferred will also be fraught with

evidential difficulties.

16.27 Phang J also found (at [136]) that the shape did not even pass the relatively low threshold

criterion set out in the definition of a ―trade mark‖ in s 2(1) of the TMA. The definition states that a

―trade mark‖ means:

... any sign capable of being represented graphically and which is capable of distinguishing

goods or services dealt with or provided in the course of trade by a person from goods or

services so dealt with or provided by any other person[.]

16.28 There are therefore two fundamental features of a registrable trade mark: graphic representation

and capability to distinguish. In the latter regard, the law is that the capability to distinguish the goods

or services must arise from the inherent features or characteristics of the sign itself, not as a result of

use. Does the sign indicate to the average consumer where the goods or services come from or does it

only tell the customer what the goods or services are? (see, eg, Jeryl Lynn Trade Mark [1999] FSR

491 at [11]). In Nation Fittings, Phang J noted that no evidence had been adduced by the plaintiff

demonstrating that the shape mark was in fact perceived by the average consumers who were found to

be plumbers and contractors in the case) as a badge of trade origin. He therefore held that the

registration of the shape should be invalidated pursuant to s 23(1), read with s 7(1)(a) of the TMA.

16.29 Phang J further held, obiter, that the shape could also be invalidated because it was ―devoid of

any distinctive character‖ (at [137]) and thus fell foul of s 7(1)(b) of the TMA. The reasoning for this

is a priori – as the shape did not even satisfy the definition of a ―trade mark‖ in s 2(1), it would follow

that the shape would also fall foul of s 7(1)(b) and thus could be invalidated pursuant to s 23(1) (see

[137]). The a priori reasoning touches a raw nerve in the new trade mark regime. There has been a

considerable amount of controversy in the UK and the European Court of Justice (―ECJ‖) as to

whether the test under s 7(1)(a) differs in any material way from that under s 7(1)(b) or in some way

introduces a two-stage test. Specifically, is s 7(1)(a) limited to signs which cannot be graphically

represented in the manner referred to in s 2(1) for the definition of a ―trade mark‖ or does it also

embrace both graphic representation and capability to distinguish? If the former, no question of

duplication or inconsistency would arise. But, according to the ECJ in Koninklijke

Philips Electronics NV v RemingtonConsumer Products Ltd [2003] Ch 159, s 7(1)(a) does embrace

40

both graphic representation and capability to distinguish, which means that distinctiveness is an issue

under s 7(1)(a) as well as s 7(1)(b).

16.30 In that case, the question put to the ECJ for guidance was whether there is a category of marks

which is not excluded from registration by Arts 3(1)(b), 3(1)(c), 3(1)(d) and 3(3) of the European

Commission Directive (equivalent to our ss 7(1)(b), 7(1)(c), 7(1)(d) and 7(2) respectively), but which

is nonetheless excluded by Art 3(1)(a) (our s 7(1)(a)). The ECJ decided that there is no class of marks

with a distinctive character (whether inherent or acquired) which is not capable of distinguishing the

goods or services of one undertaking from those of another within the meaning of Art 2 (our s 2(1)

concerning the definition of ―trade mark‖). This means that the tests laid down by Arts 2, 3(1)(a),

3(1)(b) and 3(3) are the same, which in effect also means that it is unnecessary to consider an

objection under Art 3(1)(a) separately. There however remains the difficulty, in any particular case, of

assessing how individual or unique the sign must be, in order for it to be a distinctive indicator of

origin. This would depend on the facts and the context of each case, particularly the type of sign in

question and the goods that it relates to. Nevertheless, the case confirms that where distinctiveness is

acquired, the mark will overcome any objection on grounds of lack of distinctiveness which might

otherwise exist under Art 3, even though Art 3(1)(a) is not expressly subject to the proviso in Art 3(3).

It also indicates that it is only necessary to answer a single question in relation to distinctiveness of

origin, which is whether the sign is capable of distinguishing the goods or services of one undertaking

from those of another in the mind of the consumer. A positive response is required for the question, in

order not to fall foul of the article.

Non-use of a registered trade mark

16.31 It is a major feature of our trade mark regime that upon registration of a trade mark, its

proprietor must proceed to put it to genuine use. There is a strong public interest in unused marks not

being retained on the register, as they not only tend to clog up the register but also constitute a hazard

or obstacle to others who may wish to use the same or similar mark. As Jacob J (as he then was) said

in LABORATOIRE DE LA MER Trade Marks [2002] FSR 51 (―LDLM‖) at [19], such marks are like

―abandoned vessels in the shipping lanes of trade‖.

16.32 Hence, it is expressly provided in s 22(1) of the TMA that a registered trade mark may be

revoked for non-use if either:

(a) within five years following the date of the completion of the registration procedure, the

trade mark has not been put to genuine use in the course of trade in Singapore, either by the

proprietor or with his consent, in relation to the goods or services for which it is registered; or

(b) there has been genuine use as aforesaid but such use has since been suspended for an

uninterrupted period of five years immediately preceding the date of the application to revoke,

and, in each case, there are no proper reasons for non-use.

16.33 The proprietor is thus given an initial grace period of five years within which to commence

genuine use of his registered trade mark. He has the burden of proving use: see s 105 of the TMA

which provides that if, in any civil proceedings under the Act, a question arises as to the use to which

a registered trade mark has been put, it is for the proprietor to show what use has been made of it. This

reversal of the burden of proof is understandable as, in practice, the proprietor is usually in the best

position to know, and to show, what use he has made of his registered mark. He can demonstrate use

by way of advertisements, brochures, catalogues, pamphlets and the like, together with evidence of

the level of sales. In contrast, it is often difficult and time-consuming for the applicant for revocation

to have to prove a negative. In LDLM, Jacob J advised (at [9]) those concerned with proof of use that

they:

41

… should read their proposed evidence with a critical eye – to ensure that use is actually proved

– and for the goods or services of the mark in question. All the t‘s should be crossed and all the

i‘s dotted.

16.34 Under the old law, the burden of proof could be discharged by one single use of a mark.

However, the proof must be ―overwhelmingly convincing‖. As Wilberforce J (as he then was) said

in NODOZ Trade Mark[1962] RPC 1 at 7 where the question was whether a product despatched by

the registered proprietor in the US was received in England:

It may well be, of course, that in a suitable case one single act of user of the trade mark may be

sufficient; I am not saying that that is not so: but in a case where one single act is relied on it

does seem to me that that single act ought to be established by, if not conclusive proof, at any

rate overwhelmingly convincing proof. It seems to me that the fewer the acts relied on the more

solidly ought they to be established.

16.35 However, how ―overwhelmingly convincing‖ must the proof be? Precisely how ―solidly‖ must

the fewer acts be in order to establish the convincing proof? These issues arose in the recent Court of

Appeal case of Nike International Ltd v Campomar SL [2006] 1 SLR 919 (―Nike International‖)

where a Spanish company had registered the ―Nike‖ trade mark in respect of ―perfumery with

essential oils‖ on 30 December 1989, with the registration taking effect from 2 April 1986. On

21 January 2002, Nike International Ltd, a US company which had been marketing and selling shoes

and apparel worldwide since 1972 under the mark, applied to revoke the registered mark, claiming

that the Spanish proprietor had not been making use of the mark in Singapore for the period of five

years immediately preceding the application to revoke. The proprietor disputed the claim, adducing

sales invoices issued during 1996–2001 to show use of the mark, a bill of lading showing that

products bearing the mark had been shipped to a Singapore importer as well as a letter dated

December 2003 from a freight forwarder.

16.36 In the High Court, these documents had been held to be sufficient to establish use (see [2005] 4

SLR 76). After referring to the level of proof required where an isolated transaction was involved, ie,

―convincing proof, if not conclusive proof‖ (at [57]), Tay Yong Kwang J stated (ibid) that he was

satisfied that the proprietor had:

… on a balance of probabilities and that was all that was required of it, demonstrated that its

mark was on its perfume products and that such products were imported into Singapore

commercially, albeit on only one occasion within the relevant five-year period.

16.37 He was of the view that the proprietor had discharged the onus of proof and there was no

additional requirement on the proprietor to show, contrary to Nike International Ltd‘s submissions, its

marketing or sales efforts in Singapore, although such efforts would naturally have buttressed its case.

After closely examining the documents, he concluded that the Singapore importer must have bought

the proprietor‘s ―Nike‖ goods which it then sold and exported to someone in Indonesia ―or must have

exported them there for sale‖. He accepted counsel‘s explanation as regards why the importer did not

wish to give affidavit evidence and be involved in the litigation although he was approached.

16.38 The Court of Appeal did not express disagreement with the ―balance of probabilities‖ test.

However, it said that the learned judge did not give sufficient consideration to the fact that none of the

documents which the proprietor adduced to prove use in Singapore related to the goods being received

in Singapore. In particular, the invoices and bill of lading were no more than prima facie evidence of

the goods being shipped and did not constitute proof that the goods had in fact arrived in Singapore. It

laid down the rule (at [21]) that where a party was obliged to prove a certain fact to the level of being

―overwhelmingly convincing‖, that party:

42

... must show that it has done everything reasonably possible to obtain the necessary evidence.

To merely say that his lawyer had approached the importer who then refused to co-operate is

woefully inadequate.

16.39 The rule was not complied with by a mere bland statement by counsel that the importer was

approached to give evidence. Details regarding the approach or the efforts made should have been

produced and some document trail in relation to the goods‘ arrival in Singapore should have been

adduced as evidence in court.

What constitutes “use” of a trade mark?

16.40 On the other hand, what constitutes ―use‖ of a trade mark? Section 22(2) of the TMA in effect

provides that, to constitute use of a trade mark for the purposes of s 22(1), the mark must not contain

elements which alter ―the distinctive character of the mark‖ in the form in which it was registered. It

has been held that the distinctive character can either be inherent in the nature of the mark itself or be

acquired by reason of the use made of the mark and that in assessing the distinctive character, regard

is to be had to the way in which it would be perceived by the average consumer and its likely impact

on such a consumer (see, eg, BUD and BUDWEISER BUDBRÄU Trade Marks [2003] RPC 25 at

[46]).

16.41 Last year, a question arose as regards whether a registered trade mark could be said to have

been used if it was incorporated into another mark or was surrounded by other elements and used in

conjunction with them. InNation Fittings (supra para 16.7), the court answered this question in the

negative. The mark concerned was a two-dimensional mark as shown below:

[LawNet Admin Note: Click on the link to the PDF above to see Image 3]

16.42 The mark was invariably used with a word or mark (ie ―Conex‖) and as a frame within which

the word was advertised in various forms, as shown below:

[LawNet Admin Note: Click on the link to the PDF above to see Image 4]

16.43 It was also used as part of a slogan (namely, ―Get It Together With Conex‖) on the plaintiff‘s

goods. Phang J was of the view that the focus of the use and the advertisements was on the word

―Conex‖ and said (at [125]) that ―there comes a point when the mark concerned has been subsumed

within the other elements to such an extent that it can no longer be considered to have been used‖ in

the context of s 22(1) of the TMA. He ruled that on the facts of the case, such a point was reached and

the distinctive character of the mark as used had been altered significantly from the form in which it

was registered.

16.44 It is clear that the principle of ―subsumption‖ is not intended to be a principle of law, although

it is a useful tool in determining a question of fact – whether or when the distinctive character of a

registered mark has been altered. In applying s 22(2), it is often necessary, first, to determine what is

the distinctive character of the mark and which are the elements that, in combination, contribute to the

distinctive character and, secondly, to inquire whether any alteration to any of those elements is of

sufficient materiality so as not to alter that overall distinctive character (see BUD and BUDWEISER

BUDBRÄU Trade Marks [2002] RPC 38 at [22]). Phang J‘s contribution is that sufficient materiality

may arise if the registered mark is incorporated into another mark or is surrounded by other elements

and used in conjunction with them so as to be subsumed within the other mark or elements.

Is there a discretion?

16.45 An important issue concerning s 22(1) of the TMA which was not raised in Nike

International (suprapara 16.35) but was considered in Nation Fittings (supra para 16.7) is whether,

notwithstanding non-use of a registered mark, the court still has the discretion not to revoke the

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registration of the mark. It is to be noted that that s 22(1) (as well as s 23(1) relating to invalidity of

registration) uses the word ―may‖, which suggests that even if any of the substantive grounds for

revocation is established, the court and the Registrar of Trade Marks (―the Registrar‖) still have a

discretion to consider whether or not to revoke. This contrasts with the wording of s 22(3) which

provides that in certain circumstances, the registration ―shall‖ not be revoked.

16.46 In the UK, there have been conflicting cases on the issue. In INVERMONT Trade Mark [1997]

RPC 125at 132, a hearing officer was of the view that he had a discretion whether to revoke or

not. This view was assumed to be correct by Lloyd J in ELLE Trade Marks [1997] FSR 529 at 532.

However, in ZIPPO TradeMark [1999] RPC 173, another hearing officer took a different view. The

issue was then dealt with at length inPremier Brands UK Ltd v Typhoon Europe Ltd [2000] FSR

767 by Neuberger J who, with diffidence, preferred the view that there is no discretion to revoke, after

having regard to the equivalent provisions of the European Commission Directive. He reasoned at 811

that:

[I]t is not only a privilege for a person to be the proprietor of a registered trade mark, but it

represents a monopoly: the Court should not be too ready to perpetuate a monopoly in favour of

a person who has not done anything to promote or enjoy it for a period of five years.

16.47 It is suggested that Neuberger J‘s reasoning should also be adopted for ss 22(1) and 23(1) of our

TMA. If not, it would be odd that the TMA specifically provides for non-revocation if good reasons

are shown for non-use but nonetheless leaves the Registrar or the court with residual discretion if

there are no such reasons. If indeed there is a discretion, there should have been some indication in the

TMA as to how the discretion is to be exercised, as in s 40 of the old Trade Marks Act (Cap 332,

1993 Rev Ed) Act which had provided that a registered trade mark may not be taken off the register if

the non-use is shown to have been due to ―special circumstances in the trade‖ and not to ―any

intention not to use or to abandon‖ the trade mark. Further, the word ―shall‖ in s 22(7) indicates that

the Registrar or the court has no discretion but must revoke a mark in respect of the goods or services

in relation to which the mark was not used. It is curious that there should be a discretion (by virtue of

s 22(1)) as regards a mark which has not been used for any of the goods or services in the

specification but no discretion at all where the mark has not been used on only some of the goods or

services.

16.48 In Reemtsma Cigarettenfabriken GmbH v Hugo Boss AG (No 2) [2003] 4 SLR 155 (reviewed in

―Intellectual Property Law‖ (2003) 4 Ann Rev 323 at paras 16.30–16.97), Belinda Ang Saw Ean J

expressed preference for the view that there is no discretion to revoke. She pointed to the following

factors in favour of the view:

(a) The statutory power conferred on the Registrar or the court is exhaustive, as registration

may be revoked in no other than in four specific grounds for revocation.

(b) Section 22(3) expressly covers the situation where there is no power to revoke even if

s 22(1)(a) or s 22(1)(b) is satisfied. It amounts to an exhaustive statement of the position so far

as relevant.

(c) There is no ―sweeping up‖ clause to accommodate other grounds.

(d) Section 22(7) is consistent with the absence of discretion. Once the grounds are established

in respect of some goods and not the rest, partial revocation is to be ordered.

16.49 The judge further said that if there were some unexpressed ground on which the Registrar or the

court could consider, it could only arise by implication as a matter of statutory construction. However,

s 22(1) expressly states ―the following grounds‖ and four grounds are enumerated. An implication

could not properly be found that went against the express statement ―the following grounds‖ and the

effect of the expressio unius rule was to give the word ―may‖ in the section the meaning ―may only‖.

44

Ang J added that since the function of a trade mark was to give its proprietor a monopoly when the

mark was used, there should be no discretion to allow it to remain on the register if it was not used or

if there was no intention to use it, citing the UK cases of Imperial Group Ltd v Philip Morris & Co

Ltd [1982] FSR 72, Premier Brands UK Ltd v Typhoon Europe Ltd (supra para 16.46)

and PHILOSOPHY DI ALBERTA FERRETTI Trade Mark [2003] RPC 15 in support.

16.50 This view was recently roundly endorsed by another High Court judge (Phang J) in Nation

Fittings (suprapara 16.7) at [180]–[181].

Infringement

16.51 The acts amounting to infringement of a registered trade mark are set out in s 27 of the Act.

Under s 27(1), a person infringes a registered trade mark if, without the consent of the proprietor of

the trade mark, he uses in the course of trade a sign which is identical with the trade mark in relation

to goods or services which are identicalwith those for which the trade mark is registered.

16.52 It has been held that the criterion of identity of the sign and mark is to be interpreted strictly

(see SA Société LTJ Diffusion v Sadas Vertbaudet SA [2003] FSR 34). Specifically, a sign or mark is

identical with a registered trade mark only if it reproduces, without any modification, omission or

addition, all the elements constituting the trade mark or, if viewed as a whole, it contains differences

so insignificant that they may go unnoticed by an average, reasonably well-informed, observant

consumer. As regards the identity of goods or services, the court is to consider fair use of the earlier

registered trade mark within its specification of goods or services (see Beautimatic International

Ltd v Mitchell International Pharmaceuticals Ltd [2000] FSR 267) and should scrutinise the

specification carefully, so as to ensure that it is not given a wide construction covering a vast range of

goods or services (see Avnet Inc v Isoact Ltd [1998] FSR 16). Once the double identity is established,

there is a presumption that a likelihood of confusion on the part of the public has arisen as a result of

the use.

16.53 Under s 27(2), there is no such presumption. A person infringes a registered trade mark if,

without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where

because:

(a) it is identical with the registered trade mark and is used in relation to goods or services

similar to those for which the trade mark is registered; or

(b) it is similar to the trade mark and is used in relation to goods or services identical with or

similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public.

16.54 The following questions therefore arise in relation to this section:

(a) Is the sign identical with or similar to the registered trade mark?

(b) Are the goods or services for which the sign is used identical with or similar to those

covered by the registration?

(c) Is there a likelihood of confusion because of the identity or similarity?

16.55 There exists a threshold conflict as regards how these questions are to be considered. According

to a―quartet‖ of ECJ cases, namely, Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC

199, CanonKabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117 (―Canon v

MGM‖), Lloyd SchuhfabrikMeyer & Co GmbH v Klijsen Handel BV [2000] FSR

77 (―Lloyd Schuhfabrik Meyer”) and Marca Mode CV v Adidas AG [2000] 2 CMLR 1061, the

45

comparison required to be made in the section is not a straightforward mark for sign comparison.

Rather, it involves a global assessment of the likelihood of confusion on the part of the public as to

the trade origin of the goods or services in question. Such an assessment implies

someinterdependence between the relevant factors, including, in particular, the degree of similarity

between the sign and the registered trade mark and between the goods and the services in question. It

also involves an assessment of the distinctiveness of the mark and of many factors familiar in passing

off cases. The mark is to be considered as a whole, with all relevant similarities (including the visual,

aural and conceptual similarities) to be assessed having regard to the fact that some aspects of the sign

and mark will be more distinctive and dominant than others. The more distinctive the mark and the

more similar the goods or services covered, the greater will be the likelihood of confusion – that is,

there is a greater likelihood of confusion with very distinctive marks. The person to be considered in

assessing the likelihood of confusion is the ordinary consumer who is neither too careful nor too

careless but is reasonably circumspect, well informed and observant. In this regard, account should be

taken of the fact that the ordinary consumer rarely has the chance to make a direct comparison

between the sign and the mark but must place his trust in the imperfect picture of them that he has

kept in his mind. His level of attention is also likely to vary according to the category of the goods or

services in question.

16.56 This ―global assessment‖ approach is to be contrasted with the stringent and step-wise approach

which Jacob J had earlier advocated in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC

281 (―British Sugar‖). In the case, the plaintiff had registered the mark ―TREAT‖ for dessert sauces

and syrups and used the mark on ―Silver Spoon Treat‖ which is a sweet syrup in a range of flavours to

pour onto ice cream. It sued the defendant for selling a sweet spread, labelled as ―Robertson‘s Toffee

Treat‖, along with its range of jams and preserves. One of the issues was whether there was

infringement under s 10(2) of the UK 1994 Act (our s 27(2)). Jacob J held that, in dealing with this

issue, the question concerning likelihood of confusion should be dealt with separately from, and

subsequently to, the questions of similarity of marks and similarity of goods or services. It was

important to separate confusion from similarity because, if the questions were elided, a ―strong‖ mark

would get protection for a greater range of goods than a ―weak‖ mark. Hence, to him, the question of

likelihood of confusion would become relevant only if the sign and the registered mark were similar

and the goods for which the mark was used were identical with or similar to those covered by the

registration.

16.57 Last year, our courts were faced with these conflicting views on three occasions.

In Polo/Lauren Co LP v Shop In Department Store [2005] 4 SLR 816 (―Polo/Lauren”), the plaintiff

sued the defendant for infringement of its registered trade marks bearing the word ―POLO‖ by

importing and selling, amongst others, articles of clothing bearing the sign ―POLO PACIFIC‖, as

shown below:

[LawNet Admin Note: Click on the link to the PDF above to see Image 5]

16.58 Lai Kew Chai J noted that the principal issue (whether there was infringement of the plaintiff‘s

marks pursuant to s 27(2)(b)) was ―novel‖ in Singapore, as counsel for the parties submitted

forcefully for the two conflicting approaches. He rejected the ―global assessment‖ approach of the

ECJ for the reasons set out below (at paras 16.59–16.61).

16.59 First, he said that the ―global assessment‖ approach was not in pari materia with our s 27(2)(b)

and in fact confused the elements of infringement required under the provision. From the wording of

the provision, the likelihood of confusion must be the direct result of the similarity between the

registered trade mark and the disputed sign, and between the goods or services used in relation thereto.

Lai J said at [15]:

The provision does not make it an infringement if the likelihood of confusion is caused by

some other factor. Neither does it make similarity merely one among other factors that may be

considered.

46

16.60 Second, the judge shared Jacob J‘s concern in British Sugar (supra para 16.56) that the ―global

assessment‖ approach would mean that a ―strong‖ mark would get protection for a greater range of

goods than a ―weak‖ mark even though the goods under consideration were vastly different and

dissimilar. To him, this did not seem either fair or sensible. If infringement was to be made out, it

should be on the basis of the identity or similarity of the sign to the registered mark and the goods

applied thereto.

16.61 At the same time, Lai J expressed discomfort with the strict British Sugar approach, agreeing

with both counsel that the approach was an ―exceedingly narrow one‖ (at [18]). Under the approach,

the user ―cannot escape by showing that by something outside the actual mark itself he has

distinguished his goods from those of the registered proprietor‖ (ibid). He was of the view that ―the

court is allowed to look outside the marks in order to assess how similar the marks must be for there

to exist a likelihood of confusion‖ (at [19]). In the case, he did look outside the registered marks by

noting, amongst others, that the defendant added the word ―PACIFIC‖ to ―POLO‖ and used a

different font and design.

16.62 It is respectfully suggested that Lai J was correct to reject the strict British Sugar approach

whereby the court cannot take into account added matter or circumstances in assessing whether there

is a likelihood of confusion. As he said (at [21]), a proper construction of s 27(2)(b):

... does not reject the court‘s discretion in assessing so-called extraneous factors when deciding

whether there is a likelihood of confusion. The only thing that the statute calls for is that the

likelihood of confusion arises from the similarity. But where the user of a potentially infringing

sign has taken pains to distinguish his products from the registered proprietor‘s goods and

services, the effect may be that the likelihood of confusion, if any, is merely hypothetical or

speculative. … Section 27(2)(b) also does not forbid the court taking into account various

factors in deciding the degree of similarity required in order to find that there exists a

likelihood of confusion. [emphasis added]

16.63 This construction accords with the well-known Pianotist approach (see In the Matter of an

Application by the Pianotist Company Ld for the Registration of a Trade Mark (1906) 23 RPC 774)

under the old law towards comparing marks (which the judge cited with approval (at [19])):

You must take the two words. You must judge of them, both by their look and by their sound.

You must consider the goods to which they are to be applied. You must consider the nature and

kind of customer who would be likely to buy those goods. In fact, you must consider all the

surrounding circumstances; and you must further consider what is likely to happen if each of

those trade marks is used in a normal way as a trade mark for the goods of the respective

owners of the marks. If, considering all those circumstances, you come to the conclusion that

there will be a confusion – that is to say, not necessarily that one man will be injured and the

other will gain illicit benefit, but that there will be a confusion in the mind of the public which

will lead to confusion in the goods – then you may refuse the registration, or rather you must

refuse the registration in that case. [emphasis added]

16.64 In the event, the judge took into consideration all relevant factors (including ―extraneous‖ ones).

They include:

(a) comparing the defendant‘s sign as a whole with the plaintiff‘s mark;

(b) where there is a common denominator (―POLO‖ in the case) in the parties‘ marks, it is

―important to look at the differences between the mark and the sign in order to decide whether

the challenged sign has been able to distinguish itself sufficiently and substantially‖ (at [26]);

(c) the addition of the word ―PACIFIC‖ by the defendant together with a different font and

design;

47

(d) the way the proprietor actually used his mark which can be regarded as ―the paradigm use‖

of the mark in a normal and fair manner (at [28]);

(e) the proprietor‘s constant use of the ―POLO‖ mark with his other trade marks (such as the

polo player device and the ―Polo Ralph Lauren‖ name);

(f) the courts‘ reluctance to allow any company to monopolise a descriptive word in the

English language;

(g) the different conceptual images conveyed by the marks;

(h) the profile and perception of the ordinary purchaser of the goods in question;

(i) different prices of the parties‘ goods;

(j) the different market segments;

(k) the different trading circumstances of the parties‘ goods; and

(l) the different locations where the parties‘ goods bearing the marks were sold.

16.65 Accordingly, he ruled against the plaintiff.

16.66 Polo/Lauren (supra para 16.57) was cited with approval in Richemont International SA v

Goldlion Enterprise (Singapore) Pte Ltd [2006] 1 SLR 401 (―Richemont‖). The respondent applied to

register ―Jean Mercier‖ in a series of three marks in Class 14 for such goods as watches, clocks and

jewellery. The appellant, who owned the mark ―Baume & Mercier‖ in respect of similar goods,

objected to the application based on, amongst others, s 8(2)(b) of the Act. The section states:

A trade mark shall not be registered if because —

(a) …; or

(b) it is similar to an earlier trade mark and is to be registered for goods or services

identical with or similar to those for which the trade mark is protected,

there exists a likelihood of confusion on the part of the public.

16.67 The practical effect of this provision is that the proprietor of an earlier trade mark or earlier

right can rely on the relative grounds to object to the registration and use of the sign. This serves to

ensure that trade marks whose use can be successfully challenged before the courts are not registered.

Another effect is that the infringement cases are relevant in ascertaining the nature and scope of each

of the relative grounds, as Andrew Ang J did inRichemont.

16.68 The judge was of the view that the section required that the likelihood of confusion must arise

from the identity or similarity between the trade marks as well as from the identity or similarity

between the goods or services. ―If the likelihood of confusion is caused by other factors, it will not

suffice‖ (at [21]). He then held (at [24]) that:

[O]nce it was found that the marks were dissimilar, the (Principal Assistant Registrar) was able

to say, without more, that no likelihood of confusion arose even though she had found that the

goods were similar. In reaching that conclusion, she did not misdirect herself on any principle.

Seeing as I have earlier held that her finding that the marks were not similar could not be

faulted, her final conclusion that the opposition under s 8(2) failed must be upheld.

48

16.69 It is respectfully suggested that this decision is correct on the facts, as the parties‘ marks are, or

are to be, deployed in relation to watches which are likely to be sold through the same trade channels

and to the same market segment.

16.70 In Nation Fittings (supra para 16.7) (discussed above in relation to other issues), Phang J

entered the debate concerning the proper approach to be taken in construing s 27(2). The case arose

because Oystertec had obtained, and executed, a search warrant in respect of certain pipe fittings

supplied by Nation Fittings. It was alleged that the pipe fittings infringed Oystertec‘s registered trade

marks for various shapes of the fittings. Nation Fittings disputed the allegations and commenced legal

proceedings for groundless threat of trade mark infringement under s 35 of the TMA. Oystertec in

turn instituted its own proceedings against Nation Fittings‘ distributor in Singapore (namely, Best

Ceramic Pte Ltd) for trade mark infringement as well as passing off. The proceedings were

consolidated and heard in December 2005 by Phang J.

16.71 One of the issues was whether there had been infringement of s 27(2)(b) of the Act (set out

above). On this, Phang J noted (at [90]) the ―global assessment‖ approach of the ECJ as well as its

rejection by Lai J inPolo/Lauren (supra para 16.57) and then suggested (at [95]) that:

[T]here is in fact no inherent contradiction between the global assessment test on the one hand

and the more specific approach embodied within the older English jurisprudence on the other

hand. In many ways, both are two sides of the same coin. The global assessment approach

appears to be the ―umbrella doctrine‖ – a shorthand way, if you like, of expressing

the general approach to be adopted. Looked at in this light, it is, in the nature of things, phrased

at a relatively high level of generality. However, in order to implement, as it were, the global

assessment test, there is an obvious need to have regard not only to the particular facts of the

case at hand but also to more specific factors that are relevant to such a case. However, I do

agree with Lai J that, consistent with the actual language of s 27(2)(b), the focus must, in the

final analysis, be on factors that centre on a situation where the likelihood of confusion arises

from the similarity in question. There will be a conflict between the global assessment test and

the English approach only if the former eschews the concept of similarity altogether – which

does not appear to me to be the case. [emphasis added in bold italics]

16.72 This appears to indicate a middle ground between the two approaches, as it reiterates the need

to consider all relevant factors, including factors specific to the case at hand.

16.73 In OTO Bodycare Pte Ltd v Hiew Keat Foong [2005] SGHC 133 (―OTO Bodycare‖), the two

conflicting approaches were apparently not brought to the attention of Tay Yong Kwang J. The action

concerned infringement of the plaintiff‘s ―OTO‖ trade mark by the defendant‘s use of the words

―OTC Bodycare‖ and ―Electro-Relaxologist‖ in connection with an electrical reflexology apparatus

which the plaintiff was distributing using the name ―OTO Electro-Reflexologist‖.

16.74 The judge had no difficulty finding infringement, stating that it was too much of a coincidence

that the defendant‘s mark had the same first two letters as the plaintiff‘s trade mark and a third letter

which was dressed up to look remarkably like the letter ―O‖ and horizontal stripes across the middle

portion of the letters. He also said that ―OTO‖ was, phonetically and visually, a very simple word

which the literate and illiterate could easily remember. The important question was whether they

would think they saw ―OTO‖ when the letters were actually ―OTC‖ disguised to look like ―OTO‖.

Applying an objective test, he was of the view that there was no doubt that confusion was likely in the

circumstances.

Must there be trade mark use for purposes of trade mark infringement?

16.75 Nation Fittings (supra para 16.7) is also to be welcomed for its clarification regarding one of

the most difficult issues of the new law. In the UK and EU, there are cases on both sides of the divide

49

and, although the ECJ has recently opined that trade mark use is not a prerequisite, it would be

imprudent to believe that the debate has abated.

16.76 At root, the question is whether there should be a change to a fundamental and well-tested

principle of law in the absence of any clear legislative indication. Under the old law, use of a mark to

denote the origin of goods or services is an essential prerequisite to infringement. As Dillon LJ

in Mothercare UK Ltd v Penguin Books Ltd[1988] RPC 113 at 118 trenchantly observed:

Indeed it stands to reason that a Trade Marks Act would only be concerned to restrict the use of

a mark as a trade mark or in a trade mark sense, and should be construed accordingly. If

descriptive words are legitimately registered in Part A of the register, there is still no reason

why other people should not be free to use the words in a descriptive sense, and not in a trade

mark sense.

16.77 In the same vein, Bingham LJ said at 123:

To conclude otherwise would be to hold (where a trade mark consists of an English word or

words) that Parliament intended to grant the proprietor of the trade mark what would in effect

be commercial copyright in that word or those words. Had that been the intention, the drafting

of the section could have been a great deal simpler.

16.78 The wording of s 27 in our Act appears to indicate that this important principle is to be departed

from. Like its UK counterpart, it refers to use of a ―sign‖, not a ―trade mark‖. This is significant,

given that the word ―sign‖, as defined in s 2(1) of the Act, is neutral as regards the requirement of

distinctiveness. This suggests that any use of a sign in the circumstances set out in s 27 may amount to

an infringement, even though the sign is not used to denote the origin of goods or services. This

suggestion was in fact accepted in the UK in British Sugar (suprapara 16.56)

and Philips (supra para 16.13). These cases were soon followed by Arsenal Football Club Plc v

Reed (see [2001] RPC 46 (Ch), [2003] RPC 9 (ECJ) and [2003] RPC 39 (CA)) and the House of

Lords case of R v Johnstone [2003] FSR 42 where the ECJ and the UK courts gave conflicting views.

16.79 After reviewing these cases and the issue at length, Phang J in National Fittings expressed

preference for the requirement for trade mark use, stating (at [62]) that:

[T]here ought to be the requirement that there be use as a trade mark in the context of alleged

trade mark infringement. I draw support not only from R v Johnstone as well as the views of the

learned author cited at [60] above but also from the fact that such a requirement will also ensure

that the legal protection of the rights of registered trade mark holders is so well-justified that it

cannot be said that such holders are exploiting what might otherwise be labelled, in effect, as

unnecessary or excessive monopoly rights. After all, trade marks have, in the final analysis, to

do with the origin of the goods concerned …

16.80 It is respectfully suggested that the preference is well founded. If not, it would give rise to a

number of inconsistencies in our Act. First, under s 7(1) of the Act, a sign is registrable if it is

distinctive (either inherently or through use) and capable of indicating a trade origin (that is, a

connection in the course of trade between a trade mark proprietor and his goods and services). The

registration would permit the proprietor to prevent unauthorised use of an identical or similar sign

because of the likelihood of confusion that exists on the part of the public. However, if the registration

also gives the proprietor the right to prevent non-trade-mark use of the sign, it will effectively have

created a new and very wide monopoly of unlimited duration over any use of a sign in ways which are

themselves not distinctive or do not in any way give rise to the likelihood of confusion. Second,

s 22(1) provides that the registration of a trade mark may be revoked if the mark has not been used for

a period of five years. The fact that the proprietor may have used it as a non-trade mark and can stop

others from using it in that way would be irrelevant. Third, s 24(1)(a) provides for the defence of

acquiescence where the proprietor of an earlier trade mark or right has failed to take action for a

50

period of five years to oppose the use of a later trade mark in relation to the goods or services in

relation to which it has been so used. The defence would not apply if the use of the later mark is not

trade mark use. Fourth, s 35 provides that certain applications or uses of ―the mark‖ are not actionable

for groundless threats of infringement proceedings at the suit of the person threatened. However, if the

mark is used in a non-trade-mark manner, the threat remains actionable.

Likelihood of confusion “on the part of the public”

16.81 As noted above, under s 27(2) of the Act, there is no infringement by the use of a similar sign in

relation to goods or services identical with or similar to those for which the trade mark is registered if

it does not give rise to a likelihood of confusion ―on the part of the public‖. In Nation

Fittings (supra para 16.7), there was an issue as to who the relevant public might be in relation to the

subject pipe fittings.

16.82 It has hitherto been understood that this would depend on the facts of each case, bearing in

mind the guidance from a series of ECJ cases (such as Canon v MGM (supra para 16.55) and Lloyd

Schuhfabrik Meyer (supra para 16.55) that the person to be considered in assessing the likelihood of

confusion is the ordinary consumer who is neither too careful nor too careless, but reasonably

circumspect, well informed and observant. There must also be an allowance for his defective

recollection, which will vary with the goods or services in question. Such a person would usually

perceive a mark as a whole and not proceed to analyse its various details.

16.83 It is clear that the relevant public does not necessarily mean the general public. It would depend

on the nature of the products. The more specialised the product, the narrower the relevant public is

likely to be. InWagamama Ltd v City Centre Restaurants Plc [1995] FSR 713 at 732, Laddie J said:

A judge brings to the assessment of marks his own, perhaps idiosyncratic, pronunciation and

view or understanding of them. Although the issue of infringement is one eventually for the

judge alone, in assessing the marks he must bear in mind the impact the marks make or are

likely to make on the minds of those persons who are likely to be customers for goods or

services under the marks. Not all customers are the same. It is therefore sometimes of

assistance for the court to hear evidence from witnesses who will help him to assess the variety

of ways in which members of the target market will pronounce the marks and what, to them,

will be the visual or phonetic impact of the marks. [emphasis added]

16.84 The effect is that this would place a high burden on trade mark proprietors of specialised

products or products which cater to a narrow or specialised segment of the market. The market for

such products would usually comprise discerning and knowledgeable customers who are familiar with

the products and whose interest in the products is unaffected by trade marks and affected, instead, by

their ability to perform the requisite tasks. The extent of likelihood of confusion on the part of such

customers is likely to be minimal in many situations.

16.85 In Nation Fittings (supra para 16.7), Phang J noted the evidence of the plaintiff‘s witness who

said that 99% of its pipe fittings were sold to hardware shops who would then, presumably, resell

them to plumbers and contractors. He therefore concluded that the relevant public in the case would

be plumbers and contractors and, if so, such customers were unlikely to be confused by the parties‘

pipe fittings. They would purchase the pipe fittings not only on the basis of the marks but also on the

particular specifications and attributes of the products.

Bad faith

16.86 Section 7(6) of the TMA states that a trade mark shall not be registered if or to the extent that

the application is made in bad faith.

51

16.87 It is intrinsically difficult to define the term ―bad faith‖. It is one of those chameleon-like terms

whose meaning must be sought from the language, scheme and purpose of the relevant legislation.

The search for its meaning in the context of the TMA is not made easier by the curious contradictory

linguistic evidence in the various parts of the Act, such as ―bona fide‖ in s 5(2), ―genuine‖ in s 22(1)(a)

and ―honest‖ in s 9(1).

16.88 In Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 at 379, Lindsay J

provided a formulation which has now often been cited:

I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I

would hold, includes also some dealings which fall short of the standards of acceptable

commercial behaviour observed by reasonable and experienced men in the particular area [of

trade] being examined.

16.89 Thus, the term ―bad faith‖ embraces not only actual dishonesty but also dealings which would

be considered as commercially unacceptable by reasonable and experienced people in the trade in

question.

16.90 An allegation that a trade mark has been applied for in bad faith is a serious allegation, being an

allegation of a form of commercial fraud. Just as a plea of fraud should not lightly be made, bad faith

allegations should not be made unless they can be fully and properly pleaded, and should not be

upheld unless bad faith is distinctly proved, and this is rarely possible by a process of inference from

the facts (see, eg, McDonald‟s Corp v Future Enterprises Pte Ltd [2005] 1 SLR 177 (―McDonald‟s‖)

at [78]). Phang J in Nation Fittings (supra para 16.7) was keenly mindful of this (see [138]) when he

held (at [140]) that it was not demonstrated to his satisfaction that there was in fact bad faith on the

part of the plaintiff when it applied to register the subject trade mark in 1981. He had earlier found

that there was no use of the subject mark as such because it was subsumed within the other elements

with which it was used (see para 16.43 above). The defendant tried to argue from this finding that

there was therefore bad faith on the part of the plaintiff when it applied to register the mark. The judge

was, however, not persuaded, stating that the finding was one based on law and did not necessarily

lead to the conclusion of fact that there was bad faith on the part of the plaintiff at the date of the

application.

Trade mark offence

16.91 Pursuant to s 49 of the TMA, it is an offence for a person to:

(a) import into Singapore for the purpose of trade or manufacture;

(b) sell, offer or expose for sale; or

(c) have in his possession for the purpose of trade or manufacture

any goods to which a registered trade mark is falsely applied (unless he can prove the two statutory

defences set out in the section). The words ―falsely applied‖ have the same meaning in this context as

in s 47(2). Specifically, a person is regarded as falsely applying a registered trade mark to goods if he,

without the consent of the proprietor of the registered trade mark, applies the trade mark or a sign

which is likely to be mistaken for the trade mark to goods which are not the genuine goods of the

proprietor or his licensee (see s 47(5)). Thus, the offence is made out if the Prosecution proves:

(a) the fact of importation, sale, exposure for sale and possession of the offending goods for

the purpose of trade or manufacture;

(b) there had been applied to the goods the registered trade mark or a sign which is likely to be

mistaken for the trade mark;

52

(c) the application was without the consent of the proprietor of the registered trade mark; and

(d) the goods are not the genuine goods of the proprietor or his licensee.

16.92 Once these four elements are established, the onus is on the accused person to prove that he had

the consent of the proprietor of the registered trade mark (see s 47(6)). The question in Cigar Affair v

Pacific Cigar Company [2005] 3 SLR 633 (―Cigar Affair‖) is whether it is necessary for the

Prosecution to provemens rea or knowledge of or intention on the part of the accused person to

infringe the registered trade mark. The applicant argued for the affirmative in an attempt to set aside

two search warrants issued against it, citing the case of Lance Court Furnishings Pte Ltd v PP [1993]

3 SLR 969 (―Lance Court‖). However, Woo Bih Li J correctly pointed out that Lance Court was a

copyright case concerning a provision (namely, s 136 of the Copyright Act (Cap 63, 1999 Rev Ed))

whose wording was completely different from s 49 of the TMA.

16.93 The applicant also argued that the documents that were seized pursuant to the search warrants

ought not to have been included in the warrants – in other words, the trade mark proprietor had no

right to seize such documents. Again, it relied on a case (namely, SM Summit Holdings Ltd v

PP [1997] 3 SLR 922 (―SM Summit‖)) which had since been rendered irrelevant in this context by

recent legislation. Specifically, prior to 1 July 2004, seizure of documents was not allowed unless they

themselves infringe a trade mark. This position was replaced on that date by s 53A(3) of the TMA.

The section relevantly states that:

If information is given upon oath to a court that there is reasonable cause for suspecting that

there is in any premises or conveyance —

…

(c) any document which is evidence that an offence under section 46, 47, 48, 49 or 52

has been committed,

the court may issue, either unconditionally or subject to such conditions as the court thinks fit, a

warrant authorising a police officer to enter and search the premises or conveyance for any …

document referred to in the warrant, whether specifically or in any general category, and to

seize any such … document found at the premises or conveyance.

16.94 Thus, a search warrant and search need not now be confined to the documents which are the

subject of the trade mark offence covered by the search warrant. They can be seized if they ―evidence‖

that an offence under s 46, 47, 48, 49 or 52 of the TMA has been committed. This new legal position

was recently affirmed in Cigar Affair.

16.95 Woo J left open issues concerning the amount of information to be given upon oath to the court

before it will issue the appropriate search warrant. Is it sufficient for the information to merely state

that there is reasonable cause for suspecting that there are documents in the premises which are

evidence of any offence under the relevant section(s) of the Act? Or, must the information further

state the reasons for the suspicion? It is suggested that the information should further set out the

reasons for the suspicion. The words ―reasonable cause for suspecting‖ connote the existence of

reasonable grounds for the suspicion. These grounds should be disclosed to the court. The court

should not rely unquestioningly on the information provided but should take into account all relevant

matters derived or inferred from the information or upon inquiry (see also Heng Lee Handbags Co Pte

Ltd v PP [1994] 2 SLR 760 at 767, [29]).

16.96 The applicant further objected to the seizure of its documents on the ground that they contained

highly confidential information (such as customers‘ names, their contact details and price lists) which

could be seen by the trade mark proprietor who was its competitor. This is a practical difficulty which

arises frequently. It can, and does, cause hardship to legitimate businesses which are accused of

53

committing a trade mark offence which has yet to be proven. It is suggested that this is another

illustration of the drawbacks of the existing practice of relying on the criminal process as a means to

enforce IP rights. As Yong Pung How CJ said in SM Summit (suprapara 16.93 at [7]), the situation

would become intolerable ―if further checks are not put in place in both the issue and execution of

search warrants‖.

16.97 Whilst acknowledging that the concerns were legitimate (see Cigar Affair v PP [2005] 3 SLR

648 at [20]), Woo J was of the view that if the documents evidenced an offence under the TMA, they

could be seized, irrespective of whether the information therein was confidential. In respect of

documents that contained information wholly unconnected with the offence as well as information

which was evidence of the offence, he suggested that the parties‘ solicitors should attempt to resolve

the situation by first reviewing the documents and ascertaining the confidential information and how

they might be kept confidential. If the solicitors could not agree, they could then refer the matter to

the court for resolution.

16.98 Being dissatisfied with the court‘s decision, the applicant brought a motion for certain questions

to be reserved for determination by the Court of Appeal (see Cigar Affair v PP (supra para 16.97)).

The questions included:

(a) whether it was necessary within a complaint filed pursuant to s 53A of the TMA to aver or

refer to the mental element under s 49 prior to the issuance of a search warrant;

(b) whether the scope of a search warrant should be confined or restricted to only the goods as

set out in the complaint as part of the ―information given‖ under s 53A(3)(a);

(c) whether the scope of a search warrant should be confined or restricted to only the

documents as set out in the complaint as part of the ―information given‖ under s 53A(3)(c); and

(d) whether there is any mechanism or procedure in determining the scope or relevancy of the

documents being seized within the scope of the warrant issued under s 53A(3)(c) so as to

prevent abuse or wrongful disclosure of confidential or sensitive information which is

irrelevant to the subject matter of the complaint or search warrant.

16.99 Woo J held that each of these questions did not raise any question of law which was of public

interest. In particular, as regards question (d), he said that s 53A(3)(c) clearly did not contain any

mechanism or procedure to prevent abuse or wrongful disclosure of confidential or sensitive

information. He opined that although there might have to be some rule or regulation under the Act or

practice directions to guide solicitors and parties on the matter, common sense and a practical

approach should prevail in solving this practical difficulty. This harks back to Yong CJ‘s suggestion

in SM Summit (supra para 16.93) to put in place further checks ―in both the issue and execution of

search warrants‖ (see para 16.96 above).

Passing off

16.100 The cumulative elements necessary to establish the common law action of passing off in

respect of a trade mark are well known:

(a) reputation and goodwill in Singapore belonging to the plaintiff;

(b) misrepresentation by the defendant in the course of trade to prospective or ultimate

customers as a result of the use of an identical or confusingly similar mark; and

(c) resulting damage or the likelihood of damage arising as a result.

Reputation and goodwill

54

16.101 At the outset of this review, we alluded to the difficulty of protecting the shape of a product

under the previous statutory regime. That difficulty is also found at common law where the courts

have been rather reluctant to grant protection to the shape or ―get-up‖ of a product. For instance,

in G Hensher Ltd v Restawhile Ltd[1973] 1 WLR 144, Graham J said at 150:

I do not think that the plaintiffs have established sufficiently strongly that the shape of their

articles is so well known amongst members of the public in contrast to members of the trade as

to justify me holding that there is likely to be confusion amongst a substantial number of such

members of the public. Chairs and settees are not normally bought by members of the public

for the reason that they are the goods of a particular manufacturer; they are bought because the

buyers like the shape, the comfort or the look, having regard also to the particular price of the

suite in question, and the choice is quite regardless of who made them.

16.102 The reluctance is also generally prevalent in Singapore: see, eg, Malaysia Dairy Industries

Pte Ltd v Yakult (Singapore) Pte Ltd [1980] FSR 43; [1978–1979] SLR 524, Clairol Incorporated v

Too Dit Co[1980–1981] SLR 274, Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte

Ltd[1991] SLR 133 and Saga Foodstuffs Manufacturing (Pte) Ltd v Best Food Pte Ltd [1995] 1 SLR

739. This list may now include Nation Fittings (supra para 16.7) and OTO

Bodycare (supra para 16.73). In the former case, Phang J held that the plaintiff failed to prove that

there was reputation and goodwill in respect of its pipe fittings which had a ribbed-shape profile. He

was of the view that, to the relevant public, the focus was not on the ribbed shape as such, given that it

was merely functional and, to that extent, was considered to be generic.

16.103 In OTO Bodycare, which concerned infringement of the plaintiff‘s ―OTO‖ trade mark by

the defendant‘s use of the words ―OTC Bodycare‖ and ―Electro-Relaxologist‖ in connection with an

electrical reflexology apparatus which the plaintiff distributed using the name ―OTO Electro-

Reflexologist‖, Tay J was not persuaded that the shape and get-up of the plaintiff‘s massage machine

and its sales method had reputation and goodwill. Although accepting the plaintiff‘s argument that the

defendant was a copycat in many aspects, he said (at [87]) that:

[T]he public‘s usual question about whether the defendant‘s machine was an OTO product was

probably due to the fact that people were more familiar with the OTO name, which had been

advertised extensively, and the fact that the defendant had used a term which looked like

―OTO‖, rather than due to their instant recognition of the design and shape of the machine.

Misrepresentation

16.104 Here, the plaintiff must demonstrate that the defendant‘s misrepresentation misleads or is

likely to mislead a significant section of the relevant public to believe that the defendant‘s goods or

services are those of the plaintiff or that they are of the same nature or quality as the plaintiff‘s goods

or services.

16.105 In general, the relevant public comprises persons who would take ordinary, sensible

precautions when purchasing goods or services. The attention and care to be taken by such persons

would depend on the type of goods or services concerned. In McDonald‟s (supra para 16.90 at [64]),

the Court of Appeal opined that, with widespread education and a public in Singapore which was

constantly exposed to the world, either through travel or the media, one should be slow to think that

the average persons were easily deceived or hoodwinked. Similarly, in Nation

Fittings (supra para 16.7), Phang J came to the conclusion that the relevant average persons in the

case (namely, plumbers and contractors) were unlikely to be confused, citing as a ―critical factor‖ the

significant price differences between the parties‘ pipe fittings. With respect, it is suggested that price

differences should merely be a factor rather than a critical factor as, otherwise, passing off claims can

then easily be defeated.

Damage

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16.106 Finally, to constitute the tort of passing off, the plaintiff must show that the

misrepresentation causes or, in a quia timet action, is likely to cause damage to his goodwill. The

damage must be real or substantial, and is usually evidenced by loss of profits. If the plaintiff and the

defendant are in competition, the courts usually infer that damage has occurred or is likely to occur.

16.107 The effect of Phang J‘s decision in Nation Fittings (supra para 16.7) is that the inference

may be misplaced. Given that the plaintiff has to prove passing off pursuant to the general civil

standard (that is, on a balance of probabilities), he said that the proof of damage or likelihood of

damage must be established as a matter of probability, not mere possibility. The plaintiff has to prove

more than a mere likelihood of loss as a result of the relevant misrepresentation. This is a welcome

reminder to the IP Bar in Singapore not to make the facile assumption that damage, or the likelihood

of damage, is the inevitable concomitant of misrepresentation.

Copyright

The requirement of originality for authors‟ works

16.108 In Anglo-American copyright law, authors‘ works (literary, dramatic, musical and artistic

works) are protected only if they are ―original‖. This requirement is found in s 27(1) of the Singapore

Copyright Act (Cap 63, 1999 Rev Ed). There is, however, no statutory definition of ―originality‖; this

has been left to be developed by the courts. A succinct definition of this term may be found

in Re AUVI Trademark [1992] 1 SLR 639. In this case, Chao Hick Tin J (as he then was), who had to

decide whether the logo in question was an original artistic work in which copyright subsisted, said (at

648,

[32]–[33]):

Originality in this regard does not mean novelty or uniqueness; nor does it necessarily involve

inventiveness. All that needs to be shown is that the author created it and has not copied it from

another, and that he has expended towards its creation a substantial amount of skill and labour.

What will be the exact amount of skill, labour or judgment required cannot be defined in

precise terms: see Lord Atkinson in Macmillan & Co Ltd v Cooper (K&J) at p 190.

...[S]implicity per se does not prevent a work from acquiring copyright …

16.109 At first glance, the reference in this passage to the author not having copied the work from

another suggests that a work which is copied from pre-existing sources – what is sometimes called ―a

derivative work‖ – cannot be an original work. This, it is respectfully submitted, was not what Chao J

intended. It is important to note that Chao J cited with approval Macmillan and Company, Limited v K

and J Cooper (1923) LR 51 IA 109 (―Macmillan‖), a case involving a derivative work (a university

textbook consisting of excerpts from existing works with appropriate notes for students), and the

Privy Council in this case was unequivocal in its decision that a product that was derived from ―raw

materials‖ could well be an ―original‖ work. Lord Atkinson had observed (at 119):

To secure copyright for this product it is necessary that the labour, skill and capital expended

should be sufficient to impart to the product some quality or character which the raw material

did not possess, and which differentiates the product from the raw material.

16.110 In other words, the fact that a work is derived from pre-existing sources is, in itself, no bar

to the work being considered an original work for the purposes of copyright law. Such a derivative

work is an original work so long as sufficient skill, labour and judgment has been expended in its

creation such that it can be said to be different from the raw materials from which it is derived. This

principle has been followed in other English cases such as Interlego AG v Tyco Industries Inc [1989]

AC 217 (―Interlego‖). Interlego elaborated on this principle in the following manner (at 263):

56

There must in addition be some element of material alteration or embellishment which suffices

to make the totality of the work an original work. Of course, even a relatively small alteration

or addition quantitatively may, if material, suffice to convert that which is substantially copied

from an earlier work into an original work. Whether it does so or not is a question of degree

having regard to the quality rather than the quantity of the addition.

16.111 Any doubt that derivative works can be original works under Singapore copyright law

should have been laid to rest in Real Electronics Industries Singapore (Pte) Ltd v Nimrod Engineering

Pte Ltd[1996] 1 SLR 336. There, although the plaintiffs‘ design for the circuit board of a fax modem

was derived from schematic diagrams of another party (Navin), MPH Rubin J referred

to Interlego and concluded (at 348, [38]) that the plaintiffs‘ design was an original artistic work

because:

[I]t is neither a mere reproduction of Navin‘s layout with minor modifications nor can it be

considered an insignificant variation of Navin‘s design. The visual differences in the work are

substantial and significant. The contentions to the contrary by counsel for the defendants …, in

this regard, do not appear to focus on the actual subject matter, namely, the design, but had

been directed, somewhat tangentially, at the source material, namely, schematic diagrams.

16.112 The same mistake – focusing on the source materials rather than the actual subject matter

of the plaintiff‘s claim – was made by the defendants in Virtual Map (Singapore) Pte Ltd v Suncool

International Pte Ltd [2005] 2 SLR 157 (―Virtual Map‖). The subject matter of the plaintiff‘s claim

was a map image created by the plaintiff based on cartographic vector data obtained from the

Singapore Land Authority (―SLA‖). The plaintiff was in the business of creating and licensing the use

of digital street maps in Singapore. They had a non-exclusive licence from SLA to reproduce and

publish this data on the Internet. The plaintiff worked on this data, producing as end results full-

coloured map images of the streets of Singapore. These digital map images were put up on the

plaintiff‘s website, ready to be licensed out to anyone who was interested in using them. The

defendant reproduced on its website, without obtaining a licence from the plaintiff, one of these map

images (the one which disclosed the location of the defendant‘s premises). The plaintiff sued for

infringement of its copyright in the map image (an artistic work), and applied for summary judgment.

16.113 In defending the application for summary judgment, the defendant challenged the

plaintiff‘s locus standi to maintain the action, arguing that copyright in the map image belonged to

SLA which had only granted the plaintiff a non-exclusive licence. The fallacy of this argument was

immediately apparent to the district judge who noted that the defendant had confused two different

things: the raw material which formed the vector data used by the plaintiff as a starting point for its

map images, and the finished products, that is, the map images themselves.

16.114 The district judge‘s observations (see [2004] SGDC 190) were fully endorsed by Lai Kew

Chai J who heard the defendant‘s appeal against the grant of summary judgment. Lai J crystallised the

issue as follows (at [13]):

The question of how far a work, which has been copied from an earlier work, can be regarded

as original is a matter of fact and degree. What is needed is an addition of some element of

material alteration or embellishment which suffices to make the totality of the work an original

work: per Lord Oliver of Alymerton in Interlego AG v Tyco Industries Inc [1989] AC 217 at

262 et seq.

16.115 Comparing the map image (copied work) against the cartographic vector data (the earlier

work), the judge specifically referred to the plaintiff‘s ―[a]dditions to the cartographic raw material

[which] included a set of building names and locations, road networks, traffic directions, a scale and

full colour‖ (at [12]). He found that the contrast between the raw data and the plaintiff‘s map image

was ―marked‖ (ibid); this was another way of saying that there was ―material alteration or

embellishment‖ which sufficed to make the totality of the map image an original copyright work

57

which belonged to the plaintiff. Such copyright, Lai J added (at [14]), was ―independent of any

copyright which may separately exist in relation to the cartographic raw material‖.

16.116 Two other aspects in the concept of ―originality‖ were dealt with in Lai J‘s judgment. One

of them arises from the reference that the copyright in the map image was separate and independent of

any copyright in the cartographic raw materials. What if, in producing the map images, the plaintiff

was infringing SLA‘s copyright in the cartographic raw materials (eg by acting outside of the licence

agreement)? Does the fact that the plaintiff‘s work is an infringing work have any impact on whether

it can be an original work in which copyright subsists? This question has been settled in the UK in

cases such as Redwood Music Ltd v Chappell & Co Ltd[1982] RPC 109 and ZYX Music GmbH v

Chris King [1995] FSR 566 (―ZYX Music‖). Although this question was not raised before Lai J – there

being no allegation from SLA that there was unauthorised use by the plaintiff of its vector data – the

judge dealt with this issue in obiter. Relying on ZYX Music, he summarised the applicable principles

as follows (at [10]):

First, a plaintiff‘s work, even if it infringes the copyright in another‘s work, may nonetheless

enjoy copyright, and the fact that the plaintiff‘s work does so infringe a third party‘s work does

not constitute a defence to proceedings instituted by the plaintiff. Second, copyright is still

enforced in such a situation where only an incidental (let alone an unintentional) civil wrong

involving no moral obloquy by the plaintiff against a third party is involved.

16.117 In other words, even where a plaintiff in creating a work has copied from an earlier work

and in so doing has infringed the copyright in the earlier work, the assessment of whether the

plaintiff‘s work is an original work is still governed by the principles enunciated

in Macmillan (supra para 16.109) and Interlego (suprapara 16.110): If the plaintiff‘s work is

sufficiently different from the copied work, a separate and independent copyright arises in the

plaintiff‘s work, and the fact that the plaintiff‘s work is an infringing work has no impact on this

conclusion. The plaintiff will be able to enforce his copyright against a defendant who copied his

work without his authority, and it is no defence to such an action that the plaintiff himself has

infringed another‘s copyright. There is, however, an exception to this principle, namely, where the

plaintiff is guilty of some ―moral obloquy‖. This exception merits some elaboration. The basis

underlying this exception, as explained in ZYX Music, is the well-established principle that courts may

refuse to enforce copyright on public policy grounds. The following are examples of cases where the

English courts had refused to enforce the plaintiff‘s copyright on grounds of public policy: where the

plaintiff‘s work was a ―dishonest and misleading work‖; where the plaintiff‘s work was of a ―grossly

immoral tendency‖; where the plaintiff‘s work exploited a breach of confidence ―reeking of

turpitude‖ eginvolving the public interest in maintaining the secrecy of national security issues. It was

made clear in ZYX Musicthat the mere existence of the plaintiff‘s infringement of a third party‘s

copyright did not fall within this exception.

16.118 It should be mentioned that, in the UK, the juridical basis for the court‘s refusal to enforce

a copyright on the ground of public policy is found in s 171(3) of their Copyright, Designs and Patents

Act 1988 (c 48) (UK) which explicitly preserves ―any rule of law preventing or restricting the

enforcement of copyrights on grounds of public interest or otherwise‖. The Singapore Copyright Act

does not have an equivalent provision.

16.119 The other aspect of Lai J‘s judgment that has a bearing on the scope of ―originality‖ is his

analysis of the French case SA Editions du May v La Manufacture des Pneumatiques Michelin [1992]

ECC 28(―Michelin‖). In Michelin, the plaintiff published a map of the whole of France which was

copied by the defendant. The French Court of Appeal held that the plaintiff‘s map was an original

work because it could be distinguished from maps of France published by other parties in the choice

of localities, curiosities and symbols, the selection and classification of roads, etc from the road

network. Relying on Michelin, the defendant argued that, when determining whether the plaintiff‘s

map image was original, it was relevant to compare the plaintiff‘s map image with maps created by

other parties such as NTUC Income I-Map and SingTel Yellow Pages Pte Ltd. Such a comparison,

58

according to the defendant, would clearly show that the plaintiff‘s map image was substantially

similar to these other maps and accordingly, the plaintiff‘s map image could not be original. Lai J

dismissed the defendant‘s argument as ―misguided‖ (at [19]). He held that the comparison should be

made between the subject matter of the claim, namely the end product of the plaintiff‘s skill and

judgment (the map image) and the raw materials (SLA‘s vector data). He clarified that the comparison

in Michelin between the plaintiff‘s map of France and maps published by other parties was only for

the purpose of proving that it was possible to make different selections from the road network.

16.120 In Lai J‘s analysis, the words ―choices‖ and ―selections‖ appeared many times. This is the

other aspect of the concept of ―originality‖ that is important. In cases involving fact-based works –

street maps being a classic example – it is inevitable that the plaintiff‘s work derived from pre-

existing sources would bear some resemblance to those sources and to other works based on the same

sources. In such cases, where there is less room for the plaintiff to manoeuvre in his manipulation of

the facts when creating a new work, a very important element in this process of creation is the

plaintiff‘s selection and arrangement of the facts. If there is sufficient skill, labour and judgment

involved in this selection and arrangement of the raw materials, the plaintiff will be rewarded with his

own copyright in the end product of his skill, labour and judgment. This is another fundamental

principle in the concept of ―originality‖ in copyright law, so fundamental that it has been enshrined in

s 7A of the Copyright Act in the context of compilation which is protected as a type of literary work.

In particular, s 7A(3) defines a compilation as being a compilation or table of relevant material or data

―which, by reason of the selection or arrangement of its contents, constitutes an intellectual creation‖.

Whether the selection or arrangement constitutes an intellectual creation is a question of fact and

degree, and the famous US case, Feist Publications, Inc v Rural Telephone Service Co Inc (1991)

20 IPR 129 (―Feist‖) – a case involving the White Pages of a telephone directory in which subscribers‘

names and telephone numbers were listed alphabetically – is often cited as the extreme example

where the selection and arrangement of data by the compiler did not cross this threshold.

16.121 The facts of the case before Lai J were far from the Feist scenario. As mentioned earlier,

the judge found that the plaintiff‘s map image had additional information such as building names and

traffic directions. Further, other online maps adopted a different colour scheme, building and names

and level of detail. He was thus satisfied that the plaintiff‘s skill and judgment in the embellishment of

the vector data, as well as in making choices as to the selection of the different information to include

in its map image, was deserving of protection.

16.122 Without doubt, Lai J‘s judgment in Virtual Map (supra para 16.112) has made a significant

contribution to a better understanding of the concept of ―originality‖ in copyright law in Singapore.

One last comment will be made in this regard. Lai J, when dealing with Michelin (supra para 16.119),

pointed out that the ―threshold of originality in French copyright law may be considerably higher than

that in Singapore copyright law‖ (at [19]). Therefore, language used by the French court in coming to

the conclusion that there was copyright in the plaintiff‘s map of France – eg, the map was the result of

the plaintiff‘s ―creative endeavours‖ – should be understood in the proper context. Here, the judge is

implicitly warning against any attempt to impose some threshold of ―creativity‖ in the concept of

originality. On this point, he is certainly correct. Chao J (as he then was) in Re AUVI

Trademark (supra para 16.108) had made a similar point when he said that ―originality‖ in copyright

law did not mean ―novelty‖ or ―uniqueness‖ or ―inventiveness‖, and that ―simplicity per se does not

prevent a work from acquiring copyright‖ (at [33]).

16.123 Indeed, unlike common law countries following the Anglo-American concept of copyright

law, civil law countries such as France and Germany use not the term ―originality‖, but ―intellectual

creation‖ and the like, in their copyright law. The view that the threshold of the civilian concept of

―intellectual creation‖ is higher than that of the common law concept of ―originality‖ is shared by

some comparative copyright lawyers such as Prof Ricketson, who noted in his seminal thesis on the

Berne Convention for the Protection of Literary and Artistic Works that ―differences still remain

between national laws as to what constitutes intellectual creation or originality, with the common law

countries generally taking a more relaxed view of this question‖ (see Sam Ricketson, The Berne

59

Convention for the Protection of Literary and Artistic Works: 1886–1986 (Kluwer, 1987) at p 231).

Naturally, because the question whether a work is of sufficient ―originality‖ or ―intellectual creation‖

to be protected by copyright is one of fact and degree, it is very difficult to pinpoint just how much

higher the threshold is in the civil law countries. It is interesting to note that in the EU Directive

on Legal Protection of Computer Programs (91/250/EEC; 14 May 1991), EU members have an

obligation to protect a computer program under their copyright law if, according to Art 1(3) of this

Directive, the computer program is ―original in the sense that it is the author‘s own intellectual

creation‖. Now, would a court in the UK raise the English threshold of ―originality‖ or would a court

in France lower the French threshold of ―intellectual creation‖? Or are the two really that different?

Registered designs

16.124 Prior to 13 November 2000, protection for registered designs was granted under the UK

Designs (Protection) Act to designs which had been registered in the UK under the UK Registered

Designs Act 1949 (c 88) (―UK RDA‖), as amended from time to time. The questions of validity of the

registration and infringement were then governed by the provisions of the UK RDA. In that era, the

leading local decision on registered designs would be the Court of Appeal‘s judgment in Hunter

Manufacturing Pte Ltd v Soundtex Switchgear & Engineering Pte Ltd [2000] 1 SLR 401 (―Hunter

Manufacturing‖) (reviewed in ―Intellectual Property Law‖ (2000) 1 SAL Ann Rev 230 at 244–252).

16.125 As of 13 November 2000, the date on which the Singapore Registered Designs Act 2000

(Cap 266, 2005 Rev Ed) (―Singapore RDA‖) came into force, the scope of protection for designs in

Singapore is circumscribed by the provisions in the Singapore RDA. The first case decided under the

Singapore RDA emerged last year. In Nagasima Electronic Engineering Pte Ltd v APH Trading Pte

Ltd [2005] 2 SLR 641(―Nagasima‖), the plaintiff had a UK registration of a design of an electrical

isolator. Under the transitional provisions of the Singapore RDA, this registration, which was

obtained in August 2000, was deemed a registered design in Singapore and accorded protection by the

Singapore RDA. An electrical isolator is mostly installed in Housing and Development Board

(―HDB‖) flats, embedded in the walls for the purpose of splitting the TV and FM input into TV/FM

ports. The plaintiff sued its rival, the defendant, for making electrical isolators which allegedly

embodied the registered design.

16.126 Lai Kew Chai J tried this action. He held that the registration was invalid and that there was

no infringement because the defendant‘s product was substantially different from the plaintiff‘s

registered design. Only the issue of validity will be reviewed here.

Registration criteria

16.127 Some of the principles applied by Lai J in Nagasima, when assessing the validity of the

registration, hailed from the Court of Appeal‘s judgment in Hunter

Manufacturing (supra para 16.124). As mentioned above, the registered design in this case was

governed by the UK RDA. Nonetheless, the decision of the Court of Appeal remains to some extent

relevant today because, as Lai J noted, the provisions of the Singapore RDA and the UK RDA (as

amended by the Copyright, Designs & Patents Act 1988) are almost identical.

16.128 There are, however, certain material differences in the registration criteria of the two

countries. Lai J pointed to two differences: firstly, the Singapore RDA does not have the requirement

in the UK RDA that the design must have ―eye appeal‖, and secondly, the Singapore RDA has an

additional exclusion of ―must fit‖ features which was absent in the UK RDA. It should be noted that

Lai J was referring to the provisions of the UK RDA as amended by the Copyright, Designs and

Patents Act 1988. The UK RDA has also been further amended by the UK Registered Designs

Regulations 2001 (SI 2001/3949) and 2003 (SI 2003/550). Since the 2001 set of amendments, the UK

no longer has the ―eye appeal‖ requirement; however, there is now a requirement that the design must

have ―individual character‖. Further, the UK now has a ―must fit‖ exclusion similar to Singapore‘s,

60

but not the ―must match‖ exclusion. The differences in the registration criteria between the two

countries, as they exist today, are shown in the table below.

Registration criteria in the Singapore

RDA

Registration criteria in the UK RDA

Design must be ―new‖: s 5 Design must be ―new‖: s 1B

- Design must have ―individual

character‖: s 1B

Design must not be excluded by the

―functionality‖ exception: definition of

―design‖ in s 2(1)(b)(i)

Design must not be excluded by the

―functionality‖ exception: s 1C(1)

Design must not be excluded by the

―must match‖ exception: definition of

―design‖ in s 2(1)(b)(ii)

-

Design must not be excluded by the

―must fit‖ exception definition of

―design‖ in s 2(1)(b)(iii)

Design must not be excluded by the

―must fit‖ exception: s 1C(2)

16.129 The defendants in Nagasima (supra para 16.125) challenged the validity of the plaintiff‘s

registered design on the ground that it was not ―new‖ and that it was excluded by the ―functionality‖

and ―must fit‖ exceptions. Lai J agreed with the defendant on all counts.

16.130 Whether a design is ―new‖ essentially depends on whether it has been made available to the

public in Singapore or elsewhere before the application for registration of the design: see s 5(2) of the

Singapore RDA. Lai J found that the plaintiff‘s registered design was not ―new‖ because electrical

isolators which were identical to the registered design were already on the market – in some cases,

sold by the plaintiff – before the application for registration of the design in August 2000.

16.131 A design is excluded by the ―functionality‖ exception if its features are ―dictated solely by

the function which the article embodying the design has to perform‖: see the definition of ―design‖ in

s 2(1)(b)(i) of the Singapore RDA. This exception exists in the UK RDA. The plaintiff tried to argue

that this exception would not apply if it could be shown that there was at least another possible design

which could perform the same function. This was rejected by Lai J, and rightly so. This point had

already been settled by the Court of Appeal in Hunter Manufacturing (supra para 16.124): The

relevant question to ask, when determining whether a design was caught by the ―functionality‖

exception was whether the features in the design were ―attributable to or caused by‖ the function

which the article had to perform (at [36], citing the formula from the judgment of Lord Pearson inAmp

Incorporated v Utilux Proprietary Limited [1972] RPC 103 at 122), and in this assessment, it was

irrelevant that there were other designs which could perform the same function. Applying this test,

Lai J concluded that the registered design was caught by the ―functionality‖ exclusion because the

registered design had to adhere to certain international, industry and HDB standards in order for the

electrical isolator to perform its function.

16.132 The judge also found that the registered design was caught by the ―must fit‖ exception

because, inter alia, the electrical isolator was shaped in a way to fit the casing box (the internal part

embedded in the wall) and the face plate (the external part visible to the occupier of the HDB flat),

and the specifications of the TV and FM ports were fixed by industry and international standards.

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16.133 The ―must fit‖ exception is found in the definition of ―design‖ in s 2(1)(b)(iii) of the

Singapore RDA. As mentioned above, a similar ―must fit‖ exception was introduced into the UK

RDA via the Registered Designs Regulations 2001: see s 1C(2) of the UK RDA. It should be noted

that the English s 1C(2) is not identical with the Singapore s 2(1)(b)(iii). A comparison of the two is

set out below:

(a) Section 1C(2) of the UK RDA excludes registration of ―features of appearance of a

product which must necessarily be reproduced in their exact form and dimensions so as to

permit the product in which the design is incorporated or to which it is applied to be

mechanically connected to, or placed in, around or against, another product so that either

product may perform its function‖.

(b) Section 2(1)(b)(iii) of the Singapore RDA excludes registration of features which ―enable

the article to be connected to, or placed in, or around or against, another article so that either

article may perform its function‖.

16.134 The Singapore ―must fit‖ exception is derived from the ―must fit‖ exception in

the unregistered designregime in the UK Copyright, Designs & Patents Act 1988: see s 213(3)(b)(i)

thereof. As such, judicial interpretation of the English s 213(3)(b)(i) would be relevant to Singapore.

There are two English decisions which provide some insight into the purpose and scope of this

exception. The first case is A Fulton Co Ltd v Grant Barnett & Co Ltd [2001] RPC 16, which

involved the design of a case to hold a folded umbrella. In his judgment, Park J said (at [73]–[74]):

[Section 213(3)(b)(i)] is often referred to as the interface or the ―must fit‖ exclusion. It is

generally accepted that its main purpose is to prevent design right being claimed in respect of

spare parts … There are indications in the developing case law of design right that the

provision should be construed by reference to its purpose, and should not be given a breadth

which would take it far beyond what it was intended to achieve.

… I am not prepared to accept [the defendant]‘s submission that, because the [umbrella] case is

designed to contain the folded umbrella, therefore section 213(3)(b)(i) applies and prevents

design right subsisting in the case. It would in my view be unacceptable to construe the

provision as meaning that any article which is shaped so as to cover or contain another article

cannot qualify for design right.

16.135 The other case is Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289 (―Ocular

Sciences‖), which involved the design of soft contact lenses. Laddie J (as he then was) said (at 424):

[Section 213(3)(b)(i)] is sometimes referred to as the interface provision. [Its] original purpose

was to prevent the designer of a piece of equipment from using design right to prevent others

from making parts which fitted his equipment. … [A] feature which meets the interface criteria

must be excluded even if it performs some other purpose, for example it is attractive. There is

also nothing in the provision which requires the feature to be the only one which would achieve

the proper interface. If a number of designs are possible each of which enables the two articles

to be fitted together in a way which allowed one or other or both to perform its function, each

falls within the statutory exclusion.

16.136 Some examples of design features which have been held to fall within this exception

include features of soft contact lenses which allow the lenses to fit in the right location on the front of

the eyeball in order to provide a particular correction to the light focusing ability of the eye, eg, rear

radius, diameter of lens (Ocular Sciences); aspects of the design of leather cases tailored for specific

models of mobile telephones, eg, hole to permit charger to be connected to the telephone while in the

case (Philip Parker v Stephen Tidball [1997] FSR 680).

62

Patents

16.137 Many people would be familiar with the ―ThumbDrive‖ – a unitary storage device that is

inserted unto any universal serial bus (―UBS‖) socket, thereby becoming fully integrated with another

device, typically a personal computer (―PC‖).

16.138 Not so many would know that the ―ThumbDrive‖ is the subject matter of a patent

registered by a Singapore company, Trek Technology (Singapore) Pte Ltd (―Trek Technology‖) in

various countries including Singapore. In Trek Technology (Singapore) Pte Ltd v FE Global

Electronics Pte Ltd (No 2)[2005] 3 SLR 389 (―Trek Technology‖), Trek Technology sued the

defendants for importing into and/or distributing in Singapore storage devices which were clones of

the ThumbDrive. The action was tried by Lai Kew Chai J, who found for Trek Technology. His

decision was upheld by the Court of Appeal: FE Global Electronics Pte Ltd v Trek Technology

(Singapore) Pte Ltd [2006] 1 SLR 874. The judgment of the Court of Appeal was delivered by Tan

Lee Meng J.

Infringement: Interpretation of patent claim and its scope

16.139 The defendants in Trek Technology argued that Trek Technology‘s patent disclosed an

invention relating to a portable data storage device, the use of which required a captive or detachable

cable. Therefore, the defendants argued, their data storage devices which could be integrated with a

computer without the need for any external cable, were not within the scope of the patent. This was

disputed by Trek Technology which argued that its patent disclosed a portable data storage device that

could be directly plugged to and unplugged from a USB socket in the computer, without the need for

any intervening cable.

16.140 The first issue that faced the court was thus this: What was the proper subject matter of

Trek Technology‘s patent? Two provisions of the Patents Act (Cap 221, 2002 Rev Ed) are relevant

here. First, s 25(5) provides that the subject matter of the invention is defined by the patent claim(s).

Second, s 113(1) provides that a patented invention shall be taken to be that specified in a claim of the

specification of the patent ―as interpreted by the description and any drawings contained in that

specification‖. Section 113(1) is derived from s 125(1) of the UK Patents Act 1977 (c 37).

16.141 It is well established that the approach that the Singapore court must adopt, when

interpreting patent claims, is the ―purposive‖ approach advocated by Lord Diplock in Catnic

Components Limited v Hill & Smith Limited [1982] RPC 183: see the Court of Appeal judgments

in Genelabs Diagnostics Pte Ltd v Institut Pasteur [2001] 1 SLR 121 (―Genelabs‖) at [19], and

in Bean Innovations Pte Ltd v Flexon (Pte) Ltd[2001] 3 SLR 121 at [67]. Onto this list will now be

added the Court of Appeal‘s judgment in Trek Technology(supra para 16.138): see Tan J‘s judgment

at [14]. But Tan J did not just stop here. He went on to explain why the ―purposive‖ approach should

be preferred over the ―literal‖ approach. According to the learned judge, the ―purposive‖ approach is

preferred as it ―balances the rights of the patentee and those of third parties‖ (ibid). In this regard, he

also referred to the recent case of Kirin-Amgen Inc v Hoechst Marion Roussel Ltd[2005] RPC 9 at

[48], where the House of Lords re-affirmed its support for the ―purposive‖ approach because it is an

approach which ―combines a fair protection for the patentee with a reasonable degree of certainty for

third parties‖.

16.142 Tan J‘s elucidation, it is respectfully submitted, is important. Whilst it has already been

established by earlier cases (see para 16.141 above) that patent claim construction in Singapore

deploys the ―purposive‖ approach, it has not been entirely clear what principle should guide our

judges when they are applying this ―purposive‖ approach. In the UK, the guiding principle is

enshrined in the Protocol to Art 69 of the European Patent Convention. This provides as follows:

Article 69 should not be interpreted in the sense that the extent of the protection conferred by a

European patent is to be understood as that defined by the strict, literal meaning of the wording

63

used in the claims, the description and drawings being employed only for the purpose of

resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the

claims serve only as a guideline and that the actual protection conferred may extend to what,

from a consideration of the description and drawings by a person skilled in the art, the patentee

has contemplated. On the contrary, it is to be interpreted as defining a position between these

extremes which combines a fair protection for the patentee with a reasonable degree of

certainty for third parties.

16.143 The Protocol to Art 69 is very much part of English patent law, having been implemented

via s 125(3) of the UK Patents Act. There is no equivalent of the English s 125(3) in the Singapore

Patents Act. Now, Tan J has made it clear that the guiding principle set out in the Protocol to Art 69 is

equally applicable in Singapore.

16.144 Tan J also clarified the role of expert witnesses in this interpretation process (at [14] and

[22]):

The language of a patent is deemed to have been addressed by the inventor not to a panel of

equity draftsmen but to the man skilled in the art …

[Therefore] when construing a patent, the court determines what a skilled reader would think

and not what the expert thinks. This is not to say that an expert‘s view on what a skilled reader

would think is totally irrelevant.

16.145 Trek Technology‘s patent related to a portable data storage device for a computer. The

patent claims did not expressly refer to any need for an external cable to connect the patented device

to the computer. The trial judge had found that a skilled addressee would not have read into the claims

any requirement (whether explicit or implicit) for a cable (at [20]). The defendants appealed against

this finding, arguing that the trial judge did not look at the patent claims only but had read into the

patent features in the ThumbDrive device. Tan J dismissed this argument. Tan J was satisfied that the

trial judge had borne in mind all the relevant principles in making his finding.

Infringement: Infringing acts

16.146 Given that the defendants‘ data storage devices could be integrated with a computer

without the need for any external cable, they fell within the scope of Trek Technology‘s patent. The

next issue related to whether each of the defendants had committed act(s) in relation to these

infringing articles which were prohibited by s 66(1)(a) of the Patents Act. The list of prohibited acts is

as follows: making, disposing of, offering to dispose of, using or importing the infringing article or

keeping it for disposal or otherwise. On the facts, the trial judge found that all the defendants had

committed the act of offering to dispose of the infringing article in Singapore. The Court of Appeal

saw no reason to interfere with this conclusion.

16.147 One aspect on this issue of infringement merits highlighting. The prohibited acts, to

constitute infringement, must have taken place in Singapore. Is this ―territoriality‖ requirement

satisfied when a defendant, located outside of Singapore, makes an act of offering to dispose of the

infringing article on his website that is maintained outside of Singapore? This question has been

settled in the UK, in the context of trade mark law. In800-FLOWERS Trade Mark [2000] FSR 697,

Jacob J (as he then was) was confronted with the argument (at 705) that:

... any use of a trade mark on any website, wherever the owner of the site was, was potentially a

trade mark infringement anywhere in the world because website use is in an omnipresent

cyberspace; that placing a trade mark on a website was ―putting a tentacle‖ into the computer

user‘s premises. I questioned this with an example: a fishmonger in Bootle who put his wares

and prices on his own website, for instance, for local delivery can hardly be said to be trying to

sell the fish to the whole world or even the whole country. And if any web surfer in some other

64

country happens upon that website he will simply say ―this is not for me‖ and move on. For

trade mark laws to intrude where a website owner is not intending to address the world but only

a local clientele and where anyone seeing the site would so understand him would be absurd.

So I think that the mere fact that websites can be accessed anywhere in the world does not

mean, for trade mark purposes, that the law should regard them as being used everywhere in the

world. It all depends upon the circumstances, particularly the intention of the website owner

and what the reader will understand if he accesses the site.

16.148 In a later case, Euromarket Designs Inc v Peters [2001] FSR 20 (―Euromarket‖), Jacob J

also said (at [16]) that ―there must be an inquiry as to what the purpose and effect of the advertisement

in question is‖. It was this passage of Jacob J that was endorsed and applied by the trial judge in Trek

Technology (suprapara 16.138). Here, M-Systems was the manufacturer of the infringing articles.

This manufacture, it would appear, took place outside of Singapore. M-Systems distributed its

products in Singapore by selling them to another defendant (Electec) who imported the products into

Singapore and who in turn appointed yet another defendant (FE Global) as the distributor and agent of

the products in Singapore. The importation of the infringing articles by Electec and the sale of the

infringing articles by FE Global were clearly acts which infringed Trek Technology‘s patent rights in

Singapore. But was M-Systems liable too? Since M-Systems‘ manufacture of the infringing articles

took place outside of Singapore, Trek Technology did not argue that M-Systems was liable for such

manufacture. Instead, Trek Technology‘s complaint against M-Systems was based on the latter‘s offer

to dispose of its products in its website, by placing links through Electec‘s and FE Global‘s websites.

For example, M-Systems‘ website had ―Singapore‖ on its list of countries where its products were

sold. All this influenced the trial judge in Trek Technology to come to the conclusion that M-Systems

had made an offer to dispose of its products in Singapore. The trial judge said (at [34]), after referring

to Euromarket:

It is clear that if one were to ask the question whether a reasonable user looking at the websites

would understand that an offer to dispose of [M-Systems‘ product] was being made in

Singapore, the answer must, I think, be ―yes‖. It is clear from the evidence that the primary M-

Systems website provides an avenue for the user in Singapore to purchase [M-Systems‘ product]

with the link to the FE Global/Electec websites. There is an ―offer to dispose of‖ [M-Systems‘

product] within s 66(1) of the Patents Act.

Validity of patent: Requirements for novelty and inventive step

16.149 The defendants in Trek Technology argued that Trek Technology‘s patent was invalid

because it lacked novelty and inventive step. (There was also an allegation that the patent was

obtained on a misrepresentation, in particular, an omission of the name of a co-inventor in the patent

application. The trial judge refused to revoke the patent on this ground because the inaccuracies were

not material, that is, they did not actually deceive the Registrar of Patents into granting the patent. The

defendants did not appeal against this finding. This challenge will not be reviewed here.)

16.150 Section 14 of the Patents Act provides that an invention shall be taken to be new if it does

not form part of the state of the art, which comprises all matter having, at any time before the priority

date of that invention, been made available to the public, whether in Singapore or elsewhere, by

written or oral description, by use or in any way.

16.151 The defendants argued that the following pieces of prior art had anticipated Trek

Technology‘s invention:

(a) three earlier patents which relate to data storage devices which required a connection cable

to interface with the host computer; and

65

(b) a leaflet published by Aladdin Knowledge Inc that showed a software protection key with

an integrated plug (the ―Aladdin‖ publication) that is used to disallow others from viewing the

data protected by it.

16.152 The trial judge and the Court of Appeal did not agree with the defendants. This conclusion

was reached by applying well-established principles governing the question of novelty, in particular:

(a) It is not permissible to combine or ―mosaic‖ disparate pieces of prior art when assessing if

the invention is novel. Tan J clarified that it is possible to ―mosaic‖ if a document directed the

reader to do so (see [38]). This qualification to the rule against combining pieces of prior art is

also found in the Court of Appeal‘s judgment in Genelabs (supra para 16.141 at [26]–[28]).

(b) In making this assessment, the court must assume the mantle of the relevant skilled

addressee. The skilled addressee is a person of competent but average technical skill who is

unimaginative.

(c) To anticipate the invention in question, the piece of prior art must ―contain clear and

unmistakable directions to do what the patentee claims to have invented‖ and not just be a

―signpost, however clear, upon the road to the patentee‘s invention‖: Tan J‘s judgment at [38],

quoting from The General Tire & Rubber Company v The Firestone Tyre and Rubber Company

Limited [1972] RPC 457 at 486. These principles had also been endorsed earlier by the Court of

Appeal in Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2000] 3 SLR 717 at [37].

16.153 The first principle – the rule against ―mosaicking‖ – was particularly relevant in the

assessment of Trek Technology‘s patented invention. The patented invention, when compared with

each of the first three pieces of prior art (disclosing a data storage device with a cable), was different

because it was a unitary data storage device with an integrated plug that did not require a cable. The

patented invention, when compared with the Aladdin publication (disclosing a unitary and integrated

device used as a security device), was different because it was used as a mass data storage device and

not as a security device. The conclusion on the novelty of Trek Technology‘s invention might have

been otherwise if there was no rule against combining the first three pieces of prior art with the

Aladdin publication.

16.154 The rule against ―mosaicking‖, however, does not apply when the assessment relates to the

inventiveness of the invention in question, that is, whether it is obvious to the person skilled in the art

(see s 15 of the Patents Act). Pieces of prior art may be read together – but only if it is obvious to do

so: see Lord Reid‘s judgment in Technograph Printed Circuits Limited v Mills & Rockley (Electronics)

Limited [1972] RPC 346at 355 (―a mosaic which can be put together by an unimaginative man with

no inventive capacity‖).

16.155 On appeal, Tan J upheld the trial judge‘s finding that Trek Technology‘s invention was not

obvious. He pointed out (at [45]) that, in spite of the fact that all the elements required for Trek

Technology‘s invention were available to those skilled in the art, no one before Trek Technology had

thought of combining all these elements together. The learned judge referred to other established

principles that have been used to gauge the inventiveness of an invention. In particular, he took into

account the commercial success of the invention. The ThumbDrive, said Tan J, was ―warmly

welcomed when it was launched and its subsequent commercial success speaks volumes‖ (at [47]).

The relevance of commercial success in this assessment has been explained in the following manner:

―Why, if it was obvious, was it not done before?‖ (Hallen Co v Brabantia (UK) Ltd[1989] RPC 307 at

323). Tan J also reiterated a principle accepted earlier in Peng Lian Trading Co v Contour Optik

Inc [2003] 2 SLR 560 (―the Peng Lian case‖) at [28], namely, ex post facto analysis is not permitted

because it is unfair to inventors. Another guideline given by Tan J is important: ―simplicity has never

been a bar to inventiveness‖ (at [46]). This echoes what was said in the Peng Lian case (at [28]): ―a

small step could still be an inventive step‖.

66

Amendment to patent claims during infringement proceedings

16.156 Because the defendants had in their defence raised issues about the scope of the patent, as

well as the novelty and inventiveness of the patented invention, Trek Technology made an application

before the trial to amend its patent to clarify the definition of its invention, in particular to make it

very clear that the invention did not require the use of a cable.

16.157 The law governing amendments to a patent during infringement proceedings is clear. While

s 83 of the Patents Act empowers the court to allow such amendments, s 84(3) prohibits any

amendment under s 83 if it results in the specifications disclosing any additional matter or extending

the protection conferred by the patent. In determining whether the proposed amendment disclosed

additional matter, Tan J in the Court of Appeal endorsed the test set out in Bonzel (T) v Intervention

Limited (No 3) [1991] RPC 553 at 574: The court must be strict when comparing the patent and the

proposed amendment, and it must hold that the amendment discloses additional matter ―unless such

matter is clearly and unambiguously disclosed in the application either explicitly or implicitly‖.

Applying this test, the Court of Appeal concluded that the trial judge was right in holding that the

proposed amendments did not disclose additional matter; after all, the amended claims disclosed what

the unamended claims disclosed, namely, a portable data storage device having an integrated plug for

a direct connection to the USB socket on a computer without an intervening cable.

16.158 There remained the issue of whether the court should exercise the discretion conferred by

s 83. The English case of Smith Kline & French Laboratories Limited v Evans Medical Limited [1989]

FSR 561(―SKF‖) dealing with amendments to a patent granted under the UK Patents Act 1949 (c 87),

has laid out a list of factors which the court must take into account when deciding whether to exercise

the discretion to allow the amendments, eg, whether the patentee has disclosed all relevant

information with regard to the amendments and whether the patentee has delayed in seeking the

amendments. The rationale underlying this strict approach taken in SKF is ―a desire to ensure that

patentees do not obtain an advantage which is unfair‖: per Pumfrey J inInstance v CCL Label

Inc [2002] FSR 27 at [37]. While this rationale was sound for patents granted under the UK Patents

Act 1949 before the advent of claims, some reservations were expressed by Pumfrey J in Instance v

CCL Label Inc at [39] about the continued relevance of the SKF approach to patents granted under the

UK Patents Act 1977. This view was taken into account by Tan J, who then laid out the proper

approach for Singapore (at [31]):

[T]he modern context in which patents are registered must be taken into account when

considering whether amendments should be allowed. The present practice in Singapore is that

skilled examiners examine and scrutinise patent applications and if there is a negative patent

examination report, it is in the patent file at the Intellectual Property Office of Singapore and is

open for public inspection. Lai J [the trial judge] was thus entitled to say at [67] of his judgment

that as examination reports are available for public inspection, adverse parties are able to

evaluate the validity and strength of patents which have been filed and they are ―less likely to

be surprised (and consequently prejudiced) by subsequent amendments which may be sought

by the patentee, even if this takes place in the course of patent litigation‖. As there is little

scope for abuse when applications for patents are filed nowadays, we agree that a more lenient

approach towards amendments is now called for.

Breach of confidence

16.159 In last year‘s review (see ―Intellectual Property Law‖ (2004) 5 SAL Ann Rev 374 at

para 16.39), mention was already made of a reason underlying the requirement for a plaintiff in an

action for breach of confidence to specify or particularise in his statement of claim the confidential

information which he is seeking to protect: this requirement helps to filter out suspect claims where

there is really nothing confidential about the information. Where the action is against ex-employees,

the courts should be even more vigilant in striking down claims for breach of confidence which lack

particularity. The greater public policy concern involved in such cases is explained in the English

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case John Zink Company Limited v Lloyds Bank Limited and Airoil Burner Company (GB)

Limited [1975] RPC 385 (―John Zink‖) (at 392):

If it is permissible for a plaintiff to put in this form of statement of claim [which was pleaded in

the widest terms], then life for an ex-employee becomes intolerable. All an employer has to do

is to allege … that he has trade secrets of the broadest character, to allege that the employee

learned them, that he joined a competitor and that he has broken the trade secrets. That seems to

me to be speculative and would lead in this case to oppression and in any case would lead to

oppression.

16.160 This passage has been endorsed by our Court of Appeal twice – once in Tang Siew Choy v

Certact Pte Ltd [1993] 3 SLR 44 (―Tang Siew Choy‖), and the second time, last year in Stratech

Systems Ltd v Nyam Chiu Shin [2005] 2 SLR 579 (―Stratech‖). The plaintiff and the third defendant,

Guthrie Engineering Pte Ltd (―Guthrie‖), were collaborators in a contract awarded by the Land

Transport Authority (―LTA‖). The first and second defendants were employees of the plaintiff who

were involved in carrying out post-warranty maintenance work under the LTA contract. When

Guthrie and the plaintiff fell out, Guthrie took over from the plaintiff the provision of the post-

warranty maintenance obligations owed to LTA. The first and second defendants left the plaintiff‘s

employment to work for Guthrie. With the help of the first and second defendants, Guthrie cloned the

hard disks of the plaintiff‘s five computers set up in LTA‘s office, thereby obtaining the information

necessary to carry out the post-warranty maintenance works. The plaintiff sued all three defendants

for, inter alia, unauthorised disclosure and knowing receipt of their confidential information. The only

particulars given by the plaintiff, in response to a request for further and better particulars of the

alleged confidential information disclosed by the first and second defendants, were as follows:

The 1st and 2

nd Defendants disclosed all the Plaintiffs‘ information contained in the 5 computers

at LTA as well as confidential information acquired by them in the course of employment.

16.161 Before the High Court (see [2004] SGHC 168), the plaintiff had focused its claim on a

computer program called ―V116‖ which it had developed as part of its fulfilment of the LTA contract.

But no particulars were given as to the ―secret‖ in V116 which the plaintiff said constituted its

confidential information. This lack of particularity was one reason the High Court dismissed the

plaintiff‘s action for breach of confidence: see the review of this judgment in (2004) SAL Ann Rev

374 at paras 16.38–16.43.

16.162 Before the Court of Appeal, the plaintiff then shifted the focus from V116 to another set of

information, namely, the information necessary to carry out the post-warranty maintenance works

residing in the plaintiff‘s computers set up in the LTA‘s office. Woo Bih Li J, delivering the judgment

of the Court of Appeal, was not impressed with the plaintiff‘s pleadings, equating the lack of

specificity therein with what the plaintiffs inJohn Zink (supra para 16.159) had done. Neither was the

court moved by the plaintiff‘s attempts to cure this omission by relying on evidence, in particular, the

fact that the information taken by Guthrie from the plaintiff‘s computers was password-protected. In

its view, it was ―too sweeping to say that information which was protected by a password must be

confidential information‖ (at [36]). This conclusion, it is respectfully submitted, must be correct: If I

choose to keep yesterday‘s newspapers in a safe deposit box under lock and key, this security measure

I have taken does not in itself convert the contents of the safe deposit box – news which is already in

the public domain – into confidential information. (At best, the act of protecting information with a

password is relevant to the question of whether there existed an obligation of confidentiality between

the plaintiff and the defendant: a person to whom the password was given could be said to understand

that he was being imparted the password-protected information under an obligation of confidentiality.

In this case, the obligation of confidentiality was expressly provided for in the first and second

defendants‘ contract of employment.) Success in an action for breach of confidence is dependent on

proof of three elements – confidential information belonging to the plaintiff; an obligation of

confidentiality between the plaintiff and the defendant; damage suffered by the plaintiff from

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unauthorised use of the confidential information – and the plaintiff in Stratech was not even able to

cross the threshold of the first element.

16.163 Lack of particularity was also the reason why the plaintiff failed in its bid to enforce a post-

termination restraint of trade provision in its contracts of employments with the first and second

defendants. The well-established legal principles governing the validity of such provisions against ex-

employees are set out in the English Court of Appeal decision in FSS Travel and Leisure Systems Ltd

v Johnson [1999] FSR 505 (―FSS Travel‖): Essentially, restraint of trade provisions are only

enforceable against ex-employees to stop them from using the employer‘s trade secrets, but not to

restrain them from using the skill, experience, know-how and general knowledge acquired by them

during the employment. This explains why a plaintiff suing an ex-employee tries to make out a case

that he has a ―trade secret or its equivalent‖ (see Faccenda Chicken Ltd v Fowler[1987] Ch 117 at 137,

a case which has been cited with approval by our Court of Appeal in Tang Siew

Choy(supra para 16.160)), and not mere confidential information, to protect.

16.164 Woo J in Stratech referred to FSS Travel and then crystallised the issue as follows: Can a

plaintiff-employer show that it has some ―legitimate interests‖ belonging to it? As expected, the

plaintiff claimed that it had some ―legitimate interests‖ that went beyond just the protection of

confidential information. But just as it could not particularise what its confidential information was,

neither did it specify just what those ―legitimate interests‖ were. Thus, it is not surprising that this

claim was rejected by the Court of Appeal. The court concluded that the main function of the restraint

of trade provision in this case was to inhibit competition in business, and held that it was accordingly

not binding on the first and second defendants.

69

Intellectual Property Law Annual Review of Singapore Cases (5, 2004)

Information

Title: Intellectual Property Law

Textbook Title: Singapore Academy of Law Annual Review

Chapter No: 16

Author | Editor: Ng-Loy Wee Loon, Tan Tee Jim

Up

Textbooks

Trade marks

16.1 The big ―Mac/Mc‖ battle has finally reached the shores of Singapore. In McDonald‟s Corp v

Future Enterprises Pte Ltd [2004] 2 SLR 652 (HC); [2005] 1 SLR 177 (CA), the McDonald‘s fast

food chain (―McDonald‘s‖) tried to stop a local company, Future Enterprises, from registering the

trade marks ―MacTea‖, ―MacChocolate‖ and ―MacNoodles‖, each accompanied by an eagle device in

respect of instant tea mix, instant chocolate mix and instant noodles respectively (in this chapter, the

marks will be collectively referred to as the ―MacTea/MacChocolate/MacNoodles and eagle device

marks‖). The defendant‘s ―MacNoodles‖ mark is shown below.

[LawNet Admin Note: Click on the link to the PDF above to see Image 1]

16.2 McDonald‘s had already acquired some experience in similar actions outside of Singapore

such as Australia (―McSalad‖ and ―McFresh‖ for fruits and vegetables; ―McMint‖ for confectionery;

―McVeg‖ for vegetable hamburgers), Canada (―McBeans‖ for gourmet coffee), the UK (―McChina‖

for a Chinese restaurant and Chinese food; ―McIndians‖ for restaurant, café and cafeteria services),

and the US (―McBagel‖ bagel bakery selling bagels, salads, sandwiches, soft drinks, breakfast

items, etc; ―McPretzel‖ pretzels sold at wholesale level). McDonald‘s won in some of these cases and

lost in the others.

16.3 In Singapore, McDonald‘s had obtained registrations of, inter alia, the following marks: ―BIG

MAC‖, ―MAC FRIES‖, ―SUPERMAC‖, ―EGG McMUFFIN‖, ―McCHICKEN‖, ―McNUGGETS‖ in

Classes 29 and/or 30, and a design of the word ―Mc‖, shown below, for restaurant and catering

services in Class 42.

[LawNet Admin Note: Click on the link to the PDF above to see Image 2]

16.4 McDonald‘s did not have any registration for the word ―Mc‖ simpliciter. But it believed that it

had a monopoly in trade mark law over the ―Mac‖ or ―Mc‖ prefix – both of which were phonetic

equivalents – used in relation to a fast food product. Belinda Ang Saw Ean J, the High Court judge

who heard the dispute, summarised the essence of McDonald‘s complaint as follows: Future

Enterprises had ―copied the so-called ‗McLanguage‘ of naming products with the prefix ‗Mc‘

followed by a fast food descriptive‖ and ―taken the idea or business marketing practice of naming the

various types of fast food products‖: [2004] 2 SLR 652 at [6] and [24] respectively. The judge was not

impressed with McDonald‘s argument, noting at [31] that ―the weight of authority is against the

recognition at common law of any right of property in ideas per se‖, a point subsequently endorsed by

the Court of Appeal ([2005] 1 SLR 177 at [79]). Indeed, trade mark law is not about marketing ideas

and concepts; it protects, rather, the goodwill of a trader.

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16.5 It was hence necessary for McDonald‘s to fit its complaint within the framework of damage to

their goodwill or reputation. It claimed as follows: firstly, its reputation in the fast food restaurant

business was such that the use of the MacTea/MacChocolate/MacNoodles and eagle device marks by

Future Enterprises on instant food products was likely to mislead the public into thinking that

McDonald‘s was in some way connected to or behind Future Enterprises‘ products, and, secondly,

Future Enterprises had in bad faith misappropriated McDonald‘s trade marks. McDonald‘s first

objection is enshrined in ss 15 and 23 of the Trade Marks Act (Cap 332, 1992 Rev Ed) (―the Act‖).

(Note that the Act has been repealed and replaced by the Trade Marks Act 1998 (Cap 332, 1999 Rev

Ed) (―the 1998 Act‖).)

16.6 McDonald‘s failed on all these grounds in the Registry of Trade Marks, the High Court and

the Court of Appeal.

Sections 15 and 23: Prohibition on registration of mark which is likely to deceive or cause

confusion, etc

16.7 Generally speaking, ss 15 and 23 both prohibited registration of what were often called

―deceptively or confusingly similar trade marks‖. However, there was a significant difference

between the scope of each provision: s 23 applied only in cases where the opponent‘s mark was an

earlier registered trade mark and his goods or services were the same, of the same description or

―associated with‖ the goods or services of the trade mark applicant; whereas s 15 could be invoked

even if the opponent‘s mark was unregistered and even where the goods or services in question were

dissimilar. (In the current 1998 Act, these objections under ss 15 and 23 are collapsed into one

provision, namely, s 8: see para 16.17 below.)

16.8 McDonald‘s concentrated its energies on making out a case under the broader ground of

objection in s 15, namely, that the MacTea/ MacChocolate/MacNoodles and eagle device marks were

not lawfully registered as their use ―would, by reason of [their] being likely to deceive or cause

confusion, be disentitled to protection in a court of justice‖. Ang J, applying the established test first

enunciated by the House of Lords in Bali TM[1969] RPC 472 (and adopted by our Court of Appeal

in Tiffany & Co v Fabriques de Tabac Reunies SA[1999] 3 SLR 147), rephrased the question as

follows: would there be a real tangible danger of confusion in the sense that a substantial number of

prospective or potential purchasers of instant tea or cocoa mix and instant noodles would infer or have

―cause to wonder‖ whether it might not be the case that the products come from the same source

(McDonald‘s)?

16.9 Both McDonald‘s and Future Enterprises cited the various ―Mc‖ decisions from around the

world referred to in para 16.2 above to support their respective cases for or against a likelihood of

confusion in this case. The value of these ―Mc‖ decisions as authorities in the Singapore case was

marginal because whether the two marks in each case were likely to deceive or cause confusion is a

question of fact: per Ang J at [40], and Chao Hick Hin JA delivering the judgment of the Court of

Appeal in [2005] 1 SLR 177 at [66]. This depends very much on the business practices and

perceptions of the purchasing public, which can vary from jurisdiction to jurisdiction. For example, in

a multiracial and multilingual country like Singapore, our courts have in appropriate cases taken into

account the reaction of the illiterate or non-English speaking consumer to trade marks comprising

English words: see, for example, White Hudson & Co Ltd v Asian Organization Ltd [1965] 1 MLJ 186,

where it was held by the Privy Council, reversing the decision of the Court of Appeal and upholding

that of the High Court, that the non-English speaking members of the public in the 1960s would be

misled into thinking that ―PECTO‖ cough sweets wrapped in orange-coloured cellophane paper were

―HACKS‖ cough sweets as they had a similar packaging: cf Tong Guan Food Products Pte Ltd v Hoe

Huat Hng Foodstuff Pte Ltd[1991] SLR 133 at 367, [30], where Yong Pung How CJ cautioned that

illiteracy must be ―an evaporating consideration in the Singapore of today‖.)

16.10 In deciding this question of fact, evidence of actual incidents of confusion would come in

useful. So would the results of survey gauging the public‘s impression. Neither was tendered in this

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case. Ultimately, however, it is left to the personal perception of the trial judge, and the appellate

court will only disturb the finding of the trial judge if there is good reason to do so. This was not the

case here. For this reason, this review will focus more on Ang J‘s reasoning and her finding on s 15.

16.11 Ang J came to the conclusion that, as at the date on which the question of fact had to be

assessed which was 8 July 1995 (the date of Future Enterprises‘ trade mark applications), there was

no real tangible danger that a substantial number of shoppers in the course of a normal shopping trip

would be caused to wonder if there could be a commercial association between the

MacTea/MacChocolate/MacNoodles and eagle device marks used on instant tea and cocoa mixes and

instant noodles and, on the other hand, fast food and beverages from McDonald‘s. In coming to this

conclusion, she applied many well-established guidelines used to answer this question of fact under

s 15. Many of these guidelines have earlier been endorsed by our Court of Appeal, in particular

in Kellogg Co v Pacific Food Products Sdn Bhd [1999] 2 SLR 651. Below is a summary of the

guidelines the judge referred to and how she applied them to the facts before her:

(a) All surrounding circumstances must be considered, including but not limited to the

reputation of the opponent‘s mark. Hence, even though McDonald‘s enjoyed an undisputed

reputation as a fast food restaurant chain in Singapore, that could not be the overriding

consideration.

(b) These circumstances include a comparison for similarities between the marks in

question, judging them visually and phonetically, and taking into account the actual way and

manner in which the marks are used. However, the marks must not be compared side by side;

rather, the ―imperfect recollection‖ of consumers will only result in them bringing back the

―idea‖ behind the mark. Comparing the MacTea/MacChocolate/MacNoodles and eagle device

marks as a whole with McDonald‘s various ―Mc‖ and ―Mac‖ word marks, and taking into

account the fact that the latter marks were always used together with its ubiquitous golden

arches in the form of the letter ―M‖, Ang J did not find the marks confusingly similar.

McDonald‘s placed much emphasis on the fact that it had a ―series‖ of ―Mc‖ marks, arguing

that the ―Mc‖ prefix was the essential feature of their marks, and hence the public would be

misled into thinking that Future Enterprises‘ marks were new marks in the ―series‖ of

McDonald‘s ―Mc‖ marks. The judge pointed out that the existence of a ―series‖ was but one

factor amongst all the others which she had to consider in the overall assessment of the

likelihood of confusion. She was not persuaded that this fact alone should tip the balance in

favour of McDonald‘s.

(c) There must also be a comparison between the goods or services in question, and their

users and trade channels. The further removed the trade mark applicant and the opponent are

from each other in terms of their field of activities, the less likely the consumer will reasonably

be confused into thinking that the applicant‘s business is connected with the opponent‘s. For

this principle, Ang J cited Harrods Limited v Harrodian School Limited [1996] RPC 697, a

case on passing off, as authority: see also CDL Hotels International Ltd v Pontiac Marina Pte

Ltd [1998] 2 SLR 550 at [63]–[66]. Ang J found that Future Enterprises‘ goods and its

customer base was different from McDonald‘s: the former‘s goods were sold in supermarkets

whereas the latter sold prepared food and ready-to-eat meals only in its restaurants. She was not

convinced by McDonald‘s argument that, in the light of the common practice amongst

international food brands such as Haägen-Dazs, Mövenpick and Starbucks to retail their

products in supermarkets, the public would think that they had diversified from fast food

restaurant business into retailing convenience food in supermarkets. She found such an

argument ―speculative‖: [2004] 2 SLR 652 at [61].

16.12 As mentioned earlier, Ang J‘s finding was affirmed by the Court of Appeal. What is worth

highlighting in this appeal is the approach McDonald‘s put forward for assessing the question of

likelihood of confusion under s 15. According to McDonald‘s, the correct approach involved three

questions:

72

(a) First, does McDonald‘s have a reputation in the field of fast food by the use of the

prefix ―Mac‖ or ―Mc‖, followed by a fast-food descriptive? The answer to this question was

undeniably a ―yes‖.

(b) Second, had Future Enterprises, in its application marks, used the prefix ―Mac‖ or ―Mc‖

followed by a food descriptive referring to fast food or convenience products? The answer to

this question was also a ―yes‖.

(c) Third, would Future Enterprises‘ marks and the manner in which the prefix ―Mac‖

was used in those marks cause confusion? Here, McDonald‘s argued that ―the answer was a

clear ‗yes‘ because the public would think that the products originated from [it]‖: [2005] 1 SLR

177 at [19]–[21].

Is there any difference in this approach, compared to the approach used by Ang J? McDonald‘s might

have split the inquiry under s 15 into three questions, but clearly the third question is the question that

determines the fate of a dispute under s 15, and that is precisely the question that Ang J had answered.

16.13 What McDonald‘s was attempting to do was to focus the whole inquiry on the first question,

namely, its reputation. Its case amounted to this: since it had substantial reputation in the ―Mc‖ prefix

followed by a fast food descriptive and someone else had used the ―Mc‖ prefix followed by a fast

food descriptive, it followed that there would be confusion in the marketplace. In other words,

McDonald‘s was relying heavily – almost exclusively – on its substantial reputation to make out a

case for confusion. Clearly, this could not be how the question on confusion should be determined. As

Ang J had pointed out, the question of confusion under s 15 was ―not limited to a consideration of the

reputation of the opponents and its strength‖: [2004] 2 SLR 652 at [48].

16.14 The weakness of McDonald‘s approach to the question of confusion was not lost on Chao JA,

and he said (at [54]):

[McDonald‘s] wanted in the present proceeding to monopolise the prefix ―Mc‖ as far as food

and beverages were concerned, irrespective of the state in which the relevant items were being

sold and the manner in which they were sold. This was the difficulty. … As so pithily put by

Millett LJ inHarrods Limited v Harrodian School Limited [1996] RPC 697 (―Harrodian

School‖) at 712, ―to be known to everyone is not to be known for everything.

16.15 Elsewhere, McDonald‘s conduct has been criticised in harsher tones as that of a ―gobbling

giant … which seems ready to attack users of McAnything‖: William Cornish, Intellectual Property:

Omnipresent, Distracting and Irrelevant? (Oxford University Press, 2004) at p 104.

16.16 One further observation from Chao JA is worth mentioning. He said (at [64]):

With widespread education and a public which is constantly exposed to the world, either

through travel or the media, one should be slow to think that the average individual is easily

deceived or hoodwinked. In fact, the very success of the appellant, which is inseparable from

its logo, is also the very reason why confusion is unlikely. [emphasis added]

16.17 It must seem ironic to McDonald‘s that it has become a victim of its success in branding itself.

It is for this reason that proprietors of well-known marks have been lobbying for a type of protection

which does not depend on existence of confusion or deception. They argue that there can be

unauthorised uses of their well-known marks which do not cause confusion or deception but which

are nevertheless unfair because these uses exploit the reputation so carefully cultivated by them. They

want the law to prohibit such unfair competitive uses. In fact, prohibition of unfair competition is an

internationally accepted standard of protection: see Art 10bis of the Paris Convention for the

Protection of Industrial Property. In 1995, the US introduced a federal ―dilution‖ right for ―famous‖

marks which, generally speaking, prohibits the ―blurring‖ and the ―tarnishment‖ of the famous mark.

73

In the UK, the Trade Marks Act 1994 (c 26) introduced a similar right for ―marks with a reputation‖.

At the international level, the WIPO Joint Recommendations Concerning Provisions on the Protection

of Well-Known Marks (1999) also call for this higher level of protection. As part of her obligations

under the US-Singapore Free Trade Agreement, Singapore has amended her 1998 Act to ratify these

WIPO Joint Recommendations. In particular, the new s 8(3A)(ii), which applies only to trade mark

applications filed on or after 1 July 2004, enables the proprietor of a mark well known to the public at

large in Singapore to object to registration of an identical or similar trade mark on the ground that the

latter would ―cause dilution in an unfair manner of the distinctive character of‖ or ―take unfair

advantage of the distinctive character of‖ his well-known mark. This new protection is de-linked from

proof of confusion: ―dilution‖ is defined in s 2(1) of the Trade Marks Act 1998 as meaning ―the

lessening of the capacity of the trade mark to identify and distinguish goods or services, regardless of

whether there is … any likelihood of confusion on the part of the public‖.

Section 12(1): Prohibition on registration of mark by person without rightful claim to

proprietorship of mark

16.18 The leading authority on the scope of s 12(1) is Tiffany & Co v Fabriques de Tabac Reunies

SA(supra para 16.8). In this case, Yong Pung How CJ, delivering the judgment of the Court of Appeal

said at [27], ―[t]he key ingredient in a successful opposition under s 12 of the Act is a

misappropriation of the mark by the applicant‖.

16.19 Ang J referred to this test, and added that there could be no ―misappropriation‖ where the

marks were not identical or substantially identical. On this point, she followed Carnival Cruise Lines

Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, an Australian decision on the scope of a provision in

their Trade Marks Act 1955 which was similar to s 12(1). The comparison between the marks, for this

purpose, was to be made side by side (and in this regard differed from the type of comparison under

s 15: see para 16.11(b), supra). She found that there was a striking dissimilarity between the

MacTea/MacChocolate/MacNoodles and eagle device marks and McDonald‘s ―Mc‖ marks, thereby

concluding that these differences militated against any finding of misappropriation. This was upheld

by Chao JA.

16.20 Chao JA sought to further clarify the meaning of ―misappropriation‖. He said that there would

be misappropriation if it was likely that the applicant‘s trade mark would cause or be liable to cause

confusion in the mind of the public, citing the English Court of Appeal decision in Harrods

Limited v Harrodian School Limited(supra para 16.11) at 722 as authority for this proposition. He

continued (at [72]):

From this, it will be seen that there is some overlap between the relevant considerations for

s 12(1) and those for s 15. If, as we have found [for s 15], the registration of the application

marks would not give rise to deception or confusion with the appellant‘s main mark

―McDonald‘s‖ as well as those in that family, that in itself is a strong indication that the

objection of [McDonald‘s] under s 12(1) should surely also fail.

16.21 It should be noted, though, that a successful objection under s 15 (ie, the presence of a

likelihood of confusion) does not necessarily lead to success under s 12(1). One example can be found

in Tiffany & Co v Fabriques de Tabac Reunies SA (supra para 16.8), where the Tiffany company,

famous for its high-quality luxury consumer goods, objected to the registration of the mark ―Tiffany‖

by the applicant in respect of cigarettes. Registration was refused on the basis that there was

likelihood of confusion should the mark be used on cigarettes. Yet, it was decided that the applicant

had not misappropriated the mark.

16.22 McDonald‘s argued that even if the marks were not substantially identical, it was entitled to

succeed so long as it could show bad faith. To prove bad faith on the part of Future Enterprises,

McDonald‘s relied on two apparently conflicting explanations given by Future Enterprises for

adopting the ―Mac‖ prefix in its application marks. In these proceedings, Future Enterprises explained

74

that, when it moved from the computers and computer-related business to producing instant beverages

and foods, it was inspired to adopt the ―Mac‖ prefix for their new line of products because of its

association with ―Macintosh‖ computers commonly referred to as ―Macs‖. However, in another set of

proceedings involving Future Enterprises (Future Enterprises Pte Ltd v Tong Seng Produce Pte

Ltd [1998] 1 SLR 1012, where Future Enterprises had sued another local company for passing off the

latter‘s instant coffee sold under ―A MaxCoffee‖ as its ―MacCoffee and eagle device‖), Future

Enterprises had told the court there that it had adopted the ―Mac‖ prefix, commonly used in English-

speaking countries as an informal term for addressing persons whose names were not immediately

known, because it wanted to convey the impression that it was a Western capitalist company.

16.23 Both Ang J and Chao JA were not unduly perturbed by these different explanations. In their

view, these explanations were not inconsistent with each other; there was a common thread through

both explanations, namely, the desire to project a Western image.

16.24 The objection based on the applicant‘s bad faith is now found in s 7(6) of the 1998 Act. The

English equivalent of this provision is s 3(6) of the UK Trade Marks Act. Chao JA referred to “Royal

Enfield” TM[2002] RPC 24, an English decision on s 3(6) which held that an allegation that a trade

mark has been applied for in bad faith should be fully and properly pleaded and distinctly proved.

Chao JA concluded that, similarly, under s 12(1) of the Singapore Act, any allegation of bad faith was

a serious matter and should not be lightly inferred.

16.25 If the trial and appellate judges were not satisfied that Future Enterprises had acted in bad faith,

what are the chances of McDonald‘s succeeding in any claim of infringement of its dilution right (see

para 16.17 above)? Interesting question, indeed.

Trade mark sentencing

16.26 There was no such doubt concerning the registered trade mark proprietor‘s rights in the case

of Ong Ah Tiong v PP [2004] 1 SLR 587 (―Ong Ah Tiong‖) which concerned a managing director of a

company selling electronic goods who was caught possessing a large number of counterfeit goods and

who appealed against the sentence against him of 32 months‘ imprisonment. The case reflects a

distinctive feature of the 1998 Act, namely, both civil and criminal modes of redress are available to

the registered trade mark proprietor in respect of a number of overlapping activities.

16.27 Specifically, the Act creates criminal offences for activities such as:

(a) counterfeiting a trade mark (s 46);

(b) making or possessing an article for committing an offence (s 48); and

(c) importing or selling, etc, goods with a falsely-applied trade mark (s 49).

16.28 As for civil liability, these offences are made out if the acts are carried out without the consent

of the proprietor of the registered trade mark. The burden is on the accused to prove the proprietor‘s

consent. They are offences of near absolute liability, as there is no requirement on the part of the

proprietor to prove dishonesty or intention on the part of the accused person.

16.29 The offences attract rather heavy penalties. In general, the maximum penalty is a fine not

exceeding $100,000 or imprisonment for a term not exceeding five years or both, together with the

possibility of forfeiture of the counterfeit goods. This was a significant increase from the previous

penalty of a maximum fine of $2,000 or one year‘s imprisonment or both. According to the Minister

for Law in his speech introducing the Trade Marks (Amendment) Bill (No 42 of 1998), the increased

penalties were meant to ―provide greater protection for trade marks against infringement and against

sale of counterfeit products‖ and to ―protect the owners of those goods who have invested heavily in

research, design, production and marketing‖.

75

16.30 The facts of Ong Ah Tiong are briefly as follows. The appellant was the managing director of a

company selling electronic goods and was actively involved in the running of its business. Following

a raid by officers from the Intellectual Property Rights Branch of the Criminal Investigation

Department and the seizure of substantial quantities of counterfeit goods (such as Sony Playstation

memory cards and game controllers as well as Gameboy cartridges) at his company‘s premises, he

was charged and convicted with having in his possession, for the purposes of trade, articles with

falsely-applied trade marks under s 49(c) of the 1998 Act. These quantities, coupled with the fact that

the appellant had played a significant role in the commission of the offences, influenced the trial judge

who considered the offences to be ―grave‖ and sentenced him to 32 months‘ imprisonment. The

appellant appealed against the sentence.

16.31 In dismissing the appeal, Yong Pung How CJ made a number of observations concerning

sentencing which are useful in the trade mark context.

16.32 First, he drew attention to the limited function of an appellate court faced with an appeal

against sentence. He said that an appellate court should only interfere with a sentence if it was

satisfied that:

(a) the sentencing judge had made the wrong decision as to the proper factual basis for

sentence;

(b) there was an error on the part of the trial judge in appreciating the material placed

before him;

(c) the sentence was wrong in principle; or

(d) the sentence imposed was manifestly excessive.

16.33 The appellant had focused on the fourth ground, contending that the sentence was manifestly

excessive in light of the trial judge‘s failure to consider adequately the facts of the case, all the

mitigating factors and the relevant sentencing precedents. Amongst the facts of the case that the

appellant had cited in support of the appeal were that the goods were old stocks, obsolete and not

saleable, and that he intended to re-export them rather than sell them in Singapore. The Chief Justice

was not convinced that the goods were entirely unsaleable and agreed with the trial judge‘s sentiments

that the appellant‘s intention to re-export rather than sell the goods in Singapore was not of any

mitigating value whatsoever. This was because (at [16]):

Singapore is a prominent business hub with a reputation for upholding intellectual property

rights. It is manifestly in the public interest to deter potential criminals who are inclined to use

Singapore as a distribution centre or a base for transhipment of counterfeit products to

neighbouring countries.

16.34 Secondly, Yong CJ articulated the principle that the foremost consideration for a court in

deciding an appropriate sentence is that of public interest, citing PP v Tan Fook Sum [1999] 2 SLR

523 and Sin Gek Yong v PP [1995] 1 SLR 537. In respect of intellectual property, the public interests

were the promotion of Singapore as a regional intellectual property centre and the concomitant need

to clamp down on intellectual property piracy. In addition, a court determining a sentence under the

1998 Act should have regard to ―all the circumstances in which the offences were committed,

including the nature and extent of the infringements and the manner in which the infringements were

carried out‖: at [23].

16.35 Thirdly, Yong CJ noted from the cases that the trend of the courts, especially the appellate

courts, was to take a progressively more stringent stance on the infringement of intellectual property

rights. These cases indicate that custodial sentences are the norm unless the quantity of infringing

goods is quite small, and that the starting tariff for offences involving 1,000 infringing goods or more

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is a sentence of 12 months‘ imprisonment and upwards. The appellant disputed such a starting tariff,

arguing that the cases showed that the starting tariff was in fact three or four months‘ imprisonment

per charge. However, the Chief Justice said that it was ―overly simplistic‖ to determine the sentencing

tariff by reference to the jail term awarded per charge: at [25]. This was because a charge could deal

with just three infringing goods or with thousands of goods, in which event it would be hardly just for

the starting tariff to be the same in both situations. Justice would be better served if the starting tariff

was determined by reference to the number of infringing goods involved, bearing in mind that there

was really no ―hard and fast‖ rule concerning starting tariffs and that it was still incumbent on the

sentencing court to have regard to all the circumstances of the case when deciding on the sentence: at

[25].

Breach of confidence

16.36 The capacity of the breach of confidence action to provide relief beyond the range of the other

established forms of intellectual property and outside the frame of any contractual agreement has been

amply stated in a number of cases in Singapore and the UK: see, eg, Faccenda Chicken Ltd v

Fowler [1986] 1 All ER 617 andTang Siew Choy v Certact Pte Ltd [1993] 3 SLR 44. The justification

for such an addition to the legal armoury is the need to protect those (including employers) who reveal

exploitable confidential information in circumstances requiring, on the part of their recipients,

reciprocal obligations amounting in effect to good faith. The absence of such protection is likely to

lead to less sharing all round of know-how and valuable ideas and, consequently, less innovation and

commerciali sa tion. That cannot be for the greater good.

16.37 The categories of information that are protectable in the action may assume any characteristic

(eg, technical, commercial or personal), provided the information has not fallen into the public

domain. Moreover, the action does not insist that the information must measure up to the standards

required for copyright protection, and there is no application of that artificial and stringent test of

novelty in patents law which treats the state of the art as including information made available to an

outsider on a single occasion. It is enough if ―the content of the idea [is] clearly identifiable, original,

of potential commercial attractiveness and capable of being realised in actuality‖:Fraser v Thames

Television [1984] QB 44 at 66.

16.38 However, while it is desirable to cast a protective net around many revelations of information,

there is undoubtedly a danger of going too far, especially where the confidential nature of the

information is suspect, if not trumpery. Occasionally, the court in Singapore will encounter such

danger, as it did in the case of Stratech Systems Ltd v Nyam Chiu Shin [2004] SGHC 168 (―Stratech‖).

The case concerned the vehicle entry permit system (―VEPS‖), an automated electronic system for the

collection of toll from foreign vehicles entering Singapore. The Land Transport Authority had

engaged the third defendant, Guthrie Engineering (S) Pte Ltd (―Guthrie‖), to link this system with the

electronic road pricing system (―ERPS‖). Guthrie in turn engaged the plaintiff to develop the VEPS-

ERPS link, which the latter did through a computer program called ―V116‖. The parties subsequently

fell out over certain payment issues, and this resulted in the plaintiff stopping further development

work on the VEPS-ERPS link and two of its employees (the first and second defendants) terminating

their respective employment contracts and working for a subsidiary of the third defendant. The

plaintiff sued the defendants for, amongst others, unauthorised use of confidential information

concerning the V116 program.

16.39 An important aspect of such an action is the requirement to specify or particularise the

confidential information that has been taken or used. Unless a plaintiff is prepared to reveal

information which he claims is confidential and has been used by the defendant, he is necessarily in a

difficult position. His difficulty stems from the fact that if he discloses his confidential information, he

thereby gives away secrets, which is the one thing that he does not want to do. If, on the other hand,

he is not prepared to disclose his secret, then he is in obvious difficulty in showing that the defendant

has wronged him because there is, ex hypothesi, insufficient identification of his information to enable

a satisfactory conclusion to be drawn. This difficulty faced the owner of the manufacturing process of

77

the ―Tiger Balm‖ product in Chiarapurk Jack v Haw Par Brothers International Ltd[1993] 3 SLR

285 which failed to provide particulars concerning the manufacturing process, pricing and discounts

for the product. Accordingly, the Court of Appeal discharged the interlocutory injunction that was

initially granted in the owner‘s favour on the ground that no serious issue as to the misuse of

confidential information had been made out.

16.40 In Stratech, the plaintiff also failed to particularise what it had regarded as confidential

information and trade secrets belonging to it. Instead, according to Choo Han Teck J, the plaintiff

generated a veil of importance to the V116 program when ―all that we know about it is that it was a

program being developed by the first defendant and her team … to integrate the VEPS and ERPS‖: at

[10]. He was also not impressed with the argument that the program was a time-saving device,

making the obvious point that not every such device ―is a trade secret or is confidential in nature‖

(ibid). The lesson in all this is that assertions of confidentiality are no substitute for evidence of what

the plaintiff‘s secrets really are. Often, the true source of the failure or difficulty to particularise is that

there is really nothing confidential about the information.

16.41 Even if the program was confidential and therefore protectable, there would be no breach if

there was no unauthorised taking or use. In Stratech, there was a clear conflict of evidence in this

regard. The defendants said that they had used an earlier (and non-confidential) version of the

program. The plaintiff contended that it was the confidential V116 program that was used, relying in

particular on its expert witness who had testified as to the similarities between the V116 program and

the programs found on the third defendant‘s computers that were seized and studied under an Anton

Piller order. The reliance raised a familiar issue in breach of confidence actions: when does the taking

or use of information which is similar to a plaintiff‘s confidential information amount to breach of

confidence?

16.42 Under copyright and patent laws, the circumstances amounting to breach have been made

explicit and are relatively well defined; in general, they relate, respectively, to copying of the manner

in which ideas are made manifest as well as commercial exploitation that falls within the scope of the

claims defining the monopoly. There are no such precise parameters to determine the scope of the

breach of confidence action. The concept of ―use‖ embraces activities that are various and pervasive;

it encompasses, for instance, ―subconscious‖ use, use for which the recipient has no intention to take

advantage of or to make a financial gain, as well as partial disclosure of a significant and substantial

part of a secret process: see, respectively, Seager v Copydex [1967] 1 WLR 923,British Steel

Corporation v Granada Television Ltd [1981] AC 1096 and Amber Size v Menzel[1913] 2 Ch

239. The defining thread in these cases is the general and broad principle that any person who has

received confidential information is obliged to respect that confidence. Breach of this principle may

be ascertained by the taking or use of information which is similar to the plaintiff‘s confidential

information.

16.43 In Stratech, Choo J rejected the plaintiff‘s claim that there were similarities in the parties‘

programs under comparison, stating that there was nothing to indicate that the one was copied from

the other and that the programs were written in a computer language which was easily replicated

without recourse to copying. He opined (at [11]) that there ―were some points that might lead one to

the supposition that the defendants‘ version was a copied one, but those were points based on the

assumption that copying is quickest‖. The opinion indicates that an unorthodox approach has been

taken. Whether copying is quickest or not, the question whether the ―points‖ might also lead to breach

of the general and broad principle is one which, it is respectfully suggested, should perhaps be

considered with a little more depth.

Intellectual Property Law

Annual Review of Singapore Cases (4, 2003)

78

Information

Title: Intellectual Property Law

Textbook Title: Singapore Academy of Law Annual Review

Chapter No: 16

Author | Editor: Ng-Loy Wee Loon, Tan Tee Jim

Up

Catchwords

Trade Marks and Trade Names - Passing Off - Infringement - Identical or similar marks - Parallel imports - Revocation on ground of non-use - Innocence

Trade Marks and Trade Names - Breach of confidence - Former employee's duty of confidentiality - What amounts to a "trade secret"

Patents and Inventions

Up

Textbooks

Trade marks and passing off

Infringement: identical or similar marks?

16.1 Section 27 is the infringement provision in the Trade Marks Act (Cap 332, 1999 Rev Ed) ("Trade

Marks Act 1998"). Section 27(1) sets out the elements to be proved where the mark on the allegedly

infringing goods is identical with the registered trade mark, whereas s 27(2) deals with the situation

where the marks are only similar. The critical difference is that, where the marks are similar, s 27(2)

requires proof of a likelihood of confusion; in s 27(1), this is presumed.

16.2 This advantage that s 27(1) has over s 27(2) makes it worth the while for trade mark lawyers to

argue that the marks in question in their case are identical. For this purpose, the defendant‘s mark

does not have to be exactly the same as the registered trade mark in order to be considered

identical: Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd [2003] 4 SLR 755. The registered trade mark

was "KATANA GOLF" trade mark and "kG" logo while the defendant‘s mark was just the word

"KATANA". It was held that the marks were identical as the defendant‘s mark had reproduced the

"distinctive and dominant components" of the registered trade mark (at [17], referring with approval

to SA Société LTJ Diffusion v SA Sadas [2003] FSR 1 at [A31]–[A49]). (See "Parallel imports",

paras 16.4–16.27 infra for a more detailed discussion of the Pan-West case.)

16.3 On the comparison between marks, the case of British Sugar Plc v James Robertson & Sons

Ltd[1996] RPC 281 is enlightening and amusing. In this case, the registered trade mark was "TREAT"

while the defendant‘s mark was "Robertson‘s Toffee Treat". Jacob J held that the defendant‘s mark

was identical to the registered trade mark, since "Treat" appears in the defendant‘s mark. In the course

of his judgment, he also said (at 294):

[I]t is possible for the sign to be hidden or swamped. No-one but a crossword fanatic,

for instance, would say that "treat" is present in "theatre atmosphere".

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Parallel imports

16.4 It would be fair to say that, generally speaking, Singapore adopts an "international exhaustion of

rights" principle within her intellectual property ("IP") regime. By this, it means that an IP right

holder can no longer control the importation into Singapore of protected goods and/or their sale here,

after such goods have been put on the market anywhere in the world, by or with the consent of the IP

right holder. The IP right holder‘s right, it is said, has been exhausted by the first sale. Such goods are

often called "parallel imports".

16.5 In the Trade Marks Act 1998, this principle is embodied in s 29:

(1) Notwithstanding section 27 [the infringement provision], a registered trade mark is not infringed

by the use of the trade mark in relation to goods which have been put on the market, whether in

Singapore or outside Singapore, under that trade mark by the proprietor of the registered trade mark or

with his express or implied consent (conditional or otherwise).

(2) Subsection (1) does not apply where the condition of the goods has been changed or impaired after

they have been put on the market, and the use of the registered trade mark in relation to those goods is

detrimental to the distinctive character or repute of the registered trade mark.

16.6 Similar provisions exist in the other IP legislation: ss 25(3) and 25(4) of the Copyright Act

(Cap 63, 1999 Rev Ed) (see paras 16.37–16.40 in (2001) 2 SAL Ann Rev 288); s 66(2)(g) of the

Patents Act (Cap 221, 2002 Rev Ed) (note that limited changes are in the pipeline in the patents scene

to give effect to Singapore‘s obligation under the Free Trade Agreement with the US); s 30(7) of the

Registered Designs Act (Cap 266, 2001 Rev Ed).

16.7 Parallel imports are, in essence, genuine goods, made by or with the consent of the IP right

holder. Looked at in this light, it becomes clear why there is no reason for prohibiting their resale in

Singapore.

16.8 But which IP right holder are we referring to – the one in Singapore or outside of Singapore? It is

possible for an IP right to be owned by different entities in different countries. In this scenario, the

goods made and sold by the IP right holder in one country are considered genuine in that country. Are

they also genuine for our purposes?

16.9 This issue arose in two 2003 cases decided within three days of each other: Hup Huat Food

Industries (S) Pte Ltd v Liang Chiang Heng [2003] SGHC 244, and Pan-West (Pte) Ltd v Grand

Bigwin Pte Ltd(para 16.2 supra).

16.10 In the Pan-West case, the plaintiff was the registered proprietor of the "KATANA GOLF" trade

mark in Singapore for golf clubs etc. In Japan, the mark "KATANA" was registered in the name of

another entity, Umeda Shokai KK ("Umeda") for golf clubs. Umeda was unrelated to the plaintiff.

The defendant imported Umeda‘s KATANA golf clubs into Singapore, and was sued by the plaintiff

for infringement of its registered trade mark and for passing off. There was prima facie infringement

of the plaintiff‘s registered trade mark within s 27(1) of the Trade Marks Act 1998 (see discussion

above). The defence relied on, inter alia, s 29 of the Act, arguing that it provided a defence to trade

mark infringement when the goods involved were "parallel imports". The plaintiff applied for, and

obtained, an order for summary judgment. There was an appeal against this order, which was heard by

Lai Kew Chai J.

16.11 In an extremely concise judgment, Lai J dismissed the defendant‘s case. The judge crystallised

the issue right at the outset: in determining whether there is trade mark infringement under the Trade

Marks Act 1998, the relevant consent is that of the trade mark registered proprietor in Singapore. As

the judge pointed out at [14]:

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…"the proprietor" must refer to the proprietor or registered owner of the trade mark

infringed against. It also follows that the trade mark complained against must be a

trade mark that is registered in the Singapore register of trade marks (see further

s 2(5) [Trade Marks Act 1998]).

16.12 Section 2(5) of the Trade Marks Act 1998 provides that

References in this Act to registration (in particular, in the expression "registered

trade mark") are, unless the context otherwise requires, to registration in the register.

16.13 This is consistent with the principle in IP law that IP rights are territorial in nature. In the case

of trade marks, the registration of a trade mark in one territory gives a bundle of exclusive rights to

the trade mark proprietor in that territory. If the same entity registers the trade mark in different

territories, he gets a separate bundle of exclusive rights in each territory. One of the exclusive rights is

the right to control importation of goods bearing his trade mark (see in particular s 27(4)(c) of the

Trade Marks Act 1998). It is precisely this territorial nature of trade mark rights that allows him to

segregate the markets in different territories by exercising this importation right to prevent goods he

puts on the market in one territory from entering into another territory. To some, this is an abuse of

the trade mark monopoly, since the goods originate from the same party and the trade mark proprietor

has already received his just dues in the first sale of the goods. The principle of "international

exhaustion of rights" is the means to correct this abuse.

16.14 If different entities register the trade mark in different territories – Singapore and Japan, in this

case – then the monopoly over the use of the trade mark in each territory is vested in the respective

trade mark proprietors. Goods made by and sold in Japan by the Japanese trade mark proprietor

are genuine goods in Japan, but they are not genuine goods in Singapore because they were not made

by or with the consent of the Singapore trade mark proprietor; the latter has not received any returns

from the first sale of the Japanese goods.

16.15 Therefore, from this policy point of view, it is right to refer to the consent of

the Singapore trade mark proprietor when determining if the Singapore trade mark has been infringed.

16.16 As Lai J put it, the case before him "could not strictly be ‗parallel imports‘" (at [55]). For this

simple reason, s 29 did not apply to exonerate the defendant.

16.17 What was critical to Lai J‘s conclusion in the Pan-West case was the fact that the plaintiff (the

Singapore proprietor) and Umeda (the Japanese proprietor) were not related. He emphasised that the

parties were "separate and distinct entities" (at [53]). If it had been otherwise, the judge might have

arrived at a different conclusion; then, it might be said that the plaintiff impliedly gave its consent to

the manufacture and sale of the Japanese goods by Umeda. Support for this view comes from Revlon

Inc v Cripps & Lee Ltd [1980] FSR 85(one of the cases examined by Lai J), where the Revlon trade

mark in the US (country of first sale) was registered in the name of the parent company, while the

Revlon trade mark in the UK (country of importation) was registered in the name of the subsidiary. It

was held that the UK trade mark had not been infringed by the importation and sale of the US goods

because the subsidiary must be taken to have given its consent to the use of the Revlon mark by the

parent company. It is in this case that Templeman LJ (as he then was) made one of his better known

remarks: the Revlon group of companies could not escape the statutory provision legitimising parallel

imports (s 4(3)(a) of the repealed UK Trade Marks Act 1938) by "substituting the monkey for the

organ-grinder" (at 116).

16.18 This explains the following reason, inter alia, given by Lai J as to why s 29 did not apply to the

case before him (at [35]):

81

[T]he defendants‘ club was made by the registered proprietor of the Umeda Trade

Mark in Japan, which was not a subsidiary or an associated company of the

plaintiffs. [emphasis added]

16.19 This fact – that the parties are not separate and distinct entities – is perhaps what distinguishes

the Pan-West case from the other 2003 case, Hup Huat Food Industries case (para 16.9 supra). Here,

the trade mark "Apollo" was registered in Singapore in the name of the plaintiff (a Singapore

company) whereas the same trade mark was registered in Malaysia in the name of HHM (a Malaysian

company). The goods in question, biscuits and other confectionery products bearing the "Apollo"

mark, were made in Malaysia by AFI (a Malaysian company). Both AFI and HHM were wholly-

owned subsidiaries of AFH (a Malaysian company), which in turn was controlled by Keynote Capital

Sdn Bhd. Both Keynote Capital and the plaintiff were owned by the Liang family and the Tan family;

the Liang family was the majority shareholder of Keynote Capital while the Tan family was the

majority shareholder of the plaintiff. The Liang family also sat on the plaintiff‘s board of directors.

16.20 The plaintiff imported AFI‘s "Apollo" goods into Singapore for sale here and re-export to other

countries such as the Middle East. The packaging on these goods indicated the importer as the

plaintiff. Other parties in Singapore had imported AFI‘s goods into Singapore and resold the goods

locally and overseas. The fifth defendant used to buy AFI‘s "Apollo" goods from the plaintiff, but

started dealing directly with AFI from July 2002.

16.21 The relationship turned sour between the Liang family and the Tan family resulting in, as is the

case for many other litigation proceedings, the plaintiff (controlled by the Tan family) bringing an

action against the Liang family for, inter alia, conspiracy, breach of directors‘ fiduciary duties and

conspiracy to do harm to the plaintiff by unlawful means through diversion of the plaintiff‘s business.

This review will only focus on a claim that the plaintiff made in this action against the fifth defendant

for trade mark infringement and passing off for importing "Apollo" goods from AFI into Singapore

for sale.

16.22 Tay Yong Kwang J held that the fifth defendant was not liable for trade mark infringement

because (at [81]):

Like some other businesses here dealing with Apollo products, [the fifth defendant]

was importing genuine Apollo products from AFI for resale. Indisputably, the

plaintiff allowed AFI to manufacture Apollo products in Malaysia and to sell them in

Singapore and elsewhere. The fifth defendant was entitled to invoke s 29(1) [of the

Trade Marks Act 1998] … The present case was not unlike that in Revlon Inc v

Cripps & Ltd … where it was observed that the Revlon Flex mark had become in

effect the house mark of the Revlon group, indicating that the goods to which it was

applied originated for the Revlon group but not any particular entity in the group.

Here, the Apollo trademark was applied freely in Malaysia by AFI, the manufacturer,

with HHM being the owner of the trademark in Malaysia. The products were then

sold in Singapore and elsewhere. The trademark was no longer the preserve of the

plaintiff. [emphasis added]

16.23 There was some relationship between the plaintiff (the Singapore proprietor) and HHM (the

Malaysian proprietor), and this made the difference. Although Tay J did not make express reference to

this fact as the reason for finding in favour of the fifth defendant, it is submitted that this must have

been in his mind.

16.24 One might question, though, whether the relationship between the parties qualifies as a true

case of "monkey-and-organ-grinder" when the plaintiff was controlled by the Tan family while HHM

and AFI were controlled by the Liang family. But it appeared that the Liang family had a critical role

in the management of the plaintiff; for example, they managed to have a resolution passed at a

shareholders‘ meeting to wind down the plaintiff‘s business (a matter disputed by the Tan family in

82

the action). The learned judge‘s passage above should be read in this context. It is respectfully

submitted that the passage should not be interpreted as setting down the principle that, so long as the

goods were genuine goods in the foreign territory, that is, made by or with the consent of the foreign

proprietor, the goods are then treated as "parallel imports" in the Singapore market. This is not the

true meaning of "parallel imports".

16.25 This analysis on parallel imports in registered trade mark law applies equally to the common

law protection for trade marks, that is, passing off.

16.26 In conclusion, the Pan-West case did not involve parallel imports, but the Hup Huat Food

Industries case did.

16.27 For further discussion on this topic (eg the position of parallel imports which are qualitatively

different from the domestic goods), please refer to "Exhaustion of Rights in Trade Mark Law: The

English and Singapore Models Compared" [2000] EIPR 320.

Revocation on ground of non-use

16.28 The year 2003 saw the first two judgments from our courts on revocation for non-use of a trade

mark under the Trade Marks Act 1998: Reemtsma Cigarettenfabriken GmbH v Hugo

Boss AG (No 2)[2003] 4 SLR 155 ("the Hugo Boss case") and Bluestar Exchange (Singapore) Pte Ltd

v Teoh Keng Long[2003] 4 SLR 92 ("the Bluestar case"). (The non-use ground for revocation existed

under the repealed Trade Marks Act 1939 (Cap 332, 1992 Rev Ed) ("the old law"): see s 40 of the

repealed Act and cases such asSwanfu Trading Pte Ltd v Beyer Electrical Enterprise Pte

Ltd ("the Swanfu case") [1994] 1 SLR 625 (CA),[1993] 1 SLR 293 (HC); NV Sumatra Tobacco

Trading Co v Nanyang Brothers Tobacco Co Ltd[2001] 1 SLR 197).

16.29 Revocation on the ground of non-use of the trade mark is provided for in s 22 of the Trade

Marks Act 1998:

(1) The registration of a trade mark may be revoked on any of the following grounds:

(a) that, within the period of 5 years following the date of completion of the registration procedure, it

has not been put to genuine use in the course of trade in Singapore, by the proprietor or with his

consent, in relation to the goods or services for which it is registered, and there are no proper reasons

for non-use;

(b) that such use has been suspended for an uninterrupted period of 5 years, and there are no proper

reasons for non-use; …

16.30 The proprietor is effectively given an initial grace period of five years within which to

commence genuine use of his trade mark. The burden is on him to prove use, as evidenced by s 105

which provides that if, in any civil proceedings under the Trade Marks Act 1998, a question arises as

to the use to which a registered trade mark has been put, it is for the proprietor to show what use has

been made of it. In the Hugo Boss case, the proprietor failed to discharge such a burden. The applicant

for revocation had submitted evidence from the market and private investigators showing that no use

of the registered trade marks "HUGO" and "HUGO BOSS" could be found in respect of the goods for

which the marks were registered (namely, cigarettes, cigars, tobacco for cigarettes, pipe tobacco,

lighters and matches). The proprietor contended that the marks had been used on lighters and cigars.

However, it did not produce evidence of actual sales of these goods in Singapore. As regards lighters,

it relied on product catalogues which "would have been sent" from Germany to its franchisee in

Singapore. The applicant for revocation argued the catalogues did not prove that the lighters were in

fact sold in Singapore and noted that they contained a Hong Kong address and telephone/fax numbers

as well as a statement "Not every article is available for all countries". Belinda Ang Saw Ean J

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accepted this argument and further pointed to the significant lack of evidence from the proprietor‘s

franchisee in Singapore who, in her view (at [15]),

would be the best person to refute the applicant‘s accusation of non-use of the Marks

in the course of trade in Singapore for the goods in question. In the circumstances,

this is an appropriate case for adverse inference to be drawn against the respondent:

see s 116(g) Evidence Act [(Cap 97, 1997 Rev Ed)].

16.31 The learned judge also found the evidence concerning the alleged use of the marks in relation to

cigars to be "scanty and unsatisfactory". The proprietor had relied on one single act of use of the

marks on cigars at a cigar sampling function during an annual conference for its buyers. The purpose

of the cigar sampling function was presumably to attract interest and orders. However, the judge

found this purpose to be curious as the proprietor did not itself sell cigars but licensed the marks to

manufacturers. Additionally, there were invoices that showed that the conference was a fashion show,

rather than a buyers‘ event. The judge also noted that the proprietor had in an affidavit deposed that

sales of cigars under the marks were not actively pursued in Singapore because of restrictions over

smoking and tobacco advertisements.

16.32 The use of the word "may" in s 22(1) suggests that even if either of the grounds (a) and (b)

concerning non-use is established, the Registrar or the court still has a discretion to consider whether

to revoke the registration or not. This contrasts with the wording of s 22(3) which provides that the

registration of a mark "shall" not be revoked if use of the mark is commenced or resumed after the

expiry of the five-year period and before the application for revocation is made. In the UK, there have

been conflicting cases on the issue.

16.33 The issue was first considered in INVERMONT Trade Mark [1997] RPC 125 where the hearing

officer came to the conclusion that he had a discretion. This conclusion was assumed to be correct by

Lloyd J in ElleTrade Marks [1997] FSR 529 at 532. However, in ZIPPO Trade Mark [1999] RPC 173,

another hearing officer took a different view. The issue was dealt with at length

in Premier Brands UK Ltd v Typhoon EuropeLtd [2000] FSR 767 by Neuberger J who preferred the

view that there is no discretion to revoke. He reasoned (at 811) that:

[I]t is not only a privilege for a person to be the proprietor of a registered trade mark,

but it represents a monopoly: the Court should not be too ready to perpetuate a

monopoly in favour of a person who has not done anything to promote or enjoy it for

a period of five years.

16.34 It is respectfully submitted that this reasoning should also be adopted for s 22(1) of our Trade

Marks Act 1998. It does seem odd that the Act specifically provides for no revocation if good reasons

are shown for non-use but nonetheless leaves the Registrar or the court with residual discretion. If

indeed there is a discretion, there should have been some indications in the 1998 Act as to how the

discretion is to be exercised (as in s 40 of the repealed Trade Marks Act 1939 which had provided that

a registered trade mark may not be taken off the register if the non-use is shown to have been due to

"special circumstances in the trade" and not to "any intention not to use or to abandon" the trade

mark). Further, the word "shall" in s 22(7) indicates that the Registrar or the court has no discretion

but must revoke a mark in respect of the goods or services in relation to which the mark was not used.

It is curious that there should be a discretion (by virtue of s 22(1)) as regards a mark which has not

been used for any of the goods or services in the specification but no discretion at all where the mark

has not been used on only some of the goods or services. This tends to support the view that there is

no discretion at all under s 22 when one of the substantive grounds concerning non-use has been

established, whether in relation to all or some of the goods or services for which the mark is registered.

16.35 This view was endorsed in the Hugo Boss case (paras 16.28 and 16.30–16.31 supra) by Ang J

who cited with approval Neuberger J‘s reasoning. She was of the view that once the conditions of

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s 22(1) were made out, the court or the Registrar was obliged to exercise the power one way. The

following factors were set out in favour of the view:

(a) The statutory power conferred on the court or the Registrar is exhaustive, as registration may be

revoked in no other than in the specific grounds set out in the section.

(b) Section 22(3) expressly covers the situation where there is no power to revoke even if s 22(1)(a) or

(b) is satisfied. It amounts to an exhaustive statement of the position so far as relevant.

(c) There is no "sweeping up" clause to accommodate other grounds.

(d) Section 22(7) is consistent with the absence of discretion. Once the grounds are established in

respect of some goods and not the rest, partial revocation is to be ordered.

16.36 The learned judge further said that if there were some unexpressed ground which the court or

the Registrar could consider, it could only arise by implication as a matter of statutory construction.

However, s 22(1) expressly mentions "the following grounds" and four grounds are enumerated. Her

Honour said that an implication could not properly be found that went against the express statement

"the following grounds" and the effect of the expressio unius rule was to give the word "may" in the

section the meaning "may only". She added that since the function of a trade mark is to give a

proprietor a monopoly when his mark is used, there should be no discretion to allow it to remain on

the register and it should be revoked if it is not used or if there is no intention to use it (see [34],

citingImperial Group Ltd v Philip Morris & Co Ltd [1982] FSR

72; Premier Brands UK Ltd v Typhoon EuropeLtd (para 16.33 supra); and "PHILOSOPHY DI

ALBERTA FERRETTI" Trade Mark [2003] RPC 15).

16.37 The last ground upon which the proprietor relied to resist the accusation of non-use was that the

applicant‘s proposed marks were confusingly similar and the court should take the opportunity to stop

the applicant whose intention was to register its marks once the proprietor‘s marks were revoked. This

was in effect an attempt to conflate the grounds for revocation and opposition. The court, however,

rejected the attempt, saying that it ignored the fact that opposition under the Trade Marks Act 1998

was based on separate and distinct grounds. To allow the attempt would amount to bypassing the

process and procedure laid down for registering a mark and an opposition hearing. This ruling

emphasises that the rules for putting a mark on the register are different from those for dislodging it

from the register.

16.38 To avoid the penalty of s 22, it is not necessary that the trade mark is used in the exact form it is

registered because s 22(2) provides that "use of a trade mark includes use in a form differing in

elements which do not alter the distinctive character of the mark in the form in which it was

registered".

16.39 In the Bluestar case, the registered trade mark comprised a large plain star device appearing on

top of the words "BLUE STAR". The registered proprietor could prove user of a mark with a smaller

star device which was below or in between the words "BLUE STAR". The applicant for revocation

argued that such use was not good enough because the star device must be on top of the words

"BLUE STAR" and must dominate. In essence, Woo Bih Li J was asked to decide what were the

elements in this registered trade mark which constituted the "distinctive character" of the mark: was it

the position and size of the star device, relative to the words?

16.40 Whether a variant of a registered trade mark has altered the "distinctive character" of the mark

is a matter of impression. As Woo J put it in the Bluestar case, each case must depend on its own facts

(at [36]). It would be useful, nevertheless, to distil some general principles which can be used as a

guide to the determination of this question of fact. One approach is to revert to the predecessor of

s 22(2), ie the proviso of s 29 in the old law, to throw some light on the scope of "distinctive

character". Proviso (a) to s 29 equated user of a registered trade mark with user of a mark "with

85

additions or alterations not substantially affecting" the identity of the registered trade mark. Should

the question whether the variant of a registered trade mark has altered the "distinctive character" of

the mark be re-phrased as follows: does the variant substantially affect the identity of the registered

trade mark?

16.41 In the UK, this has not been the approach taken. In Elle Trade Marks (para 16.33 supra),

Lloyd J offered the view that the provision governing non-use in the UK Trade Marks Act 1994 (on

which our Trade Marks Act 1998 is modelled) implements Art 10 of the Trade Marks

Directive 89/104/EEC and "represents changes from the previous law", ie the repealed UK Trade

Marks Act 1938 (on which our repealed Trade Marks Act 1939 was modelled). Indeed, in a recent

English Court of Appeal decision concerning non-use of certain registered trade marks, the approach

taken by the court was not to revert to the previous law, but instead to analyse the concept of

"distinctive character" afresh. This is the BUD and Budweiser Budbräu Trade Markscase [2003] RPC

25 ("the Budweiser case"). One of the registered trade marks was "BUD" in a particular graphic form.

The variant of the mark used by the proprietor in the market was the word "BUD" in block letters.

Lord Walker said (at [43] to [45]):

The first part of the necessary inquiry is, what are the points of difference between

the mark as used and the mark as registered? Once those differences have been

identified, the second part of the inquiry is, do they alter the distinctive character of

the mark as registered?

The distinctive character of a trade mark (what makes it in some degree striking and

memorable) is not likely to be analysed by the average consumer, but is nevertheless

capable of analysis. … It is for the registrar [or judge] … to analyse the "visual,

aural and conceptual" qualities of a mark and make a "global appreciation" of its

likely impact on the average consumer, who:

"normally perceives a mark as a whole and does not proceed to analyse its

various details".

[emphasis added]

16.42 Returning to the case under review, the Bluestar case, Woo J found that the distinctive character

of the registered trade mark before him lay in the words "BLUE STAR" and not in the star device, the

latter being a plain star with five points which was present in many other registered trade marks

belonging to others. He also said (at [41]):

In my view, the trade and public would refer to the [registered trade mark] simply as

"Blue Star" and not "Blue Star with a star device".

The learned judge did not refer to the Budweiser case or to Lord Walker‘s approach, but it is

submitted that the considerations taken into account by the learned judge in coming to his conclusion

were substantially the same. Woo J could just as well have said that what was striking about the

registered trade mark in the memory of the average consumer (in the trade and public) were the words

"BLUE STAR", and not the common plain star device.

16.43 Since the products of the registered proprietor in the market were marked with at least the

words "BLUE STAR", the application to revoke the registered trade mark had to fail. What is

interesting about the Bluestarcase, on this issue of use of variants of a registered trade mark, is the

attempt to link s 22(2) to s 17 of the Trade Marks Act 1998 dealing with registration of "a series of

trade marks". Section 17 provides that a trade mark owner can apply to register, in one single

application within one class, a number of trade marks which "resemble each other as to their material

particulars and which differ only as to matters of a non-distinctive character not substantially affecting

the identity of the trade mark", thereby saving him filing fees and costs. Precisely because of this

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mechanism, argued the applicant for revocation, the latitude for variants allowed under s 22(2) must

be considered more narrowly, at least narrower than s 17. However, this argument was ultimately

abandoned, and the applicant for revocation conceded that the test under s 22(2) was no different from

that under s 17. If the test under s 22(2) is the same as that under s 17, and s 17 talks about "matters of

a non-distinctive character not substantially affecting the identity of the trade mark", merging the

language of s 22(2) and that of the predecessor of s 22(2), ie proviso to s 29 of the old law, the

implication is that the test under s 22(2) is the same as that under the repealed proviso to s 29. If so,

this would differ from the approach taken in the UK (see para 16.41 above).

16.44 In any event, on the facts of the case in Bluestar, the registered proprietor had registered a series

of trade marks with the words "BLUE STAR" and the star device in different locations, ie above,

below, on the left or right of the words. This fact could have influenced Woo J in coming to his

conclusion that the "distinctive character" of the registered trade mark lay in the words "BLUE

STAR". Thus, the advantage of registering a trade mark and its variants as "a series of trade marks"

can be more than just a saving of filing fees.

16.45 The Bluestar case also involved the question whether, if the use of variants of the registered

trade mark amounted to use of the registered trade mark itself, such use was genuine. The applicant

for revocation criticised the registered proprietor for allowing the use of the variants of the registered

trade mark randomly, in the sense that the use was without particular focus. Woo J noted that a lack of

focus in developing the value of the registered trade mark did not mean that the use was non-genuine

(at [50]). This must be right; the meaning of "genuine" in s 22 is to be found in judgment of the Court

of Appeal in the Swanfu case (para 16.28 supra, at 632, [32]):

[T]he primary meaning of "bona fide" in s 40(1)(b) [the non-use provision in the old

law] is "genuine", as opposed to "fictitious", "pretended" or "colourable". … The

primary question in a case under s 40(1)(b) is whether there has been a bona fide use

in the sense of use by way of trade. As the circumstances of proprietors of registered

trade marks vary from one to another and the circumstances of a particular

proprietor vary from time to time, there is no reason to have a hard and fast rule that

the use must be substantial for the purposes of resisting an application under this

section.

Therefore, lack of focus in developing the business in which the mark is used, even if this results in

insubstantial sales of the trade marked goods, is not necessarily evidence of lack of bona fide or non-

genuine use.

16.46 The last prong of attack launched by the applicant for revocation in the Bluestar case was to ask

the court to order partial revocation under s 22(7) of the Trade Marks Act 1998. The trade mark was

registered in respect of men‘s undergarments, briefs, socks, men‘s sports clothing, knitwear, singlets

and swimwear. The registered proprietor could prove use of the variants of the registered trade marks

on socks, briefs, men‘s T-shirts, singlets and swimwear. The applicant for revocation argued that the

court should revoke the registration in respect of the goods where no actual use could be proved,

namely, men‘s undergarments and knitwear, and to replace "men‘s sports clothing" with "men‘s T-

shirts".

16.47 Woo J noted that the English authorities on partial revocation, Decon Laboratories Ltd v Fred

Baker Scientific Ltd [2001] RPC 17 and Thomson Holidays Ltd v Norwegian Cruise Lines Ltd [2003]

RPC 32, did not advocate ordering partial revocation to restrict the specification of goods to those for

which the proprietor had in fact used the mark. Rather, the task of the court is "to limit the

specification so that it reflects the circumstances of the particular trade and the way that the public

would perceive the use" (per Aldous LJ inThomson Holidays Ltd v Norwegian Cruise Lines Ltd at

[31]). In this case, the various kinds of clothing on which there was actual use of the mark could also

be described as "knitwear". Woo J therefore dismissed the application for partial revocation as well.

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Innocence

16.48 Infringement of a registered trade mark is a statutory tort. As such, the damages recoverable are

governed by the same rules as for other torts and are intended to restore the proprietor to the position

in which he would have been had the infringement not occurred. The defendant‘s innocence is not a

bar to damages being awarded for trade mark infringement in a civil action (see Gillette UK Ltd v

Edenwest Ltd [1994] RPC 279). This was also the view of Belinda Ang Saw Ean J in Creative

Technology Ltd v Cosmos Trade-Nology Pte Ltd[2003] 3 SLR 697 at [16] when she granted summary

judgment against the defendants for trade mark infringement in respect of sound cards. Relying on

s 49(ii) of the Trade Marks Act 1998, the defendants argued that they had acted innocently in dealing

with the sound cards because they had no knowledge that they were infringing the plaintiff‘s

registered trade marks. That section criminalises such acts as the importation, sale, exposure for sale

and possession for the purpose of trade or manufacture of goods bearing a falsely applied trade mark,

unless the accused can prove that:

(i) having taken all reasonable precautions against committing an offence under this section, he had, at

the time of the commission of the alleged offence, no reason to suspect the genuineness of the mark

and on demand made by or on behalf of the prosecution, he gave all the information in his power with

respect to the persons from whom he obtained the goods; or

(ii) he had acted innocently.

16.49 Whether the accused person has acted innocently is obviously a question of fact. The defence is

not limited to inadvertence or mistake of fact. The accused person can rely on some of the elements in

the first ground of defence, ie s 49(i), provided there are additional facts which together show his

innocence. Conversely, the mere fact that he cannot establish one or two of the elements in the first

ground of defence does not mean that he cannot have acted innocently. For instance, if the reason why

he did not take all reasonable precautions against committing the offence is that none could have been

taken, it can be said that he was innocent (see Trade Facilities Pte Ltd v PP [1995] 2 SLR 475). In

the Creative Technology case, the learned judge was not convinced that the defendants were indeed

innocent, given that there were objective factors (such as the poor quality of the defendants‘ sound

cards and the price of their cards being three times less that the plaintiffs‘) from which an inference of

knowledge that the cards were infringing could reasonably be drawn.

16.50 More significantly, the learned judge was of the view that s 49(ii) is irrelevant as a defence in a

civil action, as it is specific to the offences and penalties laid down in that section. Interestingly, this is

to be contrasted with a reverse issue faced by the House of Lords in R v Johnstone [2003] FSR 42:

whether civil defences are available in criminal prosecutions. The accused was charged with selling

counterfeit CDs bearing the names of well-known performers (such as Beatles and Rolling Stones)

which were registered trade marks. Under the UK Trade Marks Act 1994, it is a defence to a claim of

trade mark infringement in a civil action if the mark was used descriptively and not as an indication of

trade origin (that is, not as a trade mark). The accused relied on such a defence. The Crown argued

that the criminal provisions of the UK Trade Marks Act were stand-alone provisions, the ingredients

of the offences created by the provisions appeared on the face of the section and Parliament had not

intended to introduce questions of civil infringement into the criminal courts. The House of Lords

disagreed. It opined that it was implicit in the criminal provisions that the offending use of a trade

mark must be use as a trade mark. In the case of a registered trade mark which consisted of words

which could be used descriptively, use of the words in their descriptive sense was unobjectionable,

and the criminal provisions could not have been intended to criminalise such use. It remains to be

seen whether the same reasoning can apply in relation to the criminal provisions in s 49 of our Trade

Marks Act 1998.

Breach of confidence

Former employee‟s duty of confidentiality: What amounts to a "trade secret"?

88

16.51 The law governing the extent of an employee‘s duty to protect his employer‘s information,

during and post-employment, is easy to state: During his employment, he cannot use or disclose his

employer‘s confidential information except in the discharge of his duties as employee, whereas after

he leaves his employment, the duty which remains is not to use or disclose his former employer‘s

information which qualifies as "trade secrets" (seeFaccenda Chicken Ltd v Fowler [1987] Ch 117, as

approved by our Court of Appeal in Tang Siew Choy v Certact Pte Ltd [1993] 3 SLR 44).

16.52 The dispute in this area usually lies in the question whether the former employer‘s information

is of such a high degree of confidentiality as to amount to a "trade secret". This was the bone of

contention in Asia Business Forum Pte Ltd v Long Ai Sin [2003] 4 SLR 658.

16.53 The plaintiff, a conference producer, sued its former employee (the first defendant) who left to

set up a rival company, allegedly using the plaintiff‘s confidential information, namely: (a) the

plaintiff‘s training manual which described in detail the concept, approach and method of how the

plaintiff went about organising its conferences; and (b) the plaintiff‘s database containing information

about speakers and delegates and contact lists for the conferences organised by the first defendant

during her course of employment. The plaintiff pointed out that it had (a) expended much time, labour

and expense to collate the information and build its database; (b) painstakingly created, compiled and

arranged particular documents over the years; and (c) developed a very organised system of work and

procedures to complement its own business model, methodology and system which had proven

successful.

16.54 Kan Ting Chiu J was not impressed by these arguments of the plaintiff. Effort and expense in

developing a piece of information is not, in itself, conclusive in the question whether the information

is a trade secret. As noted by Kan J at [18]:

What are the qualities of a trade secret? A trade secret can be in any form. It can be

simple or complex. It can be the result of intense thought and immense effort, or it

may be a chance discovery. It is not possible to state comprehensively the necessary

make-up of a trade secret.

Instead, the learned judge turned to the factors listed in the Faccenda Chicken case (supra) – whether

the circulation of the information was restricted; whether the employee was instructed that the

information was confidential; and whether the information could be easily isolated from other

information which the employee was free to use or disclose. These factors had previously been

applied in other disputes between former employers and employees, eg Tang Siew Choy v Certact Pte

Ltd (supra) and Medivac International Management Pte Ltd v Moore [1987] SLR 415.

16.55 Applying these factors to the plaintiff‘s training manual, Kan J noted that the confidentiality

and non-disclosure provisions in the first defendant‘s contract of employment did not mention the

training manual when they referred to the information that was protected. Further, the manual was not

marked "confidential". Such omission, in his view, might lead an employee to believe that the plaintiff

did not consider it to be secret or confidential. Kan J came to the conclusion that the training manual

was not a trade secret.

16.56 In reaching this conclusion, the judge was also influenced by the statement in Halsbury‟s Laws

of Englandvol 8(1) (4th Ed Reissue, 1996), at para 412 that "[k]nowledge of the reasonable mode of

general organisation and management of a business may well not be a trade secret", a statement which

is supported by some English decisions. Kan J was careful to leave open the possibility that in some

exceptional cases involving "businesses of exceptional sensitivity which require and deserve greater

protection", the employer may be able to show that its organisation or business method deserves that

protection (at [17]). Such was not the case here; conference organisation is a business with few, if any,

restrictions against those who wish to enter the industry, and there are many books published on the

skills and business of conference management.

89

16.57 Before one jumps to the conclusion that the lesson to be learnt from this case is that employers

should mark as many documents as possible "confidential", or restrict the employee to use or

disclose all information acquired in the course of employment, the following passage from Kan J‘s

judgment should correct such a misconception (at [10]):

The over-zealous characterisation and over-protective treatment of information

would not transform information of unexceptional confidentiality into a trade secret.

16.58 On the nature of the specific information on speakers and delegates, etc in the plaintiff‘s

database, Kan J accepted that, "for the present purposes", the information was "highly confidential

and cannot be used by the first defendant after she left the company" (at [28]). This is obiter; the

judge had dismissed the plaintiff‘s claim because it could not even prove, to his satisfaction, that the

first defendant had in fact made use of the information in the plaintiff‘s database after she left the

plaintiff‘s employment. It was not necessary to decide whether the information in the database was a

trade secret or not. For another example involving a similar type of information, reference can be

made to Tang Siew Choy v Certact Pte Ltd (para 16.51 supra). In this case, it was held that the

employer-plaintiff‘s lists of suppliers and customers were trade secrets. Whether a piece of

information qualifies for special protection as a "trade secret" or not, is ultimately a question of fact.

16.59 Such a question is not always an easy one. The reason for narrowing the scope of the duty owed

by former employees is because the interest in protecting the employer‘s confidential information has

to be balanced against the public policy in favour of competition. In describing the "delicacy in this

area of the law", the Court of Appeal in Tang Siew Choy v Certact Pte Ltd referred to the following

words of Cumming-Bruce LJ in G D Searle & Co Ltd v Celltech Ltd [1982] FSR 92 at 99:

The court seeks to uphold the obligation of free contracting parties to a contract of

service to honour their contractual obligations. On the other hand, the court seeks to

respect the rights of servants to advance in their chosen trade and profession, and in

this connection to promote their own private interest by changing their employment,

and also to promote the public interest by better use of the servants‘ personal

aptitudes, experience and skill.

Patents

16.60 Last year, we reviewed the consolidated case of Contour Optik Inc v Pearl‟s Optical Co Pte

Ltd[2002] SGHC 238 in which the plaintiffs sued four defendants in two actions for infringement of

two patents (numbered 47151 and 60169) relating to spectacle frames. The defendants not only denied

infringement but also claimed that the patents were invalid. In one action, the defendants were Peng

Lian Trading Co ("Peng Lian") and another party. In the other action, the defendants were two other

entities. Lee Seiu Kin JC (as he then was) dismissed the suit against all the defendants, after finding,

amongst others, that no evidence of infringement had been produced by the plaintiffs. In particular, he

also found claim 2 of patent no 47151 and claims 3 and 4 of patent no 60169 to comprise patentable

inventions. It is against these findings that Peng Lian appealed to the Court of Appeal. Peng Lian

asserted that those claims were not valid for lack of an inventive step.

16.61 Inventive step, or "obviousness", is dealt with in s 15 of the Patents Act (Cap 221, 2002 Rev

Ed):

An invention shall be taken to involve an inventive step if it is not obvious to a

person skilled in the art, having regard to any matter which forms part of the state of

the art by virtue only of section 14(2) and without having regard to section 14(3).

16.62 Ascertaining whether an invention has an inventive step (or is non-obvious) in light of the

relevant prior art is often a difficult exercise. The English Court of Appeal in Windsurfing

90

International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 at 73–74 provided a useful four-

step approach to determine whether something involves an inventive step:

(a) The court must identify the inventive step embodied in the patent;

(b) It must "assume the mantle of the normally skilled but unimaginative addressee in the art at the

priority date and impute to him what was, at that date, the common general knowledge in the art in

question";

(c) It must identify what, if any, differences exist between the prior cited art and the alleged invention;

and

(d) It must ask itself whether, viewed without any knowledge of the alleged invention, those

differences constituted steps which would have been obvious to the skilled man or whether they

require any degree of invention.

This approach was adopted by our Court of Appeal: see, eg, Merck & Co, Inc v Pharmaforte

Singapore Pte Ltd [2000] 3 SLR 717. It was again recently adopted by the same court in Peng Lian‘s

appeal, now reported at[2003] 2 SLR 560 as Peng Lian Trading Co v Contour Optik Inc ("the Peng

Lian case").

16.63 In our earlier review, we cautioned that the court must resist any temptation to indulge in an ex

post factoanalysis or be beguiled by the simplicity of the invention, citing the case of Vickers, Sons

and Co, Limited v Siddell (1890) 7 RPC 292 where Lord Herschell said (at 304–305) that:

If the apparatus be valuable by reason of its simplicity, there is a danger of being

misled by that very simplicity into the belief that no invention was needed to

produce it. But experience has shown that not a few inventions … have been of so

simple a character that when once they were made known it was difficult … not to

believe that they must have been obvious to everyone.

To similar effect was the speech of Lord Russell of Killowen in Non-Drip Measure Coy, Ld v

Stranger‟s, Ld(1943) 60 RPC 135 at 142:

Whether there has or has not been an inventive step in constructing a device for

giving effect to an idea which when given effect to seems a simple idea which ought

to or might have occurred to anyone, is often a matter of dispute. More especially is

this the case when many integers of the new device are already known. Nothing is

easier than to say, after the event, that the thing was obvious and involved no

invention.

16.64 In the Peng Lian case, our Court of Appeal also sounded the same caution (at [28]):

It is all too easy to say, after the event, that the thing was obvious and involved no

invention. Ex post facto analysis can often be unfair to inventors … It is right to

remind ourselves that a small step could still be an inventive step.

The court was compelled to state this because Peng Lian had argued that, contrary to the trial judge‘s

finding, the concept claimed in claim 2 of patent no 47151, namely "positioning each projection lower

than the upper side of each arm of the auxiliary frame, such that the projection would extend

downwards to the arms or magnetic member of the primary frame, thereby creating a hooking effect"

was not an inventive concept. It pointed to the evidence of its two experts who had testified that it

would have been obvious to an addressee skilled in the art to create a "hooking effect" to secure the

auxiliary frame to the primary frame. In particular, the addressee would have known that the housing

could be welded higher or lower than the upper level of the arm of the primary frame and, if so, a kink

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would be created which would act as a restraint when the auxiliary frame sits on the primary frame.

The court was however not satisfied that the prior art relied upon by the experts taught the skilled

addressee to create a kink of this nature. It taught the creation of mechanical restraint through the use

of clips, hooks and catches. The court said that the experts did not explain why the prior art would

necessarily have taught the skilled addressee to take the step depicted in claim 2 and expressed (at

[31]) its "distinct impression that the experts had rationalised the matter with the benefit of hindsight".

16.65 It should be mentioned that, before rejecting the evidence of the experts, the court was

cognisant of the case of Mölnlycke AB v Procter & Gamble Limited (No 5) [1994] RPC 49 in which

the English Court of Appeal had held that in determining whether an invention involved an inventive

step, which is a question of fact, the court would rely on the evidence of expert witnesses and of the

words of Sir Donald Nicholls VC in that case (at 113):

In applying the statutory criterion and making these findings the court will almost

invariably require the assistance of expert evidence. The primary evidence will be

that of properly qualified expert witnesses who will say whether or not in their

opinions the relevant step would have been obvious to a skilled man having regard

to the state of the art. All other evidence is secondary to that primary evidence.

16.66 As regards claims 3 and 4 of patent no 60169, Peng Lian relied on the oft-quoted principle that

a new use of an old contrivance could not involve an inventive step, as enunciated by Lord

Westbury LC in Harwood v Great Northern Railway Company (1864) 11 HL Cas 654 at 682–683;

11 ER 1488 at 1499:

No sounder or more wholesome doctrine, I think, was ever established than … that

you cannot have a patent for a well-known mechanical contrivance merely when it is

applied in a manner or to a purpose, which is not quite the same, but is analogous to

the manner or the purpose in or to which it has been hitherto notoriously used.

16.67 The issue in the Peng Lian case was whether the use of a magnetizable substance and a magnet

on the primary and auxiliary frames, as opposed to using two magnets, would constitute an inventive

step. The trial judge had held that the use of the magnetizable substance was an inventive step. Peng

Lian, however, pointed out that the prior art had disclosed the use of a magnet with a magnetizable

substance for attaching the auxiliary frame to the primary frames and that this was conceded by the

plaintiffs‘ expert. In the circumstances, the Court of Appeal agreed that the use of a magnet and a

magnetizable substance to effect attachment was a matter of general knowledge and that the

application of that knowledge to attach the auxiliary frame to the primary frame of a spectacle with

the use of a magnet and magnetizable substance could not require any imagination or invention.

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Intellectual Property Law Annual Review of Singapore Cases (3, 2002)

Information

Title: Intellectual Property Law

Textbook Title: Singapore Academy of Law Annual Review

Chapter No: 16

Author | Editor: Ng-Loy Wee Loon, Tan Tee Jim

Up

Catchwords

Patents and Inventions - Novelty - s 14 Patents Act (Cap 221, 1995 Ed)

Patents and Inventions - Infringement - s 66 Patents Act (Cap 221, 1995 Ed)

Patents and Inventions - Inventive Step - Inventive step - s 15 Patents Act (Cap 221, 1995 Ed)

Patents and Inventions - Patents - Construction of patent

Trade Marks and Trade Names - Copyright - Copyright and trade marks overlap - Fair dealing for purposes of reporting current events

Trade Marks and Trade Names - Registrable Trademarks - Scope of s 27(6) Trade Marks Act (Cap 332, 1999 Ed)

Trade Marks and Trade Names - Passing Off - Passing off as to quality of goods

Trade Marks and Trade Names - Descriptive marks -

Trade Marks and Trade Names - Passing Off - Assessment of likelihood of deception or confusion

Patents and Inventions - Registration - Corresponding application

Patents and Inventions - Recordal - s 75 Patents Act (Cap 221, 1995 Ed)

Up

Textbooks

Trade marks and passing off

Assessment of likelihood of deception or confusion

16.1 Protection for trade marks in Singapore (statutory or at common law) is premised upon proof

of likelihood of deception or confusion among the public arising from the similarity between the two

conflicting marks. While this is essentially a question of fact, there are various legal principles

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governing how the court should go about making this finding of fact. The case Polo/Lauren Co LP v

United States Polo Association[2002] 1 SLR 326, is the latest case to give a useful summary of some

of these principles.

16.2 The two conflicting marks in this case both depicted a polo player on horseback. One of

them belonged to the well-known Polo/Lauren Co LP (‗the Polo/Lauren mark‘), while the other was

the mark of United States Polo Association which had the letters ‗USPA‘ beneath the mark (‗the

USPA mark‘). The other difference between these two marks was that the polo player in the

Polo/Lauren mark appeared with his polo club on the upswing while the USPA mark showed the

player with his polo club on the low swing. Choo Han Teck JC (as he then was) had to decide if the

USPA mark was so similar to the Polo/Lauren mark as to cause confusion. If so, its registration was

not permitted under ss 15 and 23 of the Trade Marks Act (Cap 332, 1992 Ed). (This Act has been

repealed and replaced by the Trade Marks Act (Cap 332, 1999 Ed). The relevant provision under the

1999 Act would be s 8.)

16.3 Choo JC summarised the governing legal principles as follows:

(a) The question whether a particular mark is calculated to deceive or cause confusion is not

the same as the question whether the use of the mark will lead to passing off (Re Hack‟s

Application (1940) 58 RPC 91 at 103).

(b) It is ‗sufficient if the result of the registration of the mark will be that a number of persons

will be caused to wonder whether it might not be the case that the two products come from the

same source. It is enough if the ordinary person entertains a reasonable doubt‘ (Re Jellinek‟s

Application (1946) 63 RPC 59 at 78).

(c) The test is necessarily a question of fact and degree in every case („Bali‟ Trade Mark[1969]

RPC 472 at 496).

(d) The comparison of the earlier mark and proposed marks ‗must be assessed taking into

account the actual way and manner that the marks are used, and surrounding circumstances

such as the similarities between marks and goods on which they are applied‘ (Kellogg Co v

Pacific Food Products Sdn Bhd[1999] 2 SLR 651 at [33]).

(e) ‗Two marks, when placed side by side, may exhibit many and various differences, yet the

main idea left on the mind by both may be the same. A person acquainted with one mark, and

not having the two side by side for comparison, might well be deceived, if the goods were

allowed to be impressed with the second mark, into a belief that he was dealing with goods

which bore the same mark as that with which he was acquainted‘ (Kerly‟s Law of Trade Marks

and Trade Names (12th Ed, 1986) at para 17-08).

(f) The law is not concerned here with the ‗moron in a hurry‘ being confused (Morning Star

Co-op Society v Express Newspapers [1979] FSR 113), but with confusion among ‗a

substantial number of persons of ordinary care and intelligence‘ (Kellogg Co v Pacific Food

Products, supra at [32]).

16.4 On (e), which advocates adopting an approach of comparison where the two marks are not put

side by side, Choo JC observed that, while this approach might be useful especially if the judge was

familiar with the product against which the other was being compared, it was more likely that judges

would place the two marks side by side for comparison (as the assistant registrar did, in this case). He

saw nothing inherently wrong with this latter approach, and it was one which he himself would prefer

to adopt.

16.5 On (g), the learned judicial commissioner elaborated at [9] that, in the context of shoppers,

the assessment must be made by reference to someone who is a ‗common and ordinary consumer

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[who] can reasonably be expected to spend a modicum of attention and reflect on what he is

examining, at least for a moment that is longer than ―in a flash‖‘.

16.6 Taking into account matters such as the absence of actual confusion even though the goods

bearing the USPA mark had been sold since 1996 (a fact which in itself, Choo JC stressed, was not

decisive of the question), and the fact that the products of the two companies were sold exclusively in

their own respective boutiques, the judicial commissioner concluded that the two marks were not

sufficiently similar as to cause confusion.

Descriptive marks

16.7 Trade marks which are descriptive of the goods or services sold under them enjoy limited

protection, if any. The list of local decisions setting out this established principle – eg, Mechanical

Handling Engineering (S) Pte Ltd v Material Handling Engineering Pte Ltd [1993] 2 SLR

205; Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd [2000] 2 SLR 766 – sees an addition of one more

case: Yunnan Baiyao Group Co Ltd v Tong Jum Chew Pte Ltd [2003] 1 SLR 62.

16.8 The plaintiffs, a public company in China, manufactured a herbal drug known as ‗Yunnan

Paiyao‘ (meaning ‗white medicine from Yunnan‘). It manufactured this drug for a Chinese

government-owned company, Yunnan Medicines & Health Products Import and Export Corporation

(‗YIE‘), which sold this drug in the international markets, including Singapore, under the trade mark

‗Camellia Yunnan Paiyao‘ and in a red/yellow packaging. There was no dispute that the brand

‗Camellia‘ belonged to YIE. The plaintiffs sold this drug in China under the trade mark ‗Yunfeng

Yunnan Baiyao‘ and in a red/green/white packaging. The defendants were appointed by YIE as the

sole agents in Singapore for the distribution and sale of the ‗Camellia Yunnan Paiyao‘. They were

sued by the plaintiffs in passing off, in particular:

(a) for importing and selling ‗Camellia Yunnan Paiyao‘ products whose packaging contained

a description that they were manufactured by the plaintiffs; and

(b) for importing and selling ‗Camellia Yunnan Paiyao‘ products manufactured by the

plaintiffs which had passed the product expiry date indicated on the packaging.

16.9 The allegation in (a) was a claim in passing off as to the origin of the product, that is, the

defendants attempted to mislead the public into thinking that defendants‘ products were in fact

products of the plaintiffs. However, as pointed out by Choo Han Teck JC (as he then was) at the

outset of his judgment, this allegation is of no advantage to the plaintiff unless the plaintiff‘s product

enjoyed a goodwill which the defendant might benefit from the passing off. In this case, therein lay

the difficulty: the plaintiffs could not establish that they had any goodwill to protect; the goodwill in

the ‗Camellia‘ trade mark and in the red/yellow packaging belonged to YIE, and no one could claim

any goodwill in ‗Yunnan Paiyao‘ since this mark was descriptive of the product in question. Choo JC

drew an analogy to an earlier trade mark case involving another Chinese herbal/medicinal

product, Yomeishu Seizo Co Ltd v Sinma Medical Products (S) Pte Ltd [1991] SLR 499, where

registration of a mark comprising three Chinese characters for medicated wine was refused. This was

not a case where the descriptive trade mark had acquired a ‗secondary meaning‘ through extensive use

by the plaintiff (eg, Reddaway v Banham (1896) 13 RPC 218).

16.10 Further, the plaintiffs had not discharged the burden of proving that the defendants‘ products

were not in fact manufactured by the plaintiffs; the evidence showed that the defendants had bought

the products from YIE (or, in the case of one shipment, from YIE‘s parent company).

Passing off as to quality of goods

16.11 The allegation in (b) – that the defendants were selling products which had passed the

product expiry date – was a claim in passing off as to the quality of the product, that is, the defendants

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attempted to mislead the public into thinking that they were purchasing the genuine (unexpired)

product of the plaintiff. This form of passing off is well-accepted: see, eg, AG Spalding & Bros v A W

Gamage Ltd (1915) 32 RPC 273 (defendant stopped from selling plaintiff‘s old range of footballs as

its new range).

16.12 What is inherent in this form of passing off is that there must be a difference in the quality of

the products under comparison: if the products of the plaintiffs sold by the defendants originated from

the plaintiffs (and hence there is no passing off as to the origin of the products) and were of the same

quality as those sold by the plaintiffs themselves, where does the complaint lie? As Choo JC put it (at

[12]):

‗Passing off in such cases [ie as to quality of the goods] is not about the diligence, or accuracy,

in the printing of the expiry date, but of actual differences in quality. The difference is a fact

that must be proved.‘

On the facts, the plaintiffs failed in this claim, because they could not prove that the products sold by

the defendants had actually passed the expiry date.

16.13 Further, Choo JC dismissed the plaintiffs‘ claim because he found that they had not also

proved that the defendants‘ products were inferior. On this, he said (at [12]):

‗I think that it must be obvious that this form of passing off must involve a product that is

proved to be inferior to the one under comparison.‘

16.14 With respect, while a difference in quality between the products under comparison is critical

in this type of claim, whether this difference in quality must necessarily mean the defendants‘

products are the inferior ones may not be so obvious. The judicial commissioner appeared to have

been led to make this assumption by the authorities cited by the plaintiffs‘ counsel in this case, all of

which he said involved defendants attempting to pass off inferior goods of the plaintiffs as the

superior version. In one of these cases, though, it is not entirely clear that this was indeed the case.

In Champagne Heidsieck et Cie v Scotto and Bishop (1926) 43 RPC 101, where the court stopped the

sale in the UK of champagne intended for the continent, no aspersions were cast on the quality of this

champagne; the reason for having two different qualities of champagne – one for the UK and one for

the continent – was simple: to suit the taste of the consumers in these two markets (at 104).

16.15 From the trade mark proprietors‘ point of view, requiring them to prove that products

originating from them but sold by the defendant are inferior in some manner (relative to those sold

through authorised channels) may be a little too harsh. Their position will be this: if the public in

Singapore associates goods bearing their trade mark with a certain quality, this goodwill of theirs will

be damaged if they cannot stop the sale in Singapore of their other goods which are different, but not

necessarily inferior, in quality.

Scope of section 27(6) of the Trade Marks Act

16.16 Section 27(6) of the Trade Marks Act (Cap 332, 1999 Ed) is in pari materia with s 10(6)

of the UK Trade Marks Act 1994, which provides that it is not trade mark infringement if the use of a

registered trade mark by any person is:

‗for the purpose of identifying goods or services as those of the proprietor or a licensee, but any

such use otherwise than in accordance with honest practices in industrial or commercial matters

shall be treated as infringing the registered trade mark if the use without due cause takes unfair

advantage of, or is detrimental to, the distinctive character or repute of the trade mark.‘

16.17 The English provision is usually invoked in the situation where the defendant uses a

registered trade mark, without the authorisation of the registered proprietor, in a comparative

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advertisement: see, eg, Barclays Bank plc v RBS Advanta [1996] RPC 307; Vodafone Group plc v

Orange Personal Communications Services Ltd [1997] FSR 34; British Airways plc v Ryanair

Ltd [2001] FSR 32.

16.18 Section 27(6) was invoked for the first time in Singapore in Fragrance Foodstuff Pte Ltd v

Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd [2002] 4 SLR 916 (HC); Bee Cheng Hiang Hup

Chong Foodstuff Pte Ltd v Fragrance Foodstuff Pte Ltd [2003] 1 SLR 305 (CA). This is the ‗bakwa‘

(a type of sweet barbequed meat) case. It cannot exactly be described as one of comparative

advertising. Here, the defendants had put up an advertisement in the local newspapers featuring their

own trade mark and the plaintiffs‘ registered trade mark, with a prominent message that the two

companies were not related to each other. According to the defendant, this advertisement was

prompted by two incidents in which there was some confusion that the defendants‘ products were

those of the plaintiffs, and the defendant wanted to dispel such confusion.

16.19 The plaintiffs brought an action for infringement of copyright in their trade mark and of

their registered trade mark, and applied for:

(a) summary judgment in respect of their copyright infringement action; and

(b) an interim injunction restraining the defendants from further infringing their copyright and

trade mark rights.

These two interlocutory applications were heard by Lai Siu Chiu J, who allowed the application in (a).

The defendant appealed against her summary judgment, and succeeded in having it reversed by the

Court of Appeal (see below under ‗Copyright‘).

16.20 No order was made on the application in (b) because the defendants gave an undertaking not

to repeat their advertisement until trial or further order. However, in the course of the proceedings, the

defendants raised the argument that their use of the plaintiffs‘ registered trade mark in the

advertisement was ‗for the purpose of identifying goods or services as those of the proprietor [ie the

plaintiffs]‘, and hence was justified by s 27(6) of the Trade Marks Act. This argument did not find

favour with Lai J (at [37]) because:

‗[T]he advertisement/notices … [contained] a subtle suggestion that the defendants‘ goods had

been confused with those of the plaintiffs which were inferior to the defendants‘, that the

plaintiffs were responsible for such confusion and, that the plaintiffs copied the defendants‘

logo.‘

As pointed out by the Court of Appeal, Lai J appeared unable to accept that the argument of s 27(6)

applied because the motive of the defendants was ‗wrong‘ (at [15] of the Court of Appeal judgment).

In other words, Lai J was of the view that the defendants‘ use of the plaintiffs‘ registered trade mark

fell short of the honesty requirement in s 27(6), ie their use was not ‗in accordance with honest

practices in industrial or commercial matters‘ and ‗without due cause takes unfair advantage of, or is

detrimental to, the distinctive character or repute of the trade mark‘.

16.21 However, the Court of Appeal held that, whatever misgivings the judge may have had of the

defendants, this was a case which should proceed to full trial where the defendants would have an

opportunity to call their witnesses to explain their motives and be subject to cross-examination. It may

well be that the trial judge would conclude, in the light of all the evidence adduced before him, that

s 27(6) exonerated the defendants because they had reproduced the plaintiffs‘ trade mark simply to

inform the public that the two marks were different and the two companies were not related, and that

there was nothing more sinister than that.

Copyright

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Overlap between trade marks and copyright

16.22 In the Fragrance case, the plaintiffs‘ trade mark was a logo comprising the English word

‗Fragrance‘ and its Mandarin equivalent and a stylised representation of a tongue coming out of a

mouth and licking lips. It was registered in respect of cakes, biscuits, pastry and confectionery, and

hence enjoyed protection under the Trade Marks Act. At the same time, it was an original artistic

work in which copyright subsisted.

16.23 Should the one and same subject-matter enjoy protection in two different intellectual property

regimes? If so, should the two scopes of protection be identical? If not, how should we deal with any

conflict between the two regimes? In the UK, such questions arose in cases such as Catnic

Components Ltd v Hill & Smith Ltd[1982] RPC 183 (copyright and patents: see judgment of

Whitford J) and in Philips Electronics BV v Remington Consumer Products [1998] RPC 283 (trade

marks and registered designs: see judgment of Jacob J).

16.24 In the Fragrance case, the issue may be formulated as such: If s 27(6) of the Trade Marks Act

does in fact exonerate the defendants‘ use of the plaintiffs‘ registered trade mark (see para 16.21

above), does this in any way exonerate the defendants from copyright infringement? This question

arose because, by reproducing exactly the plaintiffs‘ logo without their consent, the defendants

had prima facie infringed the plaintiffs‘ copyright in the work and the only remaining question was

whether they could avail themselves of any defence.

16.25 The defendants argued that it could not be the intention of Parliament to authorise the doing

of an act – in this case, under s 27(6) of the Trade Marks Act – which would infringe a related

right, ie copyright. This argument was also put in an alternative way: in electing to use the work as a

trade mark, the plaintiffs must be taken to have granted an implied licence for other traders to deal

with that work in a manner not inconsistent with its status as a trade mark. The plaintiffs disputed this

argument by referring to an Australian decision, R A & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986)

6 IPR 279 (Bailey‟s case), a parallel importation case, where Young J held that, while the defendant‘s

importation of the plaintiff‘s liquor into Australia did not infringe the plaintiff‘s Australian registered

trade mark, it did infringe the plaintiff‘s copyright in that trade mark.

16.26 The Court of Appeal was not persuaded by Bailey‟s case, distinguishing it on the basis that

the facts there were dissimilar to those before it. It held that this issue deserved ‗fuller ventilation‘ (at

[22]). This was another reason why the plaintiffs‘ application for summary judgment was

misconceived. It ordered that the action should proceed to full trial.

Fair dealing for purpose of reporting current events

16.27 Section 37 of the Copyright Act (Cap 63, 1999 Ed) permits a fair dealing with a literary,

dramatic, musical or artistic work, or with an adaptation of a literary, dramatic or musical work, for

the purpose of the reporting of current events in a newspaper, etc. This was the other defence raised

by the defendants in theFragrance case in the claim against them for copyright infringement.

16.28 Clearly, this defence could be available to the defendants as it was applicable to use of artistic

works, the category of works into which the plaintiffs‘ trade mark fell). The defendants made two

arguments on this defence. Firstly, this defence could only apply where there was an element of

public interest; in this case, the public had a right, as well as an interest, to know that the two

companies were not related and to have the confusion undone. Secondly, the defendants‘

advertisement which appeared in the local papers on 2 and 3 February 2002 qualified as ‗reporting

current events‘; this was supported by the fact that the Chinese newspapers carried a news report on

the alleged confusions on 3 February 2002.

16.29 The Court of Appeal referred to some English cases on the scope of this defence. In particular,

it had been pointed out in BBC v British Sky Broadcasting Ltd (1991) 21 IPR 503, that there was no

98

justification for limiting the defence so as to apply only to reporting current events in a general news

programme. Further, the fact that the defendant was a commercial rival of the copyright owner did

not, ipso facto, take the case outside this defence.

16.30 While stressing that it was not offering any definitive views on the defence in s 37, the Court

of Appeal did note that, if there was in fact confusion in the mind of some members of the public, that,

in the opinion of the Court of Appeal, could conceivably constitute a ‗current event‘. It concluded that

the issues raised by this defence – whether there was confusion and whether the matter was a current

event – were issues of fact and law which should not be determined summarily.

Patents

16.31 The body of case law on patents in Singapore continues to increase incrementally with the

decision of Lee Sieu Kin JC (as he then was) in October 2002 in the consolidated case of Contour

Optik Inc v Pearl‟s Optical Co Pte Ltd (Suits 147/2000 and 371/2001, HC, unreported judgment dated

14.10.2002). In the case, the plaintiffs sued four defendants for infringement of two patents relating to

spectacle frames. The defendants not only denied infringement but also claimed that the patents were

invalid, that they were granted based on a misrepresentation and that there were groundless threats.

The issues therefore concerned construction, validity, infringement, registration and recordal of the

patents. Lee JC dismissed the suit against all the defendants, in the process re-affirming and applying

a number of established principles of patent law concerning those issues.

Construction of patent

16.32 It is provided in s 113(1) of the Patents Act (Cap 221, 1995 Ed) (hereafter ‗Patents Act‘) that:

‗[A]n invention for a patent … shall, unless the context otherwise requires, be taken to be that

specified in a claim of the specification of the … patent … as interpreted by the description and

any drawings contained in that specification, and the extent of the protection conferred by a

patent … shall be determined accordingly.‘

16.33 A patent specification is to be construed like any other document and the normal rules of

construction therefore apply. However, a number of principles of construction unique to the

specification have arisen. InCatnic Components Ltd v Hill & Smith Ltd [1982] RPC 183, the House of

Lords stated that the specification must be construed purposively, rather than through a literal

approach. It must be construed by the court adopting the mantle of the person skilled in the relevant

art and in the light of the common general knowledge with which he is assumed to be imbued.

Ultimately, the objective of construing a patent is to ascertain the intention of the patent. What do the

words in the patent intend to convey to the person skilled in the art? Although evidence can usefully

be given as to the context of a claim and the meaning of technical terms, the issue of construction,

being a question of law, is essentially a matter for the court and is important as it determines not only

the scope of the claim in a patent but also validity and infringement.

16.34 These principles were applied by Lee JC in the Contour Optik case. The subject spectacle

frames consist of a primary and an auxiliary frame. The primary frame is for housing prescription

lenses while the auxiliary frame is for tinted lenses. The patents relate to the methods of attaching the

auxiliary frame onto the primary frame. One of the patents (namely, Patent No 47151) involves

mounting a pair of magnets in the temple area of the primary frame corresponding to another pair of

magnets in the auxiliary frame. The learned judge identified the inventive concepts protected by this

particular patent to be:

(a) the top-down attachment of the magnets at the temporal positions of the frames;

(b) the use of separate projections for housing the magnets at the primary frame that are

secured to the frame, thereby maintaining the strength of the frame; and

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(c) positioning the projections lower than the upper side portion of the primary frame and

extending downwards the arms and/or magnetic numbers of the auxiliary frames so as to create

a hooking effect.

16.35 The other patent (namely, Patent No 60169) involves mounting one or two magnets on the

bridge of the primary frame with a corresponding number of magnets mounted on the bridge of the

auxiliary frame. The learned judge identified the inventive concepts embodied in this patent to be:

(a) an eyeglass device where the auxiliary frame can be attached to the primary frame with one

hand by means of the magnets at the bridges of the frames, the bridge of the auxiliary frame

extending over and engaging with the bridge of the primary frame; and

(b) an eyeglass device with the above features and where the only magnetic members of one of

the bridges of the primary and auxiliary frames need to be magnets and the other bridge need

only be made of magnetizable substance.

Novelty

16.36 By s 14(1) of the Patents Act, an invention shall be taken to be new if it does not form part of

the state of the art. The state of the art is defined in s 14(2) ‗to comprise all matter … which has at any

time before the priority date of [the] invention been made available to the public (whether in

Singapore or elsewhere) by written or oral description, by use or in any other way‘.

16.37 There was common ground in the Contour Optik case as to the principles of law which should

apply to an attack on the patentability of an invention on the ground of lack of novelty. First, from the

judgment in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457, there

must be clear and unambiguous directions in the prior publication to do or make something which

falls within a claim under attack. In order to do this, it is necessary first to construe the prior

publication in question. Delivering the judgment of the court, Sachs LJ said this (at 485):

‗If the prior inventor‘s publication contains a clear description of, or clear instructions to do or

make, something that would infringe the patentee‘s claim if carried out after the grant of the

patentee‘s patent, the patentee‘s claim will have been shown to lack the necessary novelty, that

is to say, it will have been anticipated.‘

16.38 The court‘s task is to determine what the prior art clearly and distinctively teaches the skilled

person and then ascertain if the alleged invention falls within the scope of the prior art. The

defendants contended that claim 1 of Patent No 47151 was not novel in that it was anticipated by a

similar frame, known as the ‗Twincome‘ frame, which had been available for sale in Japan before the

priority date. The plaintiffs conceded that there had been such anticipation, but only in respect of the

first inventive concept (namely, the top-down attachment of the magnets at the temporal positions of

the frames). As regards the second inventive concept (namely, the use of separate projections for

housing the magnets at the primary frame that are secured to the frame), the court relied on the

defendants‘ expert evidence and held that it too had been anticipated by the Twincome frame. The

court also found that the first inventive concept of Patent No 60169 was anticipated by a Japanese

design which was filed shortly prior to the priority date of the patent.

Inventive step

16.39 Inventive step, or ‗obviousness‘, is dealt with in s 15 of the Patents Act:

‗An invention shall be taken to involve an inventive step if it is not obvious to a person skilled

in the art, having regard to any matter which forms part of the state of the art by virtue only of

section 14(2) and without having regard to section 14(3).‘

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16.40 Ascertaining whether an invention has an inventive step (or non-obvious) in the light of the

relevant prior art is often a difficult task. It has been said by Learned Hand J in Harries v Air King,

183 F 2d 158 at 162 (1950) that inventive step is ‗as fugitive, impalpable, wayward and vague a

phantom as exists in the whole paraphernalia of legal concepts‘. The burden of proof is upon the party

seeking to impugn a patent on this ground and this is normally done by adducing appropriate expert

evidence. The party attacking a patent will have to marshal and provide evidence as to the state of the

art in the light of which a particular step is alleged to be obvious. It is, for instance, not an inventive

step if the alleged invention is merely a new use of a known contrivance or method or is only a short

step away from being anticipated by the relevant prior art. Thus, inContour Optik, Lee JC found lack

of inventive step in relation to those concepts of the patents which were earlier found by him to have

been anticipated by the prior art.

16.41 In Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 at 73,

the English Court of Appeal proposed the following four-fold structured approach for the court to

consider whether something involves an inventive step (or obviousness):

(a) the court must identify the inventive step embodied in the patent;

(b) it must assume the mantle of the normally skilled but unimaginative addressee in the art at

the priority date and impute to him what was, at that date, the common general knowledge in

the art in question;

(c) it must identify what, if any, differences exist between the prior cited art and the alleged

invention; and

(d) it must ask itself whether, viewed without any knowledge of the alleged invention, those

differences constitute steps which would have been obvious to the skilled man or whether they

require any degree of invention.

16.42 The court must resist any temptation to indulge in an ex post facto analysis or be beguiled by

the simplicity of the invention. In Vickers, Sons & Co, Ltd v Siddell (1890) 7 RPC 292 at 304, Lord

Herschell said that:

‗[E]xperience has shown that not a few inventions … have been of so simple a character that

once they were made known it was difficult … not to believe that they must have been obvious

to everyone.‘

Adopting the Windsurfing approach and heeding the warning of Lord Herschell in Vickers, Lee JC

found the hooking effect in the frame protected by Patent No 47151 to be inventive, even though it

appeared obvious with the benefit of hindsight and took very little to incorporate into the frame.

Infringement

16.43 Infringement is defined in s 66 of the Patents Act as doing certain acts in relation to the

invention without the consent of the proprietor of the patent. The acts include selling and offering to

sell the patented products made without the consent of the patentee. As the onus of proving

infringement lies on the patentee, it is critical that he must adduce evidence of infringing acts. This is

normally done in Singapore by engaging a private investigator to make a trap purchase of the

infringing products and requiring him to give evidence in court regarding the purchase. Failure to give

such evidence in court can be fatal, as the plaintiffs found out in the Contour Optik case. They

inexplicably did not call any witness to court to identify the alleged infringing spectacles as those that

were trap purchased. Accordingly, a number of the infringement claims against the defendants were

dismissed on this ground.

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16.44 It also follows that the plaintiffs were vulnerable to a counterclaim for groundless threats.

Such a claim is provided in s 77(1) of the Patents Act which states that:

‗Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by

circulars, advertisements or otherwise threatens another person with proceedings for any

infringement of a patent, a person aggrieved by the threats (whether or not he is the person to

whom the threats are made) may, subject to subsection (4), bring proceedings in the court

against the person making the threats, claiming any relief mentioned in subsection (3).‘

16.45 It was not in dispute that the plaintiffs had earlier threatened the defendants by way of

warning notices and demand letters. One of the defendants had to collect back up to 2,000 pairs of

spectacles from his retailers, thus incurring losses. The court found the counterclaim to be made out

by all the defendants and ordered an inquiry as to damages suffered by each of the defendants.

Registration

16.46 Under the Patents Act, one of the methods of obtaining a patent in Singapore is to rely on a

corresponding patent application which the patentee has already filed in a designated country. A

corresponding application is one that is in respect of the same or substantially the same invention and

either forms the basis of a priority claim for the application in Singapore or uses the Singapore

application or another earlier foreign application as the basis of a priority claim. The advantages of

this particular method are that it is cheap and does not require any search and/or examination of the

application to be conducted in Singapore.

16.47 Under the method, there is, understandably, an obligation on the patentee not to provide any

false material information concerning the corresponding application to the Registrar of Patents.

Indeed, failure to do so is a ground for revoking the patent pursuant to s 80(1)(f) of the Patents Act.

In Contour Optik, the plaintiffs relied on a US patent application for their Singapore application

which was eventually granted as Patent No 60169. It transpired that the scope of the US application

was narrower than Patent No 60169 in that it had only one magnet on the bridge of the frame whereas

the latter had two magnets. The court considered that the use of two magnets rendered the invention in

Patent No 60169 to be substantially different from the invention in the US application and that the

plaintiffs had furnished a false material information in this respect. However, instead of ordering the

patent to be revoked, the court granted a grace period for the plaintiffs to amend the patent to conform

to the US application, pursuant to the discretionary power under s 80(5) of the Patents Act.

Recordal

16.48 Section 75 of the Patents Act provides that where a person becomes the proprietor or an

exclusive licensee of a patent by virtue of a transaction, instrument or event to which s 43 applies, that

person shall not be entitled to recover damages or an account of profits in respect of infringement

subsequent to the transaction, instrument or event unless the transaction, instrument or event is

registered within six months of its date or the court or the Registrar of Patents is satisfied that it was

not practicable to register it in that period. The purpose of this provision is not to punish the person

for delay but to protect the infringer ‗from a claim to damages or an account of profits at the suit of

someone whose interest he could not have ascertained from an inspection of the register‘

(per Morritt J in Molnlycke AB v Proctor & Gamble Ltd (No 5) [1994] RPC 49 at 109).

16.49 The provision was invoked against the plaintiffs in the Contour Optik case. This is because

Patent No 47151 was assigned to them more than three-and-a-half years before they registered the

assignment. In the case of Patent No 60169, it was more than two-and-a-half years. In both cases, the

plaintiffs tried to argue that there was no prejudice suffered as a result of the delays and asked the

court to take a benevolent view. Lee JC, however, held that prejudice or the lack thereof was not a

relevant factor. The provision would not apply if it was shown to the satisfaction of the court or the

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Registrar that (a) it was not practical for the registration to be effected within the six-month period

and (b) the registration was done as soon as practicable.

Intellectual Property Law

Annual Review of Singapore Cases (2, 2001)

Information

Title: Intellectual Property Law

Textbook Title: Singapore Academy of Law Annual Review

Chapter No: 16

Author | Editor: Ng-Loy Wee Loon, Tan Tee Jim

Up

Catchwords

Copyright - Protection of an existing copyright work

Copyright - Protection of an underlying copyright work

Copyright - Ownership

Copyright - Infringement

Copyright - Parallel Imports

Trade Marks and Trade Names - Passing Off - Ownership of a trademark

Trade Marks and Trade Names - Bona fide use

Trade Marks and Trade Names - Goodwill - Ownership of goodwill

Patents and Inventions - Skilled person in the art

Patents and Inventions - Inventive Step

Patents and Inventions - Sufficiency of disclosure - Enabling disclosure in specification

Patents and Inventions - Clear and concise claims

Patents and Inventions - Infringement

Patents and Inventions - Groundless Threat

Patents and Inventions - Breach of confidence - Particulars of confidential information - 'Springboard' doctrine - Obligation of confidence

Patents and Inventions - Employees' Invention - Position of former employees

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Up

Textbooks

Introduction

16.1 The year 2001 saw nine intellectual property law cases decided by the courts. Three of them

related to copyright, three concerned trade marks and passing off, two dealt with patents and one

touched on the subject of confidential information. They all contribute to the growing jurisprudence in

this dynamic area of Singapore law.

Copyright

Protection of an existing copyright work

16.2 The copyright law of Singapore is currently governed by the Copyright Act (Cap 63, 1999 Ed)

(‗the 1987 Act‘) which came into force on 10 April 1987. Prior to the 1987 Act, the statute governing

the copyright regime in Singapore had been the United Kingdom Copyright Act 1911 (‗the 1911 Act‘).

This regime was constantly being destabilised during the intervening years by technological

advancements and the incessant demands from several quarters for effective intellectual property

protection. In the event, the 1987 Act effected substantial changes to the regime. One of these was the

increase in the bundle of rights which constituted copyright. The 1911 Act, for instance, protected

only literary, dramatic, musical and artistic works. In a significant concession to the new forms of

entrepreneurial copyright which had emerged, the 1987 Act introduced protection for cinematograph

films, television broadcasts, cable programmes and the like as well as extended the ambit of copyright

by including infringements by broadcasting and cable programming. Also, the 1911 Act conferred

copyright on records, perforated rolls and other contrivances ‗in like manner as if such contrivances

were musical works‘. Such copyright is now conferred in respect of ‗sound recordings‘ which are

defined as ‗the aggregate of the sounds embodied in a record‘. The sound recordings are not treated as

equivalent to musical works, but are embraced into the pantheon of copyright as a distinct and

separate subject-matter.

16.3 These changes necessitated transitional arrangements, savings, regulations, qualifications and

exceptions in the 1987 Act which are all intended to preserve copyright protection for existing works.

For instance, the question whether an earlier original literary, dramatic, musical or artistic work

retained copyright protection was pre-emptively dealt with in s 211 of the 1987 Act. An attempt to

challenge the copyright of existing literary works was rebuffed in Novell, Inc v Ong Seow

Pheng [1993] 3 SLR 700 where Coomaraswamy J held that literary works first published in the

United States and which had enjoyed copyright protection prior to the 1987 Act continued to be

protected by virtue of reg 3 of the Copyright (International Protection) Regulations (Cap 63, Rg 2,

1990 Ed) (‗the Regulations‘).

16.4 A similar attempt to challenge the copyright of existing works was made last year in relation to

cinematograph films. In Highway Video Pte Ltd v PP [2002] 1 SLR 129, the first appellant, a body

corporate, was charged under s 136(2)(a) of the 1987 Act for having possession of a set of video

compact discs (‗VCDs‘) containing the serial cinematograph film entitled ‗The Duke of Mount Deer‘

(‗the Film‘). The section states that a person ‗who at a time when copyright subsists in a work has in

his possession … any article which he knows, or ought reasonably to know, to be an infringing copy

of the work‘ for the purpose of, inter alia, selling, by way of trade offering or exposing for sale or hire

or distributing the article shall be guilty of an offence and ‗shall be liable on conviction to a fine not

exceeding $10,000 for the article or for each article in respect of which the offence was committed or

$100,000, whichever is the lower, or to imprisonment for a term not exceeding 5 years or to both‘.

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16.5 The second and third appellants, who were the first appellant‘s officers, were charged under s

201B of the 1987 Act which provides, inter alia, that where a body corporate is proven to have

committed an offence under s 136(2) of the 1987 Act, any director who consents or connives with the

body corporate committing the offence is also liable to be punished for the offence. In the

Magistrate‘s Court, the appellants were fined a total sum of $60,000 because the trial judge

disbelieved their defence that in the circumstances they did not know and were not put on notice that

the VCDs were not genuine. On appeal before Yong Pung How CJ, their counsel not only impugned

this finding of fact but also argued that as the Film was made and first published in Hong Kong in

1984 (that is, prior to the enactment of the 1987 Act), copyright could not have subsisted in the Film

pursuant to s 88 or any other provision of the 1987 Act. The argument bears elaboration.

16.6 First, s 88 lays down the requirements for copyright protection in respect of a cinematograph

film (namely, that the film was made or first published in Singapore or the maker of the film was a

‗qualified person‘ when it was made). There is a reference to this section in the transitional provisions

of s 220:

‗Copyright shall not subsist by virtue of section 88 in a cinematograph film made before

10th April 1987.‘

16.7 Section 210 provides that notwithstanding anything in Part III of the 1987 Act (which is the part

that relates to subsistence of copyright in a literary, dramatic, musical and artistic work), copyright

shall not subsist in a work ‗unless copyright subsisted in the work under the Copyright Act 1911

immediately before that date‘. Under reg 6 of the Regulations, copyright would subsist in a work

under the 1911 Act immediately before 10 April 1987 if it was first published before that date in

certain specified countries (such as Hong Kong). However, so the appellants argued, as the word

‗work‘ is clearly defined in the 1987 Act to mean only a literary, dramatic, musical or artistic work

and as a cinematograph film is not such a work, reg 6 did not apply to confer copyright protection on

the film, let alone a film made or first published before 10 April 1987. Otherwise, the regulation

would not have restricted itself to a ‗work‘ but would have expressly mentioned and included a

‗cinematograph film‘.

16.8 The argument, however, suffers from a grievous flaw in that, as the learned judge rightly pointed

out, it entirely ignores s 221 of the 1987 Act which expressly states:

‗Where a cinematograph film made before 10th April 1987 was an original dramatic work as

defined by section 205, this Act (other than this subsection) shall have effect in relation to the

film as if the film had been an original dramatic work as defined by section 7 and the person

who was the author of the work for the purposes of the Copyright Act 1911 shall be deemed to

be the author of the work for the purposes of this Act as having effect by virtue of this

subsection.‘ [emphasis added]

16.9 The expression ‗dramatic work‘ is defined in s 205 to include ‗a cinematograph production

where the arrangement, the acting form or the combination of incidents represented gives the work an

original character‘.

16.10 The effect is that, whilst s 220 denies copyright protection to a cinematograph film made before

10 April 1987 as such, s 221 preserves the protection to the film as a dramatic work provided it had

enjoyed protection as such work under the 1911 Act. In the instant case, the Film qualified as a

dramatic work because it was undeniably of original character, being a period serial which comprised

over 40 episodes and must have involved a huge effort in arrangement, choreography and film

direction. As such, copyright did subsist in the Film and the appeal was dismissed.

16.11 With respect, the learned judge‘s analysis of the effect of the various transitional provisions and

regulations concerning cinematograph films is correct and provides much-needed elucidation in an

area of copyright law which had hitherto been perplexing. This is because under the 1911 Act, there

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was no copyright in a cinematograph film as such. The film industry was in its infancy at the

beginning of the 20th century and film was not regarded as a distinct type of work deserving of

separate copyright protection. Cinematography was considered to be but a form of photography and a

cinematograph film was then perceived to comprise a series of photographs or frames which could fall

within one of the pre-existing categories of copyright. This is apparent from the 1911 Act which

defined ‗artistic works‘ as including photographs. ‗Photograph‘ itself was defined to include ‗any

work produced by any process analogous to photography‘, which is wide enough to include the

frames. The combined effect of these definitions is that the cinematograph film enjoyed copyright

protection as an artistic work under the 1911 Act.

16.12 At the same time, it was clearly capable of protection as a dramatic work. Such work was

defined in the 1911 Act as including ‗any cinematograph production where the arrangement or acting

form or the combination of incidents represented give the work an original character‘, as in s 205 of

the 1987 Act. The solution adopted in the 1987 Act was to simply regard the cinematograph film as a

dramatic work and to preserve copyright protection in the film as such work. This is indeed a sensible

solution as any re-classification of the existing dramatic works as films would curtail, if not

emasculate, the rights of the original authors.

16.13 In principle, there was also no apparent reason to preclude from copyright protection

cinematograph films made or first published prior to 10 April 1987. There was no intention, when the

1987 Act was enacted, to discard the old clothes and start with a clean slate. The 1987 Act operates on

the principle that it applies to things in existence at its commencement as well as to things brought

into existence after commencement, subject to the transitional arrangements, savings, regulations and

so on. In this regard, regs 3 and 6 cited by the appellants do not detract from the principle. These are

merely deeming provisions that put certain foreign works and subject-matter on the same statutory

footing as local ones, by treating them as if they were made or first published in Singapore.

Protection of an underlying copyright work

16.14 As is evident from above, a cinematograph film is a creative amalgam of a number of

underlying works such as its story line, script, music, set designs, scenic arrangements and so forth,

each of which is protectable in its own right under copyright law as a literary, dramatic, musical or

artistic work. The copyright in the underlying works is expressly preserved by s 117(1) of the 1987

Act as follows:

‗Where copyright subsists in any subject-matter by virtue of this Part [which sets out the

conditions under which copyright in subject-matter such as a cinematograph film arises]

nothing in this Part shall be taken to affect the operation of Part III [which sets out the

conditions under which copyright in literary, artistic, musical or dramatic work arises] in

relation to any literary, dramatic, musical or artistic work from which that subjectmatter is

wholly or partly derived, and any copyright subsisting by virtue of this Part is in addition to,

and independent of, any copyright subsisting by virtue of Part III.‘

16.15 Thus, the 1987 Act confers an additional and independent copyright in a subject-matter, but this

copyright does not in any way affect or derogate from the copyright in the underlying literary,

dramatic, musical or artistic work from which the subject-matter is wholly or partly derived. In

particular, the newly-created copyright in the subject-matter is not in substitution for the copyright in

the underlying work.

16.16 This seems clear enough, but in The Performing Right Society Ltd v United Artists Singapore

Theatres Pte Ltd [2001] 2 SLR 375 (‗the PRS case‘), the defendants submitted that where a musical

work was converted into sound recordings and thereafter incorporated into the soundtrack of a

cinematograph film, it was the sound recordings, not the musical work, from which the film was

derived. In that event, there could be no infringement of the copyright in the musical work by the

screening of the film. The issue was expressed by the court as how, if at all, the plaintiffs‘ copyright

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in a musical work was affected if the work was converted into sound recordings and thereafter

incorporated into the soundtrack of a cinematograph film.

16.17 The factual background is as follows. The plaintiffs, who are a collecting society and the

owners by assignment of the exclusive rights of certain musical works (‗the Musical Works‘) which

had been synchronised or incorporated into the cinematograph films entitled ‗Jerry Maguire‘ and

‗Titanic‘, sued the defendants for infringing these rights arising from the screening of the two films by

the defendants. The defendants claimed that they had the licence from the relevant producers to screen

the films to the public. The plaintiffs did not dispute the claim. They however contended that there

was still an infringement of their rights, as the screening constituted a public performance of the

Musical Works which performance was not authorised by them. They relied on s 26(1) of the 1987

Act which states that it is an infringement of the copyright in a musical work (as well as a literary,

dramatic and artistic work) to, inter alia, perform the work in public. ‗Performance‘ is defined in s

22(1) to refer to

‗any mode of visual or aural presentation, whether the presentation is by the operation of

wireless telegraphy apparatus, by the exhibition of a cinematograph film, by the use of a record

or by any other means ...‘ [emphasis added]

16.18 However, the defendants argued that it was not the Musical Works that were played or

performed when the films were screened but the sound recordings of the works, as the soundtracks of

the films. The Musical Works had been converted into sound recordings (which were then

incorporated into the soundtracks of the films) and the plaintiffs‘ rights were extinguished when the

recordings were incorporated into the soundtracks. Thus, the screening of the films amounted to

performance of the sound recordings of the Musical Works, not the works themselves. The defendants

sought to draw an analogy with the situation in EMI Music Australia Pty Ltd v Federation of

Australian Commercial Television Stations (1997) 37 IPR 129 where the Full Court of the Federal

Court of Australia considered the question whether the broadcast of a soundtrack which incorporated

a sound recording constituted a broadcast of the sound recording as such for the purpose of the

Australian Copyright Act. This question arose because the applicants, who were record companies

which owned copyright in various sound recordings, applied to the Copyright Tribunal to determine

the amount of royalty payable by the respondent television broadcasters in respect of the broadcast of

the sound recordings. The sound recordings, which were songs, had been incorporated into the

soundtracks of two cinematograph films broadcast by the television broadcasters. The broadcasters

contended that no royalty at all was payable. They reasoned that the broadcast of the films did not

constitute a broadcast of the sound recordings and thus did not require the licence of the applicants.

The court by a majority accepted the contention and reasoning. It analysed s 23(1) (in pari

materia with our s 18(1)) which reads: ‗For the purposes of this Act, sounds embodied in a soundtrack

associated with visual images forming part of a cinematograph film shall be deemed not to be a sound

recording‘, and held that, from the natural meaning of this provision, it was designed to prevent two

copyrights subsisting in the same subject-matter (specifically, a cinematograph film), namely, one

copyright in the film and the other in the sound recording embodied in the film. This was done by

deeming the sounds incorporated into the soundtrack of a film not to be a sound recording. The effect

is that a broadcast of the soundtrack of the film would not constitute a broadcast of the sound

recording. Although this would effectively negate the rights of the copyright owner of the sound

recording after (and only after) it has been incorporated into the soundtrack of the film, the court saw

no injustice in this as, in practice, the maker of the film would invariably be obliged to secure the

consent of the copyright owner before he could lawfully incorporate the sound recording in the

soundtrack of his film. The applicants appealed to the Australian High Court where the case is known

as Phonographic Performance Company of Australia Ltd v Federation of Australian Commercial

Television Stations (see para 16.20infra) and reported in (1998) 40 IPR 225.

16.19 Similarly, in the PRS case, it was argued that after the Musical Works were converted into

sound recordings which were subsequently incorporated into the soundtrack of a cinematograph film,

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the rights of the copyright owner(s) of the Musical Works as well as of the sound recordings were

negated, leaving any claim of copyright infringement to be in respect of only the cinematograph film.

16.20 The learned judge, Rajendran J, disagreed. He first distinguished the EMI Music case by stating

that that case concerned the rights of sound recordings versus the rights of cinematograph films,

unlike the case before him which concerned the rights of musical works versus those relating to

cinematograph films. He further distinguished the Australian case by reference to the different nature

of copyright in sound recordings in the Australian and Singapore Copyright Acts. He also referred to

the majority opinion of the court in the Phonographic Performance case (at 230 of the report) which

allowed the appeal:

‗The fact that the soundtrack is deemed by [s 23(1) of] the Act not to be a sound recording is

not to the point. The question is whether the aggregate of sounds embodied in the sound

recording has been broadcast. What the Act deems not to be a sound recording is the aggregate

of sounds that is recorded in a particular form: a soundtrack. … Broadcasting the film

broadcasts the soundtrack (which is not a sound recording) but it also broadcasts the aggregate

of sounds which constitutes the sound recording.‘

In other words, the fact that a soundtrack is not in law deemed to be a sound recording does not mean

that in fact the broadcast of a film embodying a sound recording does not broadcast that sound

recording (as well as the film).

16.21 The minority judges in the Phonographic Performance case, who agreed with the majority

decision in theEMI Music case, construed s 23(1) differently. To them, the effect of the section (at

236-237)

‗is to maintain the exclusive right of the owner of a sound recording in all situations except

where that owner has licensed the embodiment of the sound recording in the soundtrack of a

cinematograph film in exercise of its exclusive rights under section 85. Where the sound

recording is so embodied in a soundtrack of a cinematograph film … the exclusive right in

relation to the collation of sounds constituting the soundtrack (which may or may not contain

sounds additional to the original sound recording) is treated by the Act as separate and different

from the sound recording. It belongs to the owner of the copyright in the cinematograph film.

The broadcast of the soundtrack of the cinematograph film does not, therefore, involve the

broadcast of the sound recording as such, because ―[f]or the purpose of the Act‖, parliament has

provided that the ―sounds embodied in a soundtrack‖ are ―deemed not to be a sound recording‖.

In short, they are to be dealt with, and dealt with only, in terms of the rights of the owner of

copyright in the cinematograph film.‘

16.22 The logic of this seems hard to fault. However, Rajendran J was able to find it unnecessary for

him to decide which of these opposing views was correct in relation to our s 18(1). He was content to

rely on s 117(1) of the 1987 Act (set out supra at para 16.14) which, to him, clearly indicates that the

copyright subsisting in a subject-matter such as sound recordings and cinematograph films shall not

affect the copyright in a literary, artistic, musical or dramatic work from which the subject-matter is

wholly or partly derived. He held that, from a plain reading and interpretation of the word ‗derived‘,

the cinematograph films in question were derived from the Musical Works.

16.23 There is no statutory definition or judicial guidance for the word ‗derived‘ in the 1987 Act. In

ordinary parlance, it means ‗arise, flow, issue, originate, proceed or stem from‘ (source: Merriam-

Webster‘s Collegiate Thesaurus). It can be a matter for debate as to whether a cinematograph film is

or can be derived from a musical work in a situation where, as in the PRS case, the work is first

converted into sound recordings which are themselves then synchronised or incorporated into the

soundtrack of a film. What is clear in the meantime from his Honour‘s decision is that the film can be

derived indirectly from the work for the purposes of s 117(1).

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Ownership of copyright

16.24 The 1987 Act contains presumptive rules that operate only in the absence of express terms

displacing them. In particular, it contains provisions denominating initial ownership of copyright in

favour of the author, unless the work is produced within employment or under a prior agreement to

assign (see s 30). Inability to heed these rules can result in dire consequences. In the PRS case, it is

apparently for this reason that the plaintiffs‘ claim failed in respect of the musical works incorporated

into the cinematograph film ‗Titanic‘. There was no proof that they owned the copyright in respect of

the public performance of these works. The evidence indicated that the composer (John Altman) was

at the material time under a contract of employment with a company and that he had himself

confirmed all the grants and agreements made by the company. This suggested Altman‘s acceptance

that copyright in the works vested in the company, which in turn meant he himself had no rights

(including performing rights) to assign to the plaintiffs.

16.25 This recalls the case of Radcoflex Australia Pty Ltd v James Lim Hwa Chin (Suit 1598/1999,

HC, unreported judgment dated 27.5.2000) which we reviewed last year (see (2000) SAL Ann Rev

234) and drew particular attention to the salutary reminder by the court that the burden is on plaintiffs

to prove authorship of a copyright work.

Infringement of copyright

16.26 Ownership of copyright has its privileges. It essentially confers on its holder the right to prevent

‗copying‘. Curiously, the 1987 Act, as well as its precursor, has avoided using that term. Nevertheless,

it is well established that to constitute infringement of copyright of any literary, dramatic, artistic or

musical work, there must be two conditions present. First, there must be sufficient objective similarity

between the infringing work and the copyright work (or a substantial part thereof) for the former to be

considered to be a reproduction of the latter. Secondly, the copyright work must be the source from

which the infringing work is derived. It does not have to be the direct source; it suffices if there is a

causal connection between the copyright work and the infringing work. Hence, if the evidence shows

that there are striking similarities between the two works, that the plaintiff‘s was the earlier in time

and that the defendant had had the opportunity to get to know the plaintiff‘s work, then the court may

well find copying established in the absence of any convincing explanation to the contrary by the

defendant.

16.27 Proof of infringement is relatively easy if there has been slavish copying or exact reproduction

of the copyright work. But the shrewd copyist will not let this happen. He will attempt to make

additions and alterations to an extent where the copyright owner will find it difficult to assert his

claim. In that event, difficulties would often arise as to whether a substantial part is indeed taken. It is

well recognised in copyright law that this depends more on the quality of the copyright work that is

taken rather than the quantity (see, eg, Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1

WLR 273 at 276). Likewise, it has been asserted that the copying must be of the expression of the

ideas, rather than the ideas. But, this invites its own difficulty. It is of course trite law that there is no

copyright in ideas, and there is no infringement if only the ideas are copied. But, ‗as the late Professor

Joad used to observe, it all depends on what you mean by ―ideas‖ ‘ (see LB (Plastics) Ltd v Swish

Products Ltd [1979] RPC 551 at 629).

16.28 The Court of Appeal was confronted with these issues in Flamelite (S) Pte Ltd v Lam Heng

Chung[2001] 4 SLR 557. The plaintiffs claimed that their copyright in the artistic works relating to

preliminary drawings of fire-rated glass doors and screens had been infringed by the defendants, a

group of ex-employees and ex-subcontractors. As such, they had access to and had seen the drawings.

The court thus held that the second condition was easily established. Not so in respect of the first

condition. The defendants‘ fire-rated doors and screens were by no means slavish copies of the

plaintiffs‘, and the trial judge agreed that there were differences in design, features and dimensions

and any likeness or close resemblance was mainly due to the function and functionality of what he

considered to be the simplest and most fundamental method of constructing a fire-rated door. The

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question that fell to be decided by the Court of Appeal was whether copying a part (of a copyright

work) which was simple, functional, obvious, commonplace, had no originality and/or essentially

embodied an idea would be regarded as taking a substantial part of the work.

16.29 The court reviewed a number of Australian and English authorities. In Dixon Investments v

Hall (1990) 18 IPR 481, which concerned an alleged infringement of copyright in the design of a

single-storey residential house, the Federal Court of Australia held that there was no infringement of

the copyright because the design was basic and simple. It said:

‗The simpler and more commonplace the copyright drawing, the more closely must the alleged

infringer adhere to it, in order for liability to exist. … There are, of course, many houses of

about the same size as those in issue here, and with similar facilities. If one adheres to the idea

of having a roughly rectangular shape with all the rooms all on one level, there is only a limited

number of ways in which the rooms can sensibly be arranged.‘

16.30 Kenrick & Co v Lawrence & Co (1890) 25 QBD 99 concerned a voting form on which the

publisher printed a representation of a hand holding a pencil in the act of completing a cross within a

square. Wills J said (at 104):

‗[T]he copyright must be confined to that which is special to the individual drawing over and

above the idea. … A square can only be drawn as a square, a cross can only be drawn as a cross,

and for such purposes as the plaintiffs‘ drawing was intended to fulfil there are scarcely more

ways than one of drawing a pencil or the hand that holds it.‘

16.31 Reliance was also placed upon Politechnika Ipari Szovetkezet v Dallas Print Transfers[1982]

FSR 529 which concerned, inter alia, infringements of the rights in the design for the container of the

famous ‗Rubik‘s Cube‘ puzzle. The defendant‘s container was largely similar in that it was also

cylindrical in shape, had a square indentation at the top of the plastic lid and a recess in the base to

take the corners of the cube. There were some differences in the square indentations and recesses. The

court held that copyright was not infringed and said (at 542):

‗Another way of putting this point is that the drawings of the cover and base are very

rudimentary, and where very rudimentary drawings are concerned there would be an

infringement of copyright only if there were almost an exact reproduction of the drawings.‘

16.32 The Flamelite case can now be added to this distinguished line of cases. Delivering the

judgment for the court, Chao Hick Tin JA held that, not only was there little originality in the

plaintiffs‘ drawings, they were also simple and obvious, given the functional purpose (of fire-rated

doors and screens) to which they relate. He agreed with the defendants‘ expert that the framing system

of the door was the ‗simplest and most fundamental method of constructing a fire-rated glass door

from an engineering point of view‘ and that what was copied was not so much the expression but the

idea embodied in the system. He concluded (at 569):

‗Where the work is simple, the idea embodied in the work becomes so closely identified with

its expression that it is hard to separate the form of expression from the idea. In such a case

there should be a much closer degree of copying before infringement can occur.‘

16.33 Another important contribution of the case was its clarification, albeit obiter, regarding how the

defence in s 69 of the 1987 Act is to be applied. The section states:

‗For the purposes of this Act –

(a) the making of an object of any kind that is in 3 dimensions does not infringe the copyright

in an artistic work that is in 2 dimensions; and

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(b) the making of an object of any kind that is in 2 dimensions does not infringe the copyright

in an artistic work that is in 3 dimensions, if the object would not appear to persons who are not

experts in relation to objects of that kind to be a reproduction of the artistic work.‘

16.34 This section has encountered a good deal of criticism from judges. In Dorling v Honnor Marine

Ltd[1965] Ch 1 at 21, Danckwerts LJ described it as an ‗extraordinary provision‘ which ‗presents the

court with a very difficult, if not impossible, task‘. In LB (Plastics) Ltd v Swish Products Ltd (supra),

which concerned a plastic knock-down drawer system, Lord Salmon was even more scathing. His

Lordship said (at 635-636):

‗It is indeed a curious subsection. I find it impossible to discover any sensible reason why, in

circumstances such as these, defendants who copy a [plaintiff‘s] two-dimensional drawings (in

which the plaintiff owns the copyright) and [construct] a three-dimensional drawer from it and

thereby [infringe] that copyright, should be taken not to have done so merely because persons

who are not experts in ―knock-down‖ drawers would fail to recognise that the [plaintiff‘s]

copyright had been infringed. If and when the law of copyright is again considered by

Parliament, it may think that a long, cold look should be taken at this strange subsection.‘

The UK Parliament did take a long, cold look and decided to exclude s 9(8) (our s 69) from the

current Copyright, Design & Patents Act 1988.

16.35 The criticisms stem from the lack of clarity in the words ‗persons who are not experts in

relation to objects of that kind‘. What capacity is to be credited to such persons? Is it for the judge to

place himself in the position of a non-expert in relation to the objects in question and, if so, is he to be

credited with some ability to interpret design drawings of the objects in question? Where does the

onus lie?

16.36 These questions were answered by Lord Salmon himself and his colleagues in the House of

Lords in theLB (Plastics) case. They were of the opinion that the onus is on the defendant and the

judge must be credited with some ability to interpret design drawings. The comparison to be made by

him is a visual one between the alleged infringing article and the drawings. The question which arose

in the Flamelite case was whether the visual comparison should encompass the external view of the

article only. The defendants‘ contention, which was accepted by the trial judge, was that the profiles

and cross-section of their frames were concealed once the fire doors and screens were fabricated and

installed and, consequently, a non-expert looking at the frames would not be able to tell that the

frames were copied from the plaintiffs‘ copyright drawings. It is submitted that this contention was

rightly rejected by the Court of Appeal. The notional non-expert should be treated as having a

sectioned frame in his hand for purposes of the visual comparison. To hold otherwise, as Chao JA said,

would mean that s 69 affords a blanket defence for copyists, so long as what has been copied cannot

be seen from the external appearance of the article.

Parallel imports

16.37 There is no doubt that the legislative intention behind the 1987 Act is to allow parallel imports

in Singapore. During the Third Reading of the Copyright Bill in 1987, Professor Jayakumar, then

Second Minister for Law, said that:

‗Parallel imports, in the context of copyright legislation, refer to the import into one country of

goods lawfully made or sold in another country by or with the consent of the copyright owner

to such manufacture; in other words, legitimate reproductions … the Select Committee decided

that the Bill should be amended to make it clear that parallel imports are not prohibited.‘

16.38 Thus, the original 1987 Act provided that an article was an infringement only if it was made

‗without the consent of the owner of the copyright‘. It was however not foreseen that this expression

was inherently unclear. Specifically, who is the owner of the copyright? Is he the owner of the

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copyright in Singapore, or the owner of the copyright in the country in which the article was

manufactured? The Public Prosecutor in PP v Teoh Ai Nee[1994] 1 SLR 452 contended for the former

when appealing against the acquittal of the accused persons who had been charged with exposing for

sale various sound recordings. The learned Chief Justice accepted the contention and allowed the

appeal. He did so for three reasons. First, the contention was consistent with the language of the

relevant provision (namely, s 25(2)). Secondly, if the ‗owner‘ in the expression referred to the owner

in the country of manufacture, it would lead to the wholesale evasion of copyright protection afforded

to Singapore copyright holders as this would allow persons to deliberately manufacture copies in

countries which afforded little or no copyright protection, or which did not recognise the ownership of

the copyright in the genuine article and import these copies into Singapore. Thirdly, it would lead to

an onerous burden for the prosecution, as considerable expenditure of time and expense would have to

be incurred, for example, to establish the identity, if any, of the owner of the relevant copyright in the

country of manufacture and in obtaining expert evidence of the copyright law of that country. The

effect of the decision was that parallel imports could be prohibited.

16.39 Shortly after the decision, Parliament passed the Copyright (Amendment) Act 1994 (Act 14 of

1994) which amended the 1987 Act to, inter alia, clarify the position on parallel imports through a

clear definition of the word ‗owner‘. This is found in the new s 25(3):

‗Where reference is made in this Act to an imported article the making of which was carried

without the consent of the owner of the copyright, the reference to the owner of the copyright

shall be read as a reference to –

(a) the person entitled to the copyright in respect of its application to the making of an article of

that description in the country where the article was made;

(b) if there is no person entitled to the copyright in respect of its application to the making of an

article of that description in the country where the article was made, the person entitled to the

copyright in respect of that application in Singapore.‘ [emphasis added]

Thus, all kinds of parallel imports are allowed, except for the situation where an article is not

protected by copyright in the country where it was made.

16.40 Recently, the learned Chief Justice had occasion to return to the subject in Highway Video Pte

Ltd v PP(supra). This time, he opined that Parliament had in the language of the amended Act taken a

clearer stance in favour of parallel imports, unlike at the time of the Teoh Ai Nee case. The effect,

which he had also alluded to in the Teoh Ai Nee case, is that the prosecution would have an onerous

burden to prove that an article is not a genuine parallel import. It would have to prove beyond

reasonable doubt that the imported article which is alleged to be an infringing article was not imported

with the consent of the Singapore copyright owner and manufactured without the consent of the

copyright owner in the country of manufacture. This does make it more difficult for the prosecution to

prove its case.

Trade marks and passing off

Ownership of a trade mark

16.41 It has been the law that ownership of a trade mark generally belongs to the person who uses the

mark in the course of trade. The Trade Marks Acts added to this requirement by conferring the right to

apply for registration to those who have an intention to use the mark following registration. The

intention must however be genuine or bona fide. Thus, under the old Trade Marks Act 1939 (‗the

1939 Act‘) (which was repealed by the Trade Marks Act 1998 (Act 46 of 1998) (‗the 1998 Act‘)), it

was a requirement that there must be a bona fideintention on the part of the applicant to use the mark

in relation to the goods in respect of which it is to be registered. If there is no such intention, the mark

became liable to be expunged if, additionally, there had been no use of the mark up to the date of one

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month before the application to expunge. The route which the 1998 Act has taken to ensure that there

is a genuine or bona fide intention is to require the applicant to make a declaration in the application

form that his trade mark is used in the course of trade by him or with his consent in relation to the

goods or services stated in the application or, if not, that there is a bona fide intention that it will be so

used. A false declaration will jeopardise the registration of the mark as it may constitute bad faith

under s 7(6) of the 1998 Act, one of the absolute grounds for refusal of registration. It may also be a

criminal offence under s 50. A typical type of conduct which is likely to lead to a finding of bad faith

conduct is copying or misappropriating the mark. There is ample authority under the 1939 Act

showing that the courts frowned upon such conduct by a competitor, a former employee, an agent or

distributor, a licensee or a business partner (see, eg, „Zoppas‟ Trade Mark[1965] RPC 381, Tai Muk

Kwai v Luen Hup Medical Company [1988] SLR 466 and „Rawhide‟ Trade Mark [1962] RPC 133). It

is submitted that such conduct will continue to be impugned under the 1998 Act.

16.42 Thus, although decided under the repealed 1939 Act, the case of PT Permona v Shanghai

Tobacco Group (Originating Motion 600024/2001, HC, unreported judgment dated 30.11.2001)

deserves our consideration. The applicant applied in January 1996 to register the trade mark

‗CHUNG HWA‘ in respect of ‗cigarettes and tobacco products, all included in Class 34‘. The

application was opposed on the ground, inter alia, that the applicant was not a bona fide proprietor of

the mark. The opponents claimed that they had been manufacturing and dealing in ‗CHUNGHWA‘

cigarettes since 1985. They also claimed that they had extensively advertised and sold the cigarettes in

the region through Singapore distributors as well as in airport duty-free shops in Singapore. The

applicant‘s evidence in reply was rather brief and contained the following statement as to how it

derived at the mark:

‗The Applicant derived the Trade Mark from the idea of Chinese Culture where Chinese are

known as people who have a high respect to their culture, tradition and ancestor. Most of

Singaporean are Chinese, it will be a good prospect to our cigarette market if we can create a

brand name which related to Chinese and market it to Singapore. So we choose Chung Hwa as

a brand which is given from the pronunciation and meaning of [the two Chinese characters] …‘

The learned judge, Woo Bih Li JC, was suspicious of this piece of evidence. To him, the two Chinese

characters for ‗Chung Hwa‘ have no meaning when considered together, although each character has

its own meaning. They were put together in a belated and desperate attempt to explain how the

applicant had derived the English transliteration ‗CHUNG HWA‘. Additionally, he noted that the

applicant avoided saying who in its organisation came up with the two Chinese characters as

combined together and the transliteration. He held that there was a clear case of copying and

misappropriation of the mark by the applicant and refused its application to register the mark.

Bona fide use of a trade mark

16.43 Under s 40(1) of the 1939 Act, registration of a trade mark may be expunged on the grounds

that

(a) the mark was registered without any bona fide intention on the part of the respondents to use

the mark in relation to the goods and there had in fact been no bona fide use of the mark in

relation to the goods by the respondents up to the date of one month before the application to

expunge; and

(b) up to the date one month before the date of the application, a continuous period of five years

or longer had elapsed during which the mark was a registered trade mark and during which

there was no bona fideuse in relation to the goods by the respondents.

16.44 There have been a number of English cases which have considered the meaning of ‗bona

fide use‘ as the phrase is used in the English equivalent of our s 40(1). The phrase has also been

construed by our courts. InSwanfu Trading Pte Ltd v Electrical Enterprises Pte Ltd [1994] 1 SLR 625,

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Warren Khoo J, writing for the Court of Appeal, first noted that there was judicial support for the

view that even a single sale would suffice to constitute user of the mark and then defined the phrase in

the following language (at 632):

‗It seems to us, as was laid down in Electrolux v Electrix (No 2) (1953) 71 RPC 23, that the

primary meaning of ―bona fide‖ in s 40(1)(b) is ―genuine‖, as opposed to ―fictitious‖,

―pretended‖ or ―colourable‖. Naturally, the more substantially a registered trade mark is used

in a commercial way, the easier it is to see that it is bona fide. The references to substantial use

in these cases must not be construed as laying down a principle for the purpose of an

application unders 40(1)(b). The primary question in a case under s 40(1)(b) is whether there

has been a bona fide use in the sense of a genuine use by way of trade.‘

16.45 This passage was applied recently in NV Sumatra Tobacco Trading Co v Nanyang Brothers

Tobacco Co Ltd [2001] 1 SLR 197 where the applicants applied to register the mark ‗Double

Happiness‘ with respect to tobacco products and accessories. The Registrar of Trade Marks objected

to the application because the mark was similar to the respondents‘ trade mark which was already on

the register for the same kind of goods (‗the Mark‘). The applicants then applied to the court to

expunge the Mark under s 40(1). The respondents resisted the application on the ground that they had

made bona fide use of the Mark in Singapore during the specified period. They adduced evidence of

sales of 100,000 sticks of cigarettes bearing the Mark at the duty-free outlets at Changi International

Airport. From the evidence, it was clear to the learned judge (Judith Prakash J) that the applicants had

not discharged the burden of proof that there had been no bona fide use of the Mark by the

respondents within the requisite five years. Also, there was no evidence that the transactions between

the dutyfree outlets and the respondents were other than genuine commercial and arm‘s length

transactions and there was no reason to suspect that the cigarettes had been put up for sale simply for

the purpose of maintaining the mark in Singapore.

16.46 Although decided under the 1939 Act, this case is still relevant and useful for purposes of

construing s 22(1)(a) of the 1998 Act pursuant to which a registered trade mark may be revoked for

non-use if within five years following the date of the completion of the registration procedure, the

trade mark has not been put to ‗genuine use‘ in Singapore, either by the proprietor or with his consent,

in relation to the goods or services for which it is registered, and there have been no proper reasons

for the non-use. The expression ‗genuine use‘ is not defined in the 1998 Act, but it is submitted that

the primary meaning of ‗bona fide‘ referred to in Khoo J‘s judgment set out above and applied in

the NV Sumatra Tobacco Trading Co case still holds true under the 1998 Act.

Ownership of goodwill

16.47 In the context of passing off, the owner of a trade mark is the owner of the goodwill associated

with the business in which the mark is used. More specifically, he must establish, in the mind of the

purchasing public, a goodwill or reputation attached to the goods or services which he supplies by

association with an identifying feature (normally a name, word, logo, device or a particular ‗get-up‘ of

goods) under which his goods or services are offered to the public, such that the feature is recognised

by the public as distinctive of his goods or services. In an oft-cited passage from Inland Revenue

Commissioners v Muller & Co‟s Margarine Ltd [1901] AC 217 at 223, goodwill was defined as

‗the benefit and advantage of the good name, reputation, and connection of a business. It is the

attractive force which brings in custom. It is the one thing which distinguishes an old-

established business from a new business at its first start. The goodwill of a business must

emanate from a particular centre or source.‘ This definition was cited with approval by the

Court of Appeal in CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 2 SLR

550 at 567.

16.48 Goodwill does not exist on its own but is normally generated from trading. The owner must

therefore adduce evidence of the volume of his sales and advertising expenditure. He can supplement

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this by evidence from members of the trade or the public showing that they attach certain feature(s) of

the goods or services to him. The first user of the mark is not necessarily the owner of the goodwill.

16.49 In Mopi Pte Ltd v Central Mercantile Corporation (S) Pte Ltd (Suit 637/2000, HC, unreported

judgment dated 31.10.2001), both parties were only concerned with showing that they were the first to

use the trade mark ‗Hi-Bond‘ on adhesive tapes. The plaintiffs sued the defendants for passing off

their ‗Hi-Bond‘ tapes as the plaintiffs‘ products. They claimed that they had spent substantial sums in

advertising and promoting the whole range of ‗Mopi Hi-Bond‘ goods since 1978 and their sales

turnover for the three years preceding the action was about $5 million. Whilst conceding that the

plaintiffs first used the mark on glues since sometime in 1979, the defendants maintained that, in

respect of adhesive tapes, they had used the mark ‗Hi-Bond‘ sometime in 1987, about four years

earlier than the plaintiffs. They said that the plaintiffs had wrongfully misappropriated the ‗Hi-Bond‘

mark from the defendants and used it on adhesive tapes without their knowledge or consent. They

counterclaimed against the plaintiffs for a permanent injunction prohibiting the plaintiffs from passing

off adhesive tapes as those of the defendants under the mark ‗Hi-Bond‘.

16.50 After a lengthy review of the evidence, the court accepted the defendants‘ version of events and

made an order in terms of the counterclaim. It is not clear from the judgment if the issue whether the

public has indeed identified the defendants as the source of the ‗Hi-Bond‘ tapes was addressed or

raised by the parties. It appears to us from reading the judgment that there were a couple of factors

that were apparently not considered, being factors which could have militated against the defendants

being identified as the source of the ‗Hi-Bond‘ tapes. First, the mark ‗Hi-Bond‘ is largely descriptive

of goods having high bonding qualities, and these include adhesive tapes and glues which the parties

dealt in. As such, there is a greater evidential burden to be overcome in order to show that the mark

had indeed become distinctive of the goods. Secondly, it is suggested that adhesive tapes and glues

are similar or of the same kind. Given that the plaintiffs had been using the mark, albeit together with

the word ‗Mopi‘, on glues for a number of years prior to the defendants‘ first use of the mark on

adhesive tapes, it is possible that the public would associate the tapes with the plaintiffs rather than

the defendants.

16.51 It is also important in passing off to identify which feature of the goods has come to be

associated with the plaintiff in the minds of the public. Commonly, it is a name, word, device, logo or

any combination thereof. It can even be the shape or design (‗get-up‘) of the goods. For example,

in William Edge & Sons, Limited v William Niccolls & Sons, Limited [1911] AC 693, the very shape

of the goods itself (laundry blue wrapped up in a bag with a stick attached to it) was held to have

come to be identified with the public as the plaintiffs‘ goods. In another case, the court held that the

public had come to identify the plaintiffs with lemon juice sold in life-size plastic lemons, even

though these also bore labels with the plaintiffs‘ mark ‗Jif‘ (Reckitt & Colman v Borden[1988] FSR

601). Such cases however require very cogent evidence and are often difficult to win. It is unusual for

a trader to try to distinguish his goods by the get-up when a name, word, device or logo can more

easily do the job. As Graham J said in G Hensher Ltd v Restawhile Upholstery Ltd [1973] 1 WLR

144 at 150-151 with regard to the plaintiffs‘ evidence before him:

‗I do not think that the plaintiffs have established sufficiently strongly that the shape of their

articles is so well known amongst members of the public in contrast to members of the trade as

to justify me holding that there is likely to be confusion amongst a substantial number of such

members of the public. Chairs and settees are not normally bought by members of the public

for the reason that they are the goods of a particular manufacturer; they are bought because the

buyers like the shape, the comfort or the look, having regard also to the particular price of the

suite in question, and the choice is quite regardless of who made them.‘

16.52 Hence, in a recent case which also involves furniture (namely, Momentum Creations Pte Ltd v

Tan Eng Koon t/a De Angeli (Suit 787/2000, HC, unreported judgment dated 20.6.2001)), the

plaintiffs relied for their passing off action on the names which they had given to four items of

furniture, namely, ‗Case‘ for an L-shaped sofa; ‗Globe‘ for another L-shaped sofa of a different

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design; ‗Catena‘ for a sideboard; and ‗Graves‘ for a coffee table; rather than the shape of the furniture

which they described during the trial as follows:

‗For Globe, it is three modular, you can have it as one or two. The fabric is detachable. The legs

are stainless steel. The sitting cushions use high density foam. The back cushions we use fibre

fill and not cotton.

For Case sofa, fabric is detachable. The sitting cushions are high density foam. The legs are

stainless steel. The back cushions are fibre fill. There are at least two locks to lock the modules.

For Graves, we use stainless steel for the legs. The top uses medium density fibre board and not

chip board.

For Catena, we use medium density fibre board and not chip board. There is a variety of three

colours. The legs, the handle, the sliding door are made of stainless steel. It is full veneer wood.‘

16.53 The defendant submitted that the case was about goodwill in the shape of each of the four items

of furniture in an effort to show that the plaintiffs failed to prove that they had an exclusive right in

the shape. Woo Bih Li JC, however, noted that this was not part of the plaintiffs‘ claim:

‗They accept that they do not have a proprietary right to the designs and consequently others

may copy the designs. Their claim is that [the defendant] has gone beyond just copying the

designs.‘

16.54 It transpired that the names of the four items of furniture were only advertised and promoted

with the plaintiffs‘ house mark, viz, a logo which comprises the OM name (‗the OM mark‘) and the

plaintiffs‘ Statement of Claim alleged goodwill in the OM mark only. The defendant therefore

disputed that the names had independently become associated with the public and signified the

plaintiffs‘ goods exclusively. In this regard, the defendant also referred to the lack of survey evidence.

The submission was not accepted. The learned judge took the view that it was not necessary for a

survey to be carried out. This was a matter of evidence and the evidence could be adduced in various

ways. On the totality of the evidence that was adduced by the plaintiffs, he was satisfied they had

established goodwill in the OM mark as well as the names, ‗even though the value of the goodwill

may not be as much as they would like me to believe‘.

16.55 This last-quoted statement was made because of the rather low sales volume of the subject

items of furniture. The statement also highlights another aspect of passing off law. The threshold for

establishing goodwill has not been particularly high. Nor are the courts particularly demanding as

regards the extent of evidence required for proving goodwill. Very slight trading activities have been

held to be sufficient to establish goodwill (see, eg, Metric Resources Corp v Leasemetrix Ltd [1979]

FSR 571, as are pre-trading activities (see, eg,British Broadcasting Corporation v Talbot Motor

Company Ltd [1981] FSR 228. The learned judge obviously had cognisance of these cases when he

granted an injunction restraining the defendant from using the plaintiffs‘ names for selling its

furniture and from making any representation that L-shaped sofas, coffee tables or sideboards which

were similar in design to the plaintiffs‘ ‗Case‘, ‗Globe‘, ‗Catena‘ and ‗Graves‘ furniture were from the

same manufacturer or supplier as the plaintiffs‘ or that the defendant was in any way connected with

the plaintiffs.

Patents

Skilled person in the art

16.56 The all-important person in patent law is the hypothetical skilled reader because it is by his

standard that questions of obviousness/inventive step, sufficiency of disclosure and infringement are

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judged. The attributes of this notional person can be found in various English cases. They have now

been summarised by Judith Prakash J in Ng Kok Cheng v Chua Say Tiong [2001] 3 SLR 487 at 495:

‗(1) [He] possesses common general knowledge of the subject-matter in question;

(2) [he] has a practical interest in the subject matter of the patent or is likely to act on the

directions given in it; and

(3) while unimaginative [he] is reasonably intelligent and wishes to make the directions in the

patent work.‘

16.57 In a patent infringement action, this notional person invariably comes in the form of an expert

witness. The case of Ng Kok Cheng serves as a reminder of the importance of choosing the right

person as expert witness. The patent was for a door lock. The defendants called a locksmith as their

expert witness to attack the validity of the patent. However, a locksmith, in Prakash J‘s view, did not

possess the essential attributes set out above: he was a person whose knowledge related to lock

designs only in so far as it was necessary to ascertain the weaknesses of the lock, and he was not

likely to act on directions given in the patent or to try and make the directions work. The relevant

skilled person in this case was a lock maker, not a locksmith. The learned judge therefore refused to

accept the evidence of the locksmith as expert evidence on the art.

Inventive step

16.58 Commercial success enjoyed by an invention suggests that the invention involves an inventive

step, the argument being: ‗Why, if it was obvious, was it not done before?‘ (Hallen Co v Brabantia

(UK) Ltd[1989] RPC 307 at 323). The commercial success, however, must be attributable to the

special features of the invention, and not to other factors such as clever marketing strategy (see Wildey

& Whites Manufacturing Co Ltd v H Freeman & Lektrik Ltd (1931) 48 RPC 405). For this reason,

Prakash J in Ng Kok Cheng said that commercial success is not conclusive of the non-obviousness of

the invention.

16.59 Therefore, a patentee who wants to rely on commercial success must convince the court that

this success is credited to the invention itself. The patentee in Ng Kok Cheng did this by tendering

audit figures which showed that his product cost double or more than double the price of the

competing and established brands which were already in the market, and yet sales for the first 15

months after launching the product were an impressive figure of more than $1 million. The patentee

also gave evidence that, after his product was launched, some of the other brands gradually

disappeared from the market. Prakash J was persuaded that the commercial success in this case went

some way towards establishing that the invention was not obvious.

16.60 Unlike commercial success, the time taken to come up with the concept in the invention is not

relevant in the assessment of obviousness. The defendants in Ng Kok Cheng argued that it did not

take the patentee very long to come up with the ideas embodied in the patented invention and

therefore they could not have been inventive steps and were probably simple mechanical contrivances.

This was dismissed by Prakash J who pointed out that (at 500):

‗I do not think that degree of inventiveness is to be measured by the time taken to come up with

a new concept. Sometimes it takes a while and at other times, one can have a flash of

inspiration and come up with a new idea in a jiffy.‘

Sufficiency of disclosure/enabling disclosure in specification

16.61 The requirement to disclose the invention in a manner which is ‗clear and complete for the

invention to be performed by a person skilled in the art‘ is set out in s 25(4) of the Patents Act 1994

(Cap 221, 1995 Ed). The equivalent provision in the UK Patents Act 1977 (s 14(3)) refers to a

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disclosure which is ‗clear and completeenough for the invention to be performed by a person skilled

in the art‘. What is the significance, if any, of the omission of the word ‗enough‘ in the Singapore Act?

16.62 The defendants raised this question in Ng Kok Cheng, arguing that the difference in the wording

of the provisions meant that the sufficiency requirement in Singapore was stricter than that in the UK.

Prakash J disagreed. According to the learned judge, what was more critical in both the Singapore

requirement and the UK requirement was the presence of the words ‗for the invention to be performed

by a person skilled in the art‘.

This qualification, she said (at 503):

‗impl[ies] that as long as the person skilled in the art would find the wording of the description

in the specification sufficient to enable him to make the invention, it does not matter that the

specification does not state every single step that has to be followed in order to make the

invention. Thus, the clear meaning of the legislation taken as a whole is that it is sufficient if

the specification is clear enough and complete enough and absolute clarity and completeness

are not required.‘

16.63 This interpretation of the requirement is in accordance with what was advocated by Lloyd J

in Mentor Corp v Hollister Inc [1993] RPC 7 at 10: ‗[d]isclosure of an invention does not have to be

complete in every detail so that anyone, whether skilled or not, can perform it‘. Lloyd J‘s judgment

has been cited with approval by the Court of Appeal in Genelabs Diagnostics Pte Ltd v Institut

Pasteur [2001] 1 SLR 121.

16.64 According to ss 25(4) and 80(1)©, the enabling disclosure must be made in the specification of

the patent. Therefore, whether this requirement has been satisfied should be determined by reference

to the description in the specification alone, and not with the aid of external matters. This was pointed

out by Prakash J in Ng Kok Cheng. Thus, she was not impressed by the fact that the physical

embodiment of the invention and accompanying instructions on the use of the invention made it easier

for even an unskilled person to perform the invention. Nevertheless, she was satisfied that, in this case,

the skilled person working his way through the description with the aid of the drawings in the

specifications would be able to work out how to perform the invention, even though not everything

was stated in the specification.

Clear and concise claims

16.65 Related to the s 25(4) requirement for enabling disclosure is s 25(5) which provides that the

claim(s) in the patent application shall:

(a) define the matter for which the applicant seeks protection;

(b) be clear and concise;

(c) be supported by the description; and

(d) relate to one invention or to a group of inventions which are so linked as to form a single

inventive concept.

16.66 Failure to comply with either s 25(4) or s 25(5) constitutes a ground to reject the patent

application. However, where the patent has been granted, the Patents Act 1994 treats non-compliance

of these two related subsections differently: s 80, which sets out the grounds for revocation, expressly

provides that non-compliance with s 25(4) may revoke a patent (see s 80(1)(c)) but no mention is

made of non-compliance with s 25(5). Nevertheless, the defendants in Ng Kok Cheng argued that

non-compliance with s 25(5) also constituted a ground for revocation of a patent. In the case, the

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defendants complained that the patent claims did not describe the functions and inter-relationship of

the various features of the invention.

16.67 Prakash J agreed that the patent claims could have been better drafted (at 498), but she rejected

the argument that non-compliance with s 25(5) was a ground for revocation. She pointed out that the

UK Court of Appeal (in Genentech Inc‟s Patent [1989] RPC 147) and the House of Lords (in Biogen

Inc v Medeva plc[1997] RPC 1) had come down firmly against this contention of the defendants. In

line with this position taken by the English courts, Prakash J concluded (at 510):

‗[T]he statutory code set out in the [Patents] Act is a complete code and therefore one can only

have reference to the Act in order to determine the grounds for revoking a patent. This does not

mean looking at the whole Act but only at s 80 itself, as the words of sub-s (1) make clear, the

revocation of a patent may take place ―on (but only on) any of the following grounds …‖and

this is followed by sub-s (1)(a) to (g) which set out the complete and only grounds of

revocation of a patent. Thus, if a party is asking for the revocation of a patent he must establish

circumstances falling within any of s 80(1)(a) to (g). If he cannot do so, the request for

revocation must fail.‘

16.68 The learned judge also accepted the explanation given by the House of Lords in Biogen Inc v

Medeva plcon why the Act treats the two related requirements differently. According to Lord

Hoffmann, a patent claim is not supported by the description, and therefore does not satisfy s 25(5)(c),

unless the description contains an enabling disclosure. In other words, the substantive effect of s

25(5)(c) is the same as the enabling disclosure requirement in s 25(4). Therefore, where there is non-

compliance with s 25(5)(c), it follows that there is also non-compliance with s 25(4), and the patent

may be revoked under s 80(1)(c).

Infringement

16.69 Last year, in Genelabs Diagnostics Pte Ltd v Institut Pasteur [2001] 1 SLR 121, the Court of

Appeal endorsed Lord Diplock‘s ‗purposive‘ approach to construction of patent claims described

in Catnic Components Ltd v Hill & Smith [1982] RPC 183. This approach involves an inquiry into

whether the variant in the defendant‘s product was one which has a material effect on the way the

invention works. Lord Diplock said (at 243):

‗The question to ask in each case is: whether persons with practical knowledge and experience

of the kind of work in which the invention was intended to be used, would understand that strict

compliance with a particular descriptive word or phrase appearing in a claim was intended by

the patentee to be an essential requirement of the invention so that any variant would fall

outside the monopoly claimed, even though it could have no material effect upon the way the

invention worked.‘

16.70 It is tempting for patentees to argue that the adoption of the ‗purposive‘ approach will result in a

finding of infringement where the variant does not have any material effect on the way the invention

works, that is, the defendants‘ product is the functional equivalent of the patented invention. This

argument, however, is not sound, for Lord Diplock‘s ‗purposive‘ approach is premised on there being

no material difference in the way the two devices work; if the variant in the defendant‘s product has a

material effect on the way the invention works, it is clear that the variant falls outside the claim. This

point is crystallised in the three questions which Hoffman J (as he then was) said the court should ask

itself (see Improver Corporation v Remington Consumer Products Ltd[1990] FSR 181 at 189):

‗(1) Does the variant have a material effect upon the way the invention works? If yes, the

variant is outside the claim. If no –

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(2) Would this (ie the variant had no material effect) have been obvious at the date of

publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If

yes –

(3) Would the readers skilled in the art nevertheless have understood from the language of the

claim that the patentee intended that strict compliance with the primary meaning was an

essential requirement of the invention? If yes, the variant is outside the claim.‘

16.71 It comes as no surprise, therefore, that the Court of Appeal in Bean Innovations Pte Ltd v

Flexon (Pte) Ltd [2001] 3 SLR 121, was not at all persuaded by the patentee‘s argument that there

was infringement because the defendants‘ product performed the same function as the patented

product. The patent was for a mailbox assembly with a central locking system for individual

mailboxes. The defendants‘ mailbox also had a central locking system. L P Thean JA found that, even

though both devices performed the same function, namely, the prevention of junk mail from being

delivered into the mailboxes, there was no infringement. The learned judge responded to the way the

patentee approached the question of infringement as follows (at 133):

‗The essence of the approach as urged by counsel is to construe the claim wholly functionally.

Clearly, this approach is wrong. To construe the claims in the manner urged by counsel would

be tantamount to disregarding what is stated in the claims. …

Even adopting a purposive construction, one cannot write words into a claim that are not there

or give a meaning to a term of a claim that is contrary to its language.‘

From the relevant patent claim, the court identified the presence of the matrix of orthogonal bars as

the most essential feature in the invention. Since the defendant‘s mailbox did not have this particular

feature, there was no infringement.

16.72 The issue of how patent claims should be construed also arose in Ng Kok Cheng (supra, para

16.56). The relevant patent claim required that there be an ‗outer casing enclosing the main body‘ of

the lock. The defendants argued that the dictionary meaning of the word ‗enclosing‘ means ‗shut in on

all sides‘, and since the defendants‘ lock covered only part of the main body, it fell outside this

essential integer of the patent. To resolve this dispute, Prakash J applied the following guidelines:

(a) While the scope of the patent is defined by the claims, it is legitimate in approaching the

construction to read the specifications as a whole. The learned judge derived this guideline

from Terrell on the Law of Patents (15th Ed). This guideline is borne out by s 113(1) of the

Patents Act 1994 which provides that the extent of protection conferred by a patent shall be

taken to be that specified in a claim of the patent, as interpreted by the description and any

drawings contained in that specification. Looking at the drawings in the specifications, Prakash

J noted that the outer casing of the patented lock did not and was not intended to fully encase

the main body.

(b) Looking up a disputed word in a dictionary may be a useful starting point but it is not

determinative. The dictionary gives only the acontextual meaning whereas the court is

interested in the meaning of the word in the context of the patent. Thus the learned judge held,

the word ‗enclosing‘ could not, in the context of the patent, bear the all-encompassing meaning

advocated by the defendants.

16.73 Prakash J concluded that the defendants‘ lock fell within the integer of the patent claim which

called for an ‗outer casing enclosing the main body‘.

Groundless threats

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16.74 The High Court judgment in Flexon (Pte) Ltd v Bean Innovations Pte Ltd [2001] 1 SLR 24 was

reviewed last year (see (2000) SAL Ann Rev 230 at 262). The court had held that the types of

infringing acts exempted by s 77(4) of the Patents Act 1994 are limited to the making and importing

of a product for disposal or the using of a process. Threats relating to the disposal of the product such

as promoting, marketing and sale, are actionable under s 77. This has now been affirmed by the Court

of Appeal (supra). L P Thean JA held as follows (at 127):

‗[W]hat the provision [s 77(4)] refers to is ―making … a product for disposal‖ and not the

―making or disposal of a product‖. It is the act of ―making‖ and not the act of ―disposal‖ that is

exempted by the subsection. Threats relating to the acts of ―sale and supply‖ are not exempted.‘

16.75 In this case, the alleged infringing acts referred to in the threats made by or on behalf of the

patentee were the ‗making prototypes of, manufacturing, supplying, delivering, installing, selling

and/or offering to sell‘ the patented product. These threats went beyond the scope of s 77(4) and the

defence in this subsection was not available to the patentee.

Breach of confidence

Particulars of confidential information

16.76 A plaintiff in an action for breach of confidence must identify with precision the particular

information which he claims is confidential. Failure to comply with this requirement is fatal to the

plaintiffs‘ application for interlocutory injunctive relief: Chiarapurk Jack v Haw Par

Brothers International Ltd [1993] 3 SLR 285;Tang Siew Choy v Certact Pte Ltd [1993] 3 SLR 44. In

these cases, the Court of Appeal held that it was not sufficient that the particulars would be provided

by the plaintiff at a later stage of the proceedings (during discovery). In Chiarapurk Jack, the Court of

Appeal discharged the interlocutory injunction and ordered the plaintiffs to give particulars of what

they claimed was confidential information within fourteen days of its judgment.

16.77 So important is this requirement for specificity that it has been recognised as the fourth element

in the cause of action. In CMI-Center for Medical Innovations GmbH v Phytopharm plc [1999] FSR

235, Laddie J said as follows (at 243):

‗[F]or a plaintiff to succeed in a breach of confidence action [he] must address at least four

matters at least, namely: (i) the plaintiff must identify clearly what is the information he is

relying on … , (ii) he must show that it was handed over in circumstances of confidence … , (iii)

he must show that it is information of the type which can be treated as confidential … , and (iv)

he must show that it was used without his licence or there must be a threat to so use it …‘

Matters (ii) to (iv) are the long-accepted elements for an action on breach of confidence, established

in Coco v A N Clark (Engineers) Ltd [1969] RPC 41, the locus classicus in this area.

16.78 Laddie J‘s test was approved by Rubin J in Flamelite (S) Pte Ltd v Lam Heng Chung (Suit

2352/1998, HC, unreported judgment dated 31.3.2001). The plaintiffs sued the first and fourth

defendants for breach of confidence (as well as for copyright infringement: see section on

‗Copyright‘, supra at para 16.28-16.36, but the claim for breach of confidence was not pursued before

the Court of Appeal). The plaintiffs had engaged the first defendant as a subcontractor to fabricate and

install the fire-rated glass door and system designed by the plaintiffs. To this end, the first defendant

was given certain information which the plaintiffs claimed to be confidential in nature. The fourth

defendant was a former employee of the plaintiffs who set up a company manufacturing fire-rated

glass doors which the plaintiffs alleged were substantially the same as their doors. The Statement of

Claim particularised the information relied upon by the plaintiffs as follows:

(a) the shop drawings and detailed specifications of the plaintiffs‘ fire-rated glass door;

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(b) a method of affixing the door straps and cladding.

Rubin J found that such particulars were ‗rather scanty and somewhat skeletal‘ (at para 141) and

‗regrettably inadequate‘ (at para 143). The learned judge also found that the other elements of the

cause of action had not been made out, in particular the information relied upon by the plaintiffs was

not of a confidential nature and the information was not imparted in circumstances importing an

obligation of confidence (see below). The action for breach of confidence was accordingly dismissed.

It is interesting to speculate whether a failure to provide adequate particulars in itself is sufficient to

warrant a dismissal of the action. It might be argued that the plaintiff should be given an opportunity

to rectify the inadequacy (see Chiarapurk Jack, supra, para 16.76), especially where the defendant did

not request for Further and Better Particulars.

Confidential information

16.79 The information must not be ‗common knowledge‘ (Coco v A N Clark (Engineers) Ltd [1969]

RPC 41at 47), or ‗public property and public knowledge‘ (Saltman Engineering Co Ltd v Campbell

Engineering Co Ltd [1948] 65 RPC 203 at 215).

16.80 Rubin J in Flamelite (supra) held that the information relied on by the plaintiffs had entered the

public domain. The recommended method of installing the door, he found, was information which

could be found in the manufacturer‘s catalogues and instruction manuals, or information which any

competent journeyman metal worker possessed. (In any event, the plaintiffs abandoned this claim

during their closing submission.) The designs of the plaintiffs‘ fire-rated glass doors as contained in

the shop drawings were simple and obvious, involving elementary principles of construction. (This

determination was made on the question of copyright infringement, see section on

‗Copyright‘, supra at para 16.32).

16.81 In Flamelite, the plaintiffs‘ fire-rated glass doors had been installed in public places. The fact

that the plaintiffs‘ product is made available to the public does not necessarily destroy whatever

confidential information therein. The next case illustrates this. In Stratech Systems Ltd v Guthrie

Properties (S) Pte Ltd (Suit 575/2000, HC, unreported judgment dated 20.4.2001), the plaintiffs

designed a ‗ticketless‘ and ‗cashless‘ car park system which became fully operational at Jurong Point

in August 1999. Earlier that year, the plaintiffs had disclosed the relevant information to the

defendants during negotiations for the installation of the system at the defendants‘ building.

Negotiations fell through, and the plaintiffs sued for breach of confidence when they discovered that

the defendants had a similar car park system installed by another party. The defendants argued that the

confidentiality of the plaintiffs‘ system, if any, was lost once the system was installed at Jurong Point

since the concept could be observed by anyone who visited the car park at Jurong Point. Lai Kew

Chai J pointed out that the information which the plaintiffs were seeking to protect was not the

concept of a ‗cashless‘ and ‗ticketless‘ car park system, but rather the technical information on the

functional description, system specifications, software specifications etc. Such technical information,

in the view of the learned judge, remained confidential even after the car park system had been

installed at Jurong Point because it was not possible for the public to see how the system architecture

was designed, how the network was set up, etc.

16.82 The defendants also attacked the confidentiality of the technical information relating to the

plaintiffs‘ car park system on the ground that it contained various information that was already known

and practised by persons skilled in this area. Lai J dismissed this argument, and applied the well-

established principle that the information must be assessed in its entirety and not in its individual parts

(see, for example, Coco v A N Clark (Engineers) Ltd (supra) at 47: ‗Novelty depends on the thing

itself, and not upon the quality of its constituent parts‘). Even though components in the plaintiffs‘ car

park system were in the public domain, it was the way the plaintiffs combined everything together

which made the integrated information, as a whole, confidential in nature.

„Springboard‟ doctrine

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16.83 Lai J explained that the principle of assessing the confidentiality of the information looked at as

a whole is directly linked to the ‗springboard‘ doctrine enunciated in Terrapin Ltd v Builders‟ Supply

Company (Hayes)Ltd [1967] RPC 375, which is a rule that, where the information has become part of

the public domain or where some of the information was not confidential to the plaintiff to begin with,

the defendant-recipient is nonetheless under a duty not to make use of the information as a

‗springboard‘ for activities that would be detrimental to the plaintiff. (For another local case which

applied the ‗springboard‘ doctrine, see Haw Par Brothers International Ltd v Chiarapurk Jack [1991]

SLR 626.)

16.84 The ‗springboard‘ doctrine was recognised by Megarry J in Coco v A N Clark (Engineers)

Ltd (at 49) as being ‗salutary‘. But he also expressed his reservations about how it was to be put into

practical effect: should the defendant be restrained from using the confidential information, and if so

for how long? Or should the defendant be made to pay only damages? This question of the

appropriate relief in cases where the ‗springboard‘ doctrine is applied was not before Lai J. Even

though the learned judge found that there was confidential information in the plaintiffs‘ car park

system assessed as a whole, and that the defendants owed an obligation to the plaintiffs (see below),

the defendants were held not to have breached this obligation of confidence because there was no

unauthorised use of the confidential information.

Obligation of confidence

16.85 In Stratech (supra), the plaintiffs had marked their documents ‗Confidential‘ before forwarding

them to the defendants. Lai J had no doubt at all that the information was imparted to the defendants

in circumstances which imposed an obligation of confidence.

16.86 Where there is no express communication, the defendant may nonetheless owe the plaintiff an

obligation of confidence, for such obligation can be imposed by equity (Coco v A N Clark (Engineers)

Ltd, at 48; Tang Siew Choy v Certact Pte Ltd [1993] 3 SLR 44 at 52). Further, equity is likely to

intervene where the defendant is given the information with some business object in mind, such as a

joint venture or the manufacture of articles by one party for the other (Coco v A N Clark (Engineers)

Ltd, at 48). The case of Flamelite (supra) should be understood in the light of these established

principles. Rubin J found that the first defendant did not owe the plaintiffs any obligation of

confidence. In his judgment, mention was made of the fact that the first defendant was neither

cautioned nor told by the plaintiffs that there was any secret or confidential process involved in the

installation work (see para 144 of the judgment). Rubin J should not be taken to mean that the first

defendant could not owe an obligation of confidence when he was not told that the information

imparted to him was proprietary and confidential. It is submitted that the learned judge mentioned this

fact as yet another reason for his conviction that the information given to the first defendant was

common knowledge and not confidential in nature.

Position of former employees

16.87 The principle of law applicable to cases involving former employees is as follows: after the

termination of the employment, there remains an implied obligation on the employee not to use or

disclose information which may cover secret processes of manufacture such as chemical formulae or

designs or special methods of construction and other information which is of a sufficiently high

degree of confidentiality as to amount to a trade secret (see Faccenda Chicken Ltd v Fowler [1986] 1

All ER 617, approved by the Court of Appeal in Tang Siew Choy v Certact Pte Ltd (supra)).

16.88 Where the information does not qualify as ‗trade secret or its equivalent‘, employers should be

able to protect such information by means of an express restrictive covenant which is reasonable in its

limits on time and space. This was the view of Goulding J in Faccenda Chicken Ltd v Fowler.

Although the English Court of Appeal disagreed with him on this issue, Goulding J‘s view found

favour in subsequent cases (eg, Balston Ltd v Headline Filters Ltd [1987] FSR 330 at 348; Lancashire

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Fires Ltd v SA Lyons & Company Ltd[1996] FSR 629 at 666-667). Flamelite (supra) can now be

included in this list of cases. In his judgment, Rubin J said (at para 147):

‗[A] worker or contractor employed cannot in the absence of a specific contractual restraint be

made to be denuded of any knowledge gained, expertise acquired or novelty learnt in the course

of work undertaken by him in the course of his employment. To prevent him from using his

experience in subsequent ventures, employment or enterprises is contrary to reason, fairplay

and public policy.‘ [emphasis added]

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Intellectual Property Law Annual Review of Singapore Cases (1, 2000)

Information

Title: Intellectual Property Law

Textbook Title: Singapore Academy of Law Annual Review

Chapter No: 13

Author | Editor: Ng-Loy Wee Loon, Tan Tee Jim

Up

Catchwords

Patents and Inventions - Industrial applicability

Patents and Inventions - Utility

Patents and Inventions - Inventive Step

Patents and Inventions - Novelty

Patents and Inventions - Invention vs discovery

Trade Marks and Trade Names - Infringement

Trade Marks and Trade Names - Designs - Eye Appeal - Novelty -

Authorship/proprietorship

Trade Marks and Trade Names - Well-known Trade Mark - Descriptive/distinctive mark

Trade Marks and Trade Names - Passing Off

Copyright - Internet threat

Copyright - Copying

Copyright - Authorship

Copyright - Fundamental principles

Patents and Inventions - Sufficiency of disclosure

Patents and Inventions - Infringement

Patents and Inventions - Groundless Threat

Patents and Inventions - Transitional provisions

Up

125

Textbooks

Introduction

There has undoubtedly been a tendency in recent years to look to intellectual property law for

protection against competitors and interlopers. This tendency stems from the increasing recognition,

particularly acute in the developed economies, that only intellectual property rights can help to sustain

the lead of those in the van of innovation. Specifically, intellectual property rights have come to be

perceived as the harbingers of immense economic returns to those (Bill Gates springs to mind) with

the technical know-how, with creative marketing schemes and, generally, with the ability to cater to

the fickleness of the marketplace. Another impetus for the tendency is that the rights are being

constantly undermined by extraordinary advances in the technology of imitation and in countries

where the social, aesthetic and cultural values are not predicated on the moral and economic rights of

creators. In consequence, there has been a proliferation of national and international intellectual

property legislation (such as the Agreement on Trade-Related Aspects of Intellectual Property Rights

('TRIPS Agreement')) as well as a rush to the national patents and trade marks registries - and to the

courts.

So too it has been in Singapore in recent years. There is now a greater awareness that intellectual

assets should be protected in Singapore. This is attributable not only to external influence but also to

the government's determination to attract investments and talent in the new technologies in

telecommunications, information and the life sciences. This was emphasised by the Minister for Law

and Foreign Affairs at an International Federation of Phonographic Industry Asia/Pacific Regional

Council Meeting in May 1999:

'A strong IPR [intellectual property rights] protection regime is critical to Singapore's efforts to

attract and encourage the growth of value-added and high content companies. Piracy losses

pose a serious constraint on the growth of value-added and high content industry, holding back

high-value job creation and adversely affecting investment decisions'

as well as in the Explanatory Statement to the Copyright Act (Cap 63, 1988 Ed):

'It is necessary to enact an independent self-contained law on the subject of copyright in the

light of the growing public consciousness of the rights and obligations of the authors and

owners of intellectual property. New developments in computer technology, lithophotography

and video recording and advanced means of communications like satellite broadcasting also

call for changes in the existing law. Adequate provision has to be made for fulfillment of

international obligations in the field of copyright which Singapore might accept.'

In the event, Singapore signed the TRIPS Agreement, joined the World Intellectual Property

Organisation ('WIPO') and acceded to several international intellectual property conventions such as

the Berne Convention, the Paris Convention for the Protection of Industrial Property, the Patent Co-

operation Treaty, the Budapest Treaty on the International Recognition of the Deposit of Micro-

organisms and the Madrid Protocol.

These international conventions provided a fecund source for change in our intellectual property law.

In 1995, there was an overhaul of our patent system which now allows an inventor to apply for patent

protection in Singapore if his invention is new, non-obvious and capable of industrial application. The

new Patents Act was revised a year later to delete a provision which had excluded the patenting of

certain matters such discoveries, schemes, scientific theories and computer programs. In 1998, the

Trade Marks Act (Cap 332, 1999 Ed) was enacted 'to establish a new law for trade marks'. The new

Act extends protection to service marks as well as well-known marks and abolishes the distinction

between Part A and Part B marks. It expressly states that parallel imports are legitimate and prohibits

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any groundless threat of trade mark infringement proceedings. In 1999, the Copyright Act (Cap 63,

1988 Ed) was extensively amended to accommodate the new technologies. The amendments prohibit,

amongst others, reproduction of a copyright work 'on any medium by electronic means', making a

copy "which is transient or is incidental to some other use of the work" and copying more than 10% of

the total number of bytes in the electronic version of a literary, dramatic or musical work. The

amendments also introduce a number of other changes - in particular, the creation of border

enforcement measures, the conferment of a quasi-copyright on performers and the granting of

exemption to network service providers in certain circumstances. Last year, the United Kingdom

Designs (Protection) Act (Cap 339, 1985 Ed), which had been in force since 1938, was repealed to

make way for an entirely new designs regime which is administered in Singapore.

The expansion last year of the role of the Intellectual Property Office of Singapore ('IPOS'), now a

statutory board, is another indication of the importance placed upon intellectual property protection in

Singapore. It has changed from the traditional role of processing applications of patents and trade

marks to a central body for establishing and co-ordinating the development of the legal and regulatory

framework for intellectual property protection in Singapore. It now has a wider mission, which is 'to

provide good support services for the promotion of intellectual property protection which will in turn

enhance trade and encourage creative innovation in Singapore'. IPOS is set to play a pivotal role in

accelerating the growth of the knowledge economy in Singapore.

The courts have not been unaffected by the greater awareness of the importance of intellectual

property protection. The number of intellectual property cases heard by the courts has been increasing

steadily over the years. Indeed, based on the Singapore Law Reports, there was a record number of

such cases heard last year. This review seeks to determine the nature and extent of the protection that

was granted in the cases last year.

Copyright

Fundamental principles affirmed

It is a fundamental principle of copyright law that copyright does not protect ideas, only the form in

which they are expressed. In an early case (Hollinrake v Trusswell [1894] 3 Ch 420), Lindley LJ said:

'Copyright, however, does not extend to ideas, or schemes, or systems, or methods; it is confined to

their expression; and if their expression is not copied the copyright is not infringed.'

Another fundamental principle is that copyright is not a monopoly, unlike patents and registered

designs. It is a negative right to prevent copying. Thus, if two identical works were in fact produced

independently of one another, there is no infringement of copyright by one of the other.

These principles were recently re-affirmed by the High Court in the case of Chua Puay Kiang v

Singapore Telecommunications Limited [2000] 3 SLR 640. The plaintiff conceived the idea of using

the telephone keyboard to transmit alphabetical messages to printers. He expressed the idea in a

drawing of a telephone keyboard ('the drawing') as well as in a conversion table ('the table') and

developed a computer program for his Teletyper' system which enabled computers to recognise

signals generated by pressing the buttons on the telephone keyboard and to convert the signals into

alphabets, as envisaged in the table. He demonstrated the system to the defendants and gave copies of

the drawing and the table to the defendants' representatives. He did not hear further from the

defendants after the demonstration. Subsequently, he discovered that the defendants hadF introduced

and provided an API (alpha-numeric push-button input) service to their paging subscribers. He sued

the defendants for infringement of copyright in the drawing, the table and the computer program.

The defendants denied any copyright infringement. In particular, they denied copying the plaintiff's

table and drawing and said that their coding table for the API was independently created. They also

contended that even if there was copying, it was in respect of an idea. This was because, in the

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plaintiff's table, the sequence of the keys and the arrangement of the alphabet in their normal order

over the numerals was the only logical way of ordering them.

Rubin J dismissed the p l a i n t i f f ' s claim. He was satisfied that the defendants' table was in fact

independently created, even though the defendants had sight of the plaintiffs table and there were

some features which were similar to those of the plaintiffs. He relied on the defendants' internal

memorandum which pre-dated the demonstration and which showed that the defendants had the same

idea. As regards the drawing, he found that there were substantial differences in the get-up and

features and further opined that, at any rate, the plaintiff could not claim a monopoly over the

sequence of the numerals 1 to 9 as well as the placement of the letters in groups of three on the

telephone keyboard which were ideas.

As to the computer program, the learned judge distinguished the decision of the High Court of

Australia inAutodesk Inc v Dyason [1992] 22 IPR 163 which concerned a hardware device called an

'AutoCAD lock' which Autodesk supplied with its AutoCAD program. Without the lock, the program

could not run. The way this worked was that the program had a sub-program (called 'Widget C')

which sent a series of impulses to the lock while the program was running. The program would cease

to run if it failed to receive a response from the lock to the impulses, which were compared by Widget

C with a table of 127 responses stored in memory (called the 'look-up table'). This thus ensured that

the purchase of the program did not result in multiple use of the program. After studying the

AutoCAD lock, the respondents created an alternative device (called 'Auto Key lock') which

performed the same function as the AutoCAD lock. They were held to infringe the copyright in the

AutoCAD program because they had taken the look-up table which constituted a substantial part of

the Widget C program.

In contrast, in Chua Puay Kiang, the defendants were not concerned with the plaintiff's computer

program. No source code or object code of the plaintiffs program was ever shown or disclosed to the

defendants. There was clearly no question of copying.

Copying

Often, however, copying has to be inferred. This can be done by showing striking similarities between

the two works, that the plaintiff's work was the earlier in time and that the defendant has had the

opportunity to access the plaintiff's work (see, eg, Francis, Day & Hunter Ltd v Bron [1963] 1 Ch

587). The opportunity to access would indicate that the defendant's work is based on or taken from the

plaintiff's copyright work - that is, a 'causal connection' between the two works. The causal

connection may be indirect, as in copying from a 3-dimensional version of the plaintiff's copyright

work rather than directly from the plaintiff's work (see, eg, King Features Syndicate Inc v O and M

Kleeman Ltd [1941] AC 417).

In Radcoflex Australia Pty Ltd & anor v James Lim Hwa Chin & anor (Suit 1598/1999, unreported

judgment dated 27.5.2000), the plaintiffs sued their ex-employee and his company for infringement of

copyright in certain drawings of the plaintiffs' machine. The defendants denied copying the machine,

saying that they had no access to the drawings and that their machine was not a substantial

reproduction of the drawings.

Lee Seiu Kin JC found that there was indeed no access to the plaintiffs' drawings. There was no

evidence that the documents were kept in the plaintiffs' premises to which the first defendant (the ex-

employee) could have access during employment. The learned judge also ruled that the defendant's

machine was not a copy of the plaintiffs' drawings. This was because the machine was not based on

the drawings but on the plaintiffs' machine which the first defendant saw or would have seen.

However, the plaintiffs' machine was substantially different from their copyright drawings; the

drawings were not the ones used by the plaintiffs to construct their machine! There was thus no causal

connection between the defendant's machine and the plaintiffs' drawings. In this respect, the learned

judge said (at para 66):

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'If a 3-dimensional object was not made based on a drawing, a second 3-dimensional object

which was copied directly from the first cannot be an indirect copy of the drawing

notwithstanding any similarity between the second object and the drawing. It would be a

travesty of logic if it were otherwise.'

Authorship

The Radcoflex case also provides a salutary reminder that the burden of proving authorship of a

document over which copyright is claimed cannot be taken lightly. In the Copyright Act, it is

expressly stated that copyright shall subsist in a work (whether published or unpublished) if the author

was a 'qualified person' at the time the work was made or first published. 'Qualified person' means a

citizen or resident of Singapore or a member country of the Berne Convention or the World Trade

Organisation. In the case, the defendants contended that, in respect of a number of the crucial

documents, there was no evidence that the alleged authors were qualified persons at the time the

documents were created. This was because there was no disclosure at all of their citizenship status and

unclear evidence as to their residency at the time of the creation of the works. The contention was

accepted by Lee JC who said (at para 30) that 'the burden of proving authorship of a document over

which copyright is claimed rests on the plaintiffs and it cannot be said that they have discharged this

burden by proving that Robinsoncould be its author' (original emphasis).

Authorship was also an issue in Alteco Chemical Pte Ltd v Chong Yean Wah t/a Yamayo Stationery

Manufacturer [2000] 1 SLR 119. The plaintiffs manufactured and sold super glue in small tubes. The

tubes were mounted on a display card with perforations to form 12 individual sections. The plaintiffs

claimed copyright in the get-up of the pack of tubes and the display card. They sued the defendants

for infringing the copyright in the get-up. The defendants denied infringement and challenged the

plaintiffs' copyright ownership in the get-up. They claimed that another company had used a similar

get-up before the plaintiffs first used theirs. Although the challenge was only raised in the defendants'

closing submission, GPSelvam J allowed the challenge to be ventilated, given that the plaintiffs had

led some evidence on the copyright ownership of the getup. Their evidence was that it was a Koichiro

Nogami who conceived the idea of selling glue using a display card exhibiting a pack of 12 tubes in a

spread out display. He then conveyed the idea to the plaintiffs' parent company (Alpha-Techno) in

Japan, and both worked closely with a design agency (Fujita Sangyo) which came up with the design

of the subject getup. The defendants argued that in the circumstances, Fujita Sangyo was the author

and the copyright owner of the get-up.

The learned judge disagreed. In doing so, he made a number of points on copyright ownership and

authorship which bear comment.

First, he said (at 127) that '[f]or openers, s 30 of the Copyright Act does not apply to copyrights

created outside Singapore because the provision cannot have extraterritorial operation' and went on to

state that he had to decide the issue of copyright ownership of the get-up on the basis of Singapore

law.

It is, with respect, irrelevant that s 30 (which identifies the owner of copyright in various situations)

has no extraterritorial operation. The learned judge should have considered s 27 which states that an

artistic work has copyright protection if, amongst others, it was first published in Singapore or the

author of the work was a 'qualified person' at the time when the work was first published. The term

'qualified person' refers to a Singapore citizen or resident. In the case of a work first published outside

Singapore or whose author is not a Singapore citizen or resident, the Copyright (International

Protection) Regulations (1990 Ed) provide (at reg 3(1 )(a)) that the Act shall apply in relation to a

literary work first published in a country that constitutes or forms part of the territory of a country

specified in the schedule 'in like manner as those provisions [of the Copyright Act] shall apply in

relation to artistic ... works first published in Singapore'. Regulations 3(3) and 3(4) further state that

the provisions of the Act relating to artistic works shall apply in relation to persons who, at the

material time, are citizens or nationals or are resident in a country specified in the schedule in like

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manner as those provisions of the Copyright Act shall apply in relation to persons who, at a material

time, are citizens or nationals of or are resident in Singapore. The countries specified in the schedule

to the Act include Japan. Thus, whilst it is true that s 30 has no extraterritorial operation, it is

nevertheless applicable in respect of artistic works first published in scheduled countries or created by

citizens, nationals or residents of those countries. This is because the Act treats such works as if they

were first published in Singapore or created by Singapore citizens, nationals or residents. In the case,

the get-up was first used, and hence first published, in Japan and was evidently made by Japanese

citizens and residents. As such, the Act was applicable to it. It should therefore have been on this basis

that the learned judge decided the copyright ownership of the get-up under s 30.

The learned judge also failed to make the distinction between authorship and copyright ownership in s

30. After noting that the word 'author' was not defined in the section, he observed (at 127) that the

word:

'became part of the glossary of copyright law at the primitive stage of copyright law when

copyright was recognised only in writing. At that time it meant a writer of books albeit it was

later extended to a maker or originator of artistic work who was an individual. It was intended

to protect the interest of the writer if he legitimately laid claim to copyright, but times have

changed. So has the temper of the law. This is an age where artwork is often the result of

teamwork and computer graphics. Often, and particularly in cases where an agency is

commissioned to do a get-up or advertisement, the author has absolutely no interest in the get-

up or advertisement. Given that scenario, it is often difficult, if not impossible, for an individual

'author' to make a claim to copyright or identify him. This is conspicuously so when a corporate

or unincorporated body undertakes to materialise an idea into an artistic work or computer

graphics.'

After examining the facts, he recommended a 'modern' meaning to the word 'author' - 'having regard

to the purpose of copyright law, the term 'author' should be widely interpreted to include the only

person whose interest it was intended to protect'. He opined that the only person whose interest was to

be protected in the case was Alpha-Techno.

With respect, there is no inadequacy or unfairness in the law. The present framework of copyright law

is adequate to protect a person such as Alpha-Techno. It can obtain copyright ownership in a number

of ways from the author. In the first place, although s 30(1) of the Copyright Act vests copyright

initially in the author of the work (because he is the person who has used skill and labour in giving

expression to the ideas in the work), the law has not been adverse to giving protection to his joint

author or authors and their joint work if he is part of a team. Section 7(1) states that a 'work of joint

authorship' means a work that has been produced by the collaboration of two or more authors and in

which the contribution of each author is not separate from the contribution of the other author or the

contributions of other authors. Each author must therefore contribute significant skill and labour to the

collective expression of the ideas in the work. Further, where the author is commissioned to do a work,

copyright in the work belongs to the person who commissions him if the work is a photograph, a

painting or drawing of a portrait or an engraving. For other works, the provisions in Part X of the Act

(to which s 30 is subject) are available to the person to protect his interest by obtaining an assignment

of copyright from the author. The assignment must be in writing signed by or on behalf of the

assignor. No specific form of words is required. The work to be assigned can be a present or future

work. Where the work is made in breach of some fiduciary duty, the court can imply a constructive

trust against the author.

This was what the learned judge did in the case. The defendants had submitted that Fujita Sangyo was

the author because it designed the getup. The judge said that Fujita Sangyo was engaged by Alpha-

Techno and it would be preposterous for Fujita Sangyo to claim copyright in the get-up in the

circumstances. He added that common law would imply an intention in the agreement between the

parties that Alpha-Techno would be the copyright owner and equity would imply a constructive trust

against Fujita Sangyo. It is respectfully submitted that this is a more defensible approach. There is no

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need for a 'modern' meaning to the word "author' and no necessity to change the framework of

copyright law in this regard.

FONT>

Internet threat

However, there does exist a threat to the framework and it comes from an unexpected source, namely,

the Internet which really took root in the mid-1990s and is now a fountain of tricky issues. Many

learned commentators have even doubted the relevance of copyright in this Internet age in which 'our

[intellectual] property can be infinitely reproduced and instantaneously distributed all over the planet

without cost, without our knowledge, without its even leaving our possession' (Barlow, 'The Economy

of Ideas', in Wired, March 1994; see www.wired.com). The principle of protecting expression of ideas

rather than ideas seems antiquated in an era where ideas can dart around the Net at the speed of

thought (as glowing pixels or transmitted sounds) and need not be cribbed within any material

form (eg a book). There have in consequence been suggestions to deploy other resources of law.

It will be recalled that the ancient common law action of trespass to land was created to protect

private property by vindicating the owner's interest in exclusive possession of the land. John Locke

justified the protection on the 'fruits of one's labour' doctrine. Specifically, the protection is premised

on the doctrine that everyone has a property right in his own body and labour and all the resources of

the world are given to humanity in common. Hence, when anyone mixes his own labour with the

common resources and his labour contributes to the rise of a property interest in the resources, he has

the right to that interest or part thereof.

So also with Internet web sites. It can be said that without the labour and skill to create the site, there

would be no 'sites' at all. Someone has to process the natural resources of copper, petroleum, silicon

and so on to produce wires, plastics and computer chips. Moreover, many of the words used to

describe the Internet have a basis in real property. The word 'site' is one, as are such expressions as

'home' pages and 'visiting' web sites. It is thus tempting to conclude that the law of trespass can be

invoked to protect the moral and economic rights of creators.

In the United States, the court in Ticketmaster Corp v Tickets.com Inc (judgment dated 27 March

2000, unreported; see http://www/gigalaw.com/ library/ticketmaster-tickets-2000-03-27.html) held

that the law of trespass could not apply to web sites. This was because the protection of copyright

works such as web sites was eminently within the provenance of the US Copyright Act of 1976 which

is an Act 'to promote the progress of science and useful arts'. Being a federal statute, this Act

'preempted' or superseded state law and judicial doctrine. The court nevertheless added that 'it is hard

to see how entering a publicly available web site could be called a trespass, since all are invited to

enter'.

In Singapore, a work cannot be copyrighted except under our Copyright Act (Cap 63, 1999 Ed) (see s

4). Does this mean that it cannot at all be protected under any other area of law (such as trespass)?

In Pacific Internet Ltd v Catcha.com Pte Ltd [2000] 3 SLR 26, the court did not think the answer to

this issue was so clearly in the affirmative that the plaintiffs' cause of action could be struck out. The

plaintiffs sued the defendants for linking their web sites to the inner pages of the plaintiffs' web sites.

They relied, amongst others, on the tort of trespass, asserting that the various parts of their web sites

(such as the contents in the web pages and the artistic works in the designs comprised in the web sites)

were either personal property or property akin to real property and there was unauthorised access to

those parts. The defendants applied to strike out the plaintiffs' claim based on trespass on the ground

that the law of trespass did not cover intellectual property. The application was disallowed by Lai

Kew Chai J who was of the view that the parties' submissions pointed to serious policy considerations

which could only be adequately considered after a full trial.

It will therefore be interesting to see whether the court, after a full trial, will extend the ancient tort of

trespass to cyberspace. As it stands at present, the tort exists only against real and corporeal property

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(such as land and goods) and arises where there is a wrongful interference with immediate possession

to such property. Thus, one could not sue for trespass against incorporeal property (such as an

easement and right of way). The court will therefore have to grapple with the question whether a web

site is indeed a real and corporeal property and whether an unauthorised access to a web site would

indeed interfere with the immediate possession (if any) of the owners and users of the site. Also, if a

web site does not expressly state the purposes for which it can or cannot be accessed (as is very often

the case), can there be wrongful interference when the access is for purposes of deep linking? It is

manifest that any extension of this ancient tort will result in serious repercussions relating to the

future growth of the Internet.

Trade Marks and Passing off

Descriptive/distinctive mark

The purpose of a trade mark is to distinguish the goods or services of one trader from those of another.

The mark is capable of so distinguishing if it is inherently or factually distinctive. Many an invented

word (eg 'KODAK') has been readily found to be inherently distinctive and thus protectable. Others

(such as a descriptive word, eg'Electric') are much less well-suited to the role. Their descriptiveness

tends to make them not truly distinctive of any particular goods or services. Between these two ends

of the scale lies a huge penumbra of marks whose distinctiveness often depends simply on the extent

of descriptiveness of the marks and on whether others could have a legitimate interest in using them.

Our old Trade Marks Act (Cap 332, 1992 Ed) (which was repealed in January 1999 but continues to

apply for infringements committed before the date) provided a measure of guidance. In s 10, it was

expressly provided that to be protected, a word must have no direct reference to the character or

quality of the goods or services in respect of which registration is sought. The purpose of this

provision was to prevent any trader from obtaining a monopoly over the use of a word having

reference to the character or quality of the goods or services. InEastman Photographic Materials Co

Ltd v Comptroller-General of Patents, Designs and Trade Marks[1898] AC 571 at 580, Lord

Herschell explained thus:

'The vocabulary of the English language is common property: it belongs alike to all; no one

ought to be permitted to prevent the other members of the community from using for purposes

of description a word which has reference to the character or quality of goods.'

The word 'direct' was subsequently inserted in the provision 'to check the tendency which had been

disclosed in certain decisions to find a sufficient reference to the character or quality of goods in

expressions from which it could only be spelled out' (per Dixon CJ in Mark Foy's Ltd v Davies Coop

& Co Ltd (1956) 95 CLR 100 at 195).

The difficulty, however, is to decide how 'direct' must the reference must be, for every attractive trade

mark would in some sense have a reference to the character or quality of the goods or services in

question. This was precisely the issue addressed by the Court of Appeal in Rainforest Coffee Products

Pte Ltd v Rainforest Cafe, Inc [2000] 2 SLR 549. The respondents operated a chain of restaurants

under the name 'Rainforest Cafe' from October 1994. The restaurants have a rainforest theme,

featuring elaborate jungle props, animation and sound effects. In October 1995, they filed a trade

mark application under the old Trade Marks Act for the name in respect of 'restaurant and nightclub

services', giving evidence of plans to open a restaurant in Singapore. The application was granted in

April 1998.

The appellants were incorporated in November 1996 and soon opened their outlet selling salads,

sandwiches, soups and desserts together with a variety of speciality coffees and teas. The respondents

objected to the use of the word 'Rainforest' on the appellants' corporate name and products and

successfully sued for an injunction, delivery-up and damages.

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On appeal, the appellants challenged the trial judge's finding that the word 'Rainforest' had no direct

reference to the character or quality of the restaurant services provided by the respondents. They

submitted that the words 'Rainforest' and 'Cafe' were ordinary dictionary words, neither novel nor

fanciful. The phrase 'Rainforest Cafe' was an ordinary collocation of words, descriptive in nature,

conveying the meaning of a food establishment where a rainforest setting or theme was created, and

the public would so understand it.

Lai Kew Chai J (writing for the court) disagreed. After defining the issue to be whether the direct

reference was to restaurant services generally or to restaurant services with a certain theme, he said

that the former reference was to be preferred, 'not least because it would be overly unrealistic and

unduly technical to descend into different categories of definitions of 'restaurant services' - where

should the line be drawn?' The word 'Rainforest' clearly did not express anything which would

describe the type of services provided. Vague impressions did not translate to a 'direct reference to the

character or quality' of the restaurant services; the requisite nexus between the word and the type of

service was absent. The learned judge added that the word at the most conjured up images of trees and

greenery; it was novel and generated anticipation as to the kind of services which would be provided.

With respect, there was no necessity to draw any line. The question should simply have been whether

the mark has a direct reference to the character or quality of the services in respect of which the

respondents sought registration (z'e, 'restaurant and nightclub services'), not the services, theme or

images that were actually proffered by the respondents. The Registrar of Trade Marks is not expected

to surmise the various situations in which a mark will upon registration be used or to stipulate the

circumstances in which it may be used in order that it does not trespass upon the rights of other traders

to use the mark. That is the province of the tort of passing off which, interestingly, was abandoned by

the respondents at the beginning of the trial. In answer to the question, the word 'Rainforest' clearly

has no direct reference to the character or quality of the restaurant and nightclub services for which

registration was sought (and obtained) by the respondents. It is not at all descriptive of restaurant or

nightclub services nor of the character or quality of the services. It does not inherently refer to

restaurant or nightclub services. It does not of itself describe services of any character.

Under the new Trade Marks Act (Cap 332, 1999 Ed), a mark is not registrable if it is 'devoid of any

distinctive character'. The Act further provides (at s 7(l)(c)) that a mark which consists exclusively of

a sign or indication which may serve in trade to designate, amongst others, the kind, quality or other

characteristics of goods or services is not registrable. Thus, a word such as 'Coffeemix' would remain

unregistrable under the new Act.

The word 'distinctive' is not defined in the new Act. However, there hasbeen no difficulty in the

United Kingdom discerning the requirements of the word in the context of its equivalent Act. In the

case of British Sugar plc v James Robertson & Sons Ltd [1996] RFC 281, Jacobs J said that the phrase

'devoid of any distinctive character' suggested consideration of the sign on its own, assuming no use.

Ts it the sort of word (or other sign) which cannot do the job of distinguishing without first educating

the public that it is a trade mark?' This question was considered last year by our court in the case

of Sime Darby Edible Products Ltd v Ngo Chew Hong Edible Oil Pte Ltd [2000] 4 SLR 360 where the

applicants tried to invalidate the respondents' registration of the mark 'ROYAL SPOON' for edible

oils and fats on the ground that the words 'royal' and 'spoon' were both descriptive, one being

laudatory and the other being highly descriptive of a common utensil. The learned judicial

commissioner (Lim Teong Qwee JC), however, noted that the mark comprised the two words used in

combination and took the view that it was a wholly inappropriate phrase for edible oils and fats. In

other words, considering the mark 'ROYAL SPOON' on its own and assuming no use, the mark could

do the job of distinguishing the applicants' goods in the marketplace.

The considerable difficulty of establishing that a descriptive mark is or has become distinctive of a

trader's goods, services or business is amply illustrated in three passing off cases decided last year.

In Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd [2000] 2 SLR 766, the plaintiffs were the owners of a chain

of retail shops operating under the name and style 'ONE.99 Shop'. All the goods sold in the shops

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were priced at $1.99. The shops received immense publicity in the media, as the public was attracted

by the concept of buying miscellaneous goods at relatively cheap, fixed price in upmarket locations.

The plaintiffs also spent relatively large amounts of money on advertising. In the event, they managed

to achieve high sales turnover within the first 11 months of business.

The defendants were the retail arm of Rubber Band Enterprises Pte Ltd which was a major player in

the toy industry. The defendants were incorporated to continue with Rubber Band's successful

business of selling toy and gift products at $1.99. They used the name 'Lifestyle 1.99' for their shops.

The plaintiffs sued them for using this name.

One of the issues was whether the plaintiffs had, at the date when the defendants were incorporated,

acquired sufficient goodwill in their business in association with the use of the name 'ONE.99'. The

trial judge found that the name was a fanciful one and, given the wide publicity and high sales

turnover, had acquired goodwill when the defendants began operating. He felt that the use of the word

'Lifestyle' by the defendants made no difference to his finding that the public would be misled as the

appeal of the plaintiffs' name lay in the expression 'One Point Nine Nine' which the defendants had

adopted.

The Court of Appeal disagreed. Chao Hick Tin JA examined at some length the law on distinctive and

descriptive marks and concluded that a distinctive mark is one which denoted the plaintiffs' goods to

the exclusion of other traders. On the other hand, a mark which was prima facie descriptive would

only be protected if it could be shown to have acquired a secondary meaning (namely, it had become

distinctive of the plaintiffs' business). The learned judge held that the name 'ONE.99' was clearly

descriptive of the plaintiffs' business of selling goods at $1.99. He said that once the public realised

that the goods sold at the plaintiffs' outlets were all fixed at $1.99, it did not require much imagination

to appreciate that the name 'ONE.99' was intended to inform all consumers that the goods sold at their

shops were so priced.

The same issue arose in respect of the word 'Coffeemix' in Super Coffeemix Manufacturing Ltd v

Unico Trading Pte Ltd [2000] 3 SLR 145. Here, there was evidence that the public had understood the

word to indicate or describe a product consisting of coffee, sugar and creamer which, upon mixing

with hot water, produced an instant coffee drink. Accordingly, the Court of Appeal ordered that the

word in the plaintiffs' registration of their trade mark 'SUPER COFFEEMIX' be disclaimed. The

Court further held that, in relation to passing off, the plaintiffs failed to overcome the high evidential

burden of showing that the word 'Coffeemix', which is descriptive in nature, had become distinctive of

their products. It cited Wadlow on The Law of Passing Off(2nd Ed, 1995) at para 6.02 in support:

'Matter such as a name, mark or get-up is said to be distinctive if it denotes the goods of the

plaintiff to the exclusion of other traders. It is the significance which the relevant public

attaches to the supposed mark which is all important. Matter which is not relied on by the

public in this way is not in law distinctive, irrespective of how novel, striking or different it

may be."

The third passing off case is Nippon Paint (Singapore) Company Pte Ltd v ICl Paints (Singapore) Pte

Ltd[2001] 1 SLR 1 decided in October last year. The plaintiffs had been successfully selling their

various '3 in 1' multi-purpose paint products for over 4 years before the defendants began selling their

products called 'Supreme 3 in 1'. The principal issues were whether '3 in T was a descriptive term for

the multi-purpose paint products and, if so, whether it had acquired a secondary meaning by the time

the defendants began selling their offending products.

Amarjeet Singh JC held that the '3 in 1' mark in itself and without the addition of a manufacturer's

corporate name or other unique or distinct name was not really in any form a mark that could identify

meaningfully a product. It was generic and would be descriptive of the attributes of a product. As such,

it could not have goodwill attached to it. As regards the issue of secondary meaning, the learned judge

reviewed the evidence and concluded that the plaintiffs failed to prove on the balance of probability

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that the mark had acquired a meaning which denoted exclusively their products. This was despite

seven surveys conducted on the plaintiffs' behalf. The court felt that the formulation of the questions

in the surveys left much to be desired and that they did not establish that the public associated '3 in 1'

with the plaintiffs' products exclusively.

Accordingly, the starting point for deciding whether a mark is distinctive is the understanding that the

trader has built up with the public in Singapore. If the public understanding is that it denotes the goods

or services of the trader to the exclusion of others, the mark is likely to be considered to be distinctive.

If, however, the mark has some other connotation to the public, he faces the special evidential

difficulty of establishing that the public does understand the mark to indicate that the goods or

services come from him. The difficulty is greater if the mark is inherently highly descriptive (such as

'Coffeemix' and "3 in 1') or if the descriptive mark is used in relation to a new or invented product. As

Lord Shand said in Cellular Clothing Co Ltd v Maxton & Murray [1899] AC 325 at 340:

'[W]here a man produces or invents, if you please, a new article and attaches a descriptive name

to it ... and secures for himself either a legal monopoly or a monopoly in fact of the sale of that

article for a certain time, the evidence of persons who come forward and say that the name in

question suggests to their minds and is associated by them with the plaintiff's goods alone is of

a very slender character.'

This approach has now been extended in Singapore to a new or inventive concept or method of selling

goods and services, as shown in the Lifestyle 1.99 Pte Ltd case.

Limited scope of protection

Even if the trader succeeds in establishing that his descriptive mark has acquired some degree of

distinctiveness, he will find that the mark will not enjoy the scope of protection which is reserved for

a distinctive mark. This is because there is a rule of law that where a mark is descriptive, minor

differences will suffice to distinguish the defendant's goods or services. This rule was enunciated by

the House of Lords in Office Cleaning Services Ltd v Westminster Window & General Cleaners

Ltd (1946) 63 RFC 39 where both parties carried on the business of office cleaners and where it was

held that the defendants' mark 'Westminster Office Cleaning Association' was sufficiently different

from the plaintiffs' 'Office Cleaning Service'. Lord Simmonds who delivered the leading judgment for

the House of Lords said (at 43):

'It comes in the end, I think, to no more than this, that where a trader adopts words in common

use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the

first user is allowed unfairly to monopolise the words. The court will accept comparatively

small differences as sufficient to avert confusion.'

The rule is now well entrenched in Singapore. In the Lifestyle 1.99 Pte Ltd case, the Court of Appeal

was of the view that the additional word 'Lifestyle' should suffice to differentiate the defendants'

business from the plaintiffs'. This, coupled with the fact that the colour scheme of the outlets and the

logos were different, led the court to rule that there could not be any reasonable probability of

deception. In the Super Coffeemix case, the plaintiffs' products were known as 'SUPER COFFEEMIX'

and the defendants' were known as TNDOCAFE Coffeemix'. The Court of Appeal said that the

difference was sufficient to distinguish. The court further noted that the packaging of the two products

was different, both in terms of design and colour scheme, and doubted that the public in Singapore

would be confused. Amarjeet Singh JC also based his decision in the Nippon Paint case on a

relatively minor differentiation. He said that the parties' customers (mostly building contractors) were

habitual users of paints and would be able to notice the difference between the plaintiffs' 'Nippon

Paint 3 in 1' and the defendants' 'Supreme 3 in 1', as well as the differences in the get-up or livery of

the products. He added that the real selling points of the products were the corporate names of the

parties.

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Designs

Until 13 November 2000, designs registered in the UK were protected in Singapore as if the

certificate of registration had been issued with an extension to Singapore: see the United Kingdom

Designs (Protection) Act (Cap 339, 1985 Ed). This 'piggy-back' system of protection meant that the

provisions of the UK Registered Designs Act 1949 (as amended) ('the UK Act') were the law of

Singapore then. Naturally, our courts in applying this law - to determine if the registration is valid or

if there is infringement - had by and large followed English authorities.

< & Switchgear Soundtex v Anor Ltd Pte Manufacturing>Hunter Manufacturing Pte Ltd and & Anor

v Soundtex Switchgear & Engineering Pte Ltd and another appeal (No 1) [2000] 1 SLR 401, threw up

no surprises in that it adopted well-established principles laid down in English cases. Nevertheless, it

is an important decision because it is the first Court of Appeal case to clarify the scope of the

registration criteria ('eye appeal', the functionality exception and novelty), as well as the approach that

should be taken on the issue of infringement.

< & Switchgear Soundtex v Anor Ltd Pte Manufacturing>Before reviewing the Hunter decision, a

word should be said about the position since 13 November 2000. On that date, the Registered Designs

Act 2000 (Act 25 of 2000) came into force, repealing the United Kingdom Design (Protection) Act

and setting up a system of registration of designs which is administered within Singapore. While the

new regime is modelled after its English predecessor, there are material differences, particularly in the

registration criteria. Now, to be registrable:

(1) The design must be a feature of shape, configuration, pattern or ornament applied to an article by

any industrial process, excluding -

(a) a method or principle of construction;

(b) features of shape or configuration which -

(i) are dictated solely by the function which the article has to perform (the 'functionality' exception);

(ii) are dependent upon the appearance of another article of which the article is intended to form an

integral part (the "must-match' exception'); or

(iii) enable the article to be connected to, or placed in, around or against, another article so that either

may perform its function ("the must-fit' exception).

(2) It must be novel. Novelty is destroyed if, inter alia, there is prior publication of the design in

Singapore or elsewhere.

(3) The publication and use of the design must not be contrary to public order or morality.

(4) The design must not be a computer program or a lay-out design.

The following differences should be noted. First, it is no longer a requirement that the design must

have "eye appeal' (see s 1(3) of the UK Act. For further discussion of this, see 'Eye Appeal' below).

Second, the 'must-fit' exception is not found in the UK Act, but such an exception exists in the regime

governing unregistered designs: see s 213(3)(b)(i) in the UK Copyright, Designs & Patents Act 1988.

Third, the current world-wide test of novelty is to be contrasted with the old position where novelty is

destroyed if there is prior publication in the UK or in Singapore (see Ang Lay See & Ors v Solite

Impex Pte Ltd [1998] 2 SLR 365).

Eye appeal

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Designs must 'appeal to and are judged by the eye': see s 1(3) of the UK Act. The first time this

requirement came up before our courts was in Essen System Builders (S) Pte Ltd & Anor v Essential

Roofing Systems Pte Ltd & 2 Ors (Suit 63/1995, unreported judgment dated 31.10.1997). When

assessing whether the design of a roof tile had eye appeal, Lai Siu Chiu JC (as she then was) asked,

'What is so striking about D3 [the registered design] which catches the eye ...?' (at para 68). Anyone

familiar with design law would recognise that the learned judicial commissioner was applying the

tests laid down by the House of Lords in Amp Incorporated v Utilux[1972] RFC 103. There, the

House of Lords had to decide whether the design of an electrical terminal used in washing machines

had 'eye appeal'. It was held that the relevant eye was the customer of the article, and a design had 'eye

appeal' if it had features which had 'a special, peculiar, distinctive, significant or striking appearance, -

something which catches the eye', or had 'some perceptible appearance of an individual character'.

The House of Lords, in reaching the conclusion that the design of the electrical terminal had no eye

appeal, placed some importance on the fact that the electrical terminal was a component to be

installed inside the washing machine and would not be seen by the purchaser of the terminal. Just how

critical was this fact to the conclusion? This question arose in Hunter Manufacturing Pte Ltd & Anor

v Soundtex Switchgear & Engineering Pte Ltd and another appeal (No 1) [2000] 1 SLR 401. The

registered design in question was for an electrical meter box which was mounted on the corridor walls

of Housing Development Board ('HDB') flats and housed the miniature circuit breaker, the main

switch and the kilowatt meter for each household. The validity of this registered design was

challenged by the defendants when they were sued for infringement. On the issue of eye appeal, the

trial judge found that eye appeal was a factor in the design of the electrical meter box, when there

could be many such units installed on walls along the HDB corridors. He appeared to be influenced

by the fact that, unlike the terminal in Amp Incorporated v Utilux, the electrical meter box was

'exposed' (see para 32 of Suit 1489/1997, unreported judgment dated 28.4.1999). The defendants

appealed against this finding, arguing that the trial judge was wrong to have found eye appeal simply

because the features in the design could be seen. The Court of Appeal was thus asked to give

guidelines on the proper test to be applied when determining eye appeal. The Court of Appeal agreed

that visual features were fundamental to the registered design system, which was concerned with and

limited to the protection of 'aesthetic as opposed to functional designs or ideas and inventions' (at 415).

However, visibility per se was not sufficient. After citing extensively from the House of Lords'

speeches in Amp Incorporated v Utilux, the Court of Appeal pronounced (at 417):

'Thus, the test of eye appeal is not simply that of a mere visual appreciation, which takes into

account of the thing seen without any particular reaction being generated thereby. To have eye

appeal the design must have individuality of appearance; it must be "calculated to attract the

attention of the beholder" and therefore it must be in some ways "special, peculiar, distinctive,

significant or striking". It must not be merely visible but also be noticeable and "have some

perceptible appearance of an individual character".'

One point needs clarification. The Court of Appeal was in no way elevating the test for eye appeal to

that of aesthetic or artistic appeal. Lord Morris of Borth-y-Gest in Amp Incorporated v Utilux had

expressly rejected this equation when he said that the eye appeal requirement did not mean that 'the

"appeal" or attraction must be to an aesthetic or artistic sense' (at 112). This part of his Lordship's was

cited with approval by the Court of Appeal. Therefore, the Court of Appeal's references to 'aesthetic'

designs and 'particular reaction being generated' must be taken in that context.

On the design of the electrical meter box, the Court of Appeal found that it had eye appeal; it was not

merely visible, it had an individuality of appearance and was calculated to attract the attention of the

beholder and influence the choice or selection by the customer. The last factor - that the design was

one calculated to influence the choice of the customer - is probably the most important. In this sense,

the test of eye appeal is a subjective one. where the intention of the designer plays a crucial role.

In Amp Incorporated v Utilux, the chief engineer who was part of the team designing the electrical

terminal had testified that all the team had set out to do was to produce 'the terminal that would do the

job' (at 112). This admission was fatal to the assertion of eye appeal. In fact, the subjective intention

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of the designer is so critical that, if functionality was the only consideration in the mind of the

designer, but fortuitously the resulting design appeals to the customer, it would nevertheless not

satisfy the requirement of eye appeal: Interlego AG v Tyco Industries Inc and Ors [1989] 1 AC 217.

Functionality exception

A design which is 'dictated solely by the function which the article has to perform' is excluded from

registration: see s l(l)(b)(i) of the UK Act. In determining whether a design falls into this exception,

the question to ask is: are the features in the design 'attributable to or caused or prompted by' the

function which the article in that design is to perform? (per Lord Pearson in Amp Incorporated v

Utilux [1972] RFC 103 at 124). This test was endorsed by Lim Tiong Qwee JC in Sebel Furniture Ltd

v Tiong Hin Engineering Pte Ltd [1999] 2 SLR 662, a case involving the design of a chair.

It is also well-established that this exception does not apply only where the designer has no option,

because of the function that the article has to perform, other than to make it in a particular shape: Amp

Incorporated v Utilux,followed in Interlego AG v Tyco Industries Inc and Ors [1989] 1 AC 217, and

in Sebel Furniture Ltd v Tiong Hin Engineering Pte Ltd (supra). Thus, a court assessing whether a

design falls within this exception should take care not to put any weight on the fact that there are other

shapes which could perform the same function. This was the mistake made by the trial judge in

the Hunter Manufacturing case. In his conclusion that the shape of the electrical meter box was not

dictated solely by the function which the meter box had to perform, one of the reasons cited by him

was that '[t]here can be any number of designs that can perform the same functions' (at para 33 of the

unreported judgment dated 28.4.1999). This provided grounds for an appeal. The Court of Appeal,

while agreeing with the trial judge's conclusion, issued a reminder that it did not necessarily follow

that because alternatives to the registered design existed, the registered design was not dictated solely

by the function which the electrical meter box had to perform. One other useful reminder given by the

Court of Appeal was to make a distinction between the design and the article to which the design is

applied. In the case, the Court understood the defendants' attack on the validity of the registered

design to be centred around the argument that the meter box was 'purely of a utilitarian nature' (at

414). The Court pointed out that it was the registered design as applied to the meter box, and not the

meter box itself, to which the court should have regard when deciding whether the registered design

had eye appeal and was not dictated solely by the function which the article had to perform.

Novelty

To be new, the design or one substantially similar to it must not have been published in the United

Kingdom before the date of the application: see s 1(4) of the UK Act, for the full definition of novelty.

But certain disclosures do not put the design into the public domain: s 6 of the UK Act.

In the Hunter Manufacturing case, there was an earlier model of electrical meter boxes used for HDB

flats before the registered design was conceived and registered. The issue arose as to whether this

earlier model destroyed the novelty of the registered design. It was never challenged that this earlier

model, which was published in Singapore but not in the United Kingdom, could not constitute prior

art within s 1(4) of the UK Act. This is because the Court of Appeal has already in Ang Lay See & Ors

v Solite Impex Pte Ltd[1998] 2 SLR 365 held that the grounds upon which our courts declare a UK

registration invalid include prior publication of the design in Singapore.

The dispute on novelty in the Hunter Manufacturing case involved mainly a comparison between the

two designs to see if they differ 'in immaterial details or in features which are variants commonly used

in the trade'. The trial judge found sufficient differences between them to render the registered design

novel, which finding of fact was upheld by the Court of Appeal. (This is essentially a question of fact,

but there are some legal principles to be observed. They are similar to those applicable when

determining infringement, and will be dealt with infra under'Infringement'.)

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Apart from relying on the prior art to defeat the registration, the defendants cited two instances of

prior publication of the registered design: (a) the registered proprietor's sale of the electrical meter box

bearing the registered design ('the AMB box') to its distributor in Singapore; and (b) submission of the

AMB box to the Productivity and Standards Board for testing.

On (a), the issue was whether the sale of the AMB box to the distributor was excused by s 6(1 )(a) of

the UK Act, that is, as a disclosure of the design made by the proprietor to any other person in such

circumstances that would make it contrary to good faith for that other person to use or publish the

design. It seems clear from the language of this provision that it is targeted at disclosures made in

confidence, that is, disclosures of information which is not public knowledge imparted in

circumstances importing an obligation of confidence: see Coco v AN Clark (Engineers) Ltd [1969]

RFC 41, the locus classicus on the law of confidence. Therefore, two elements should be present

before the disclosure can fall within this provision. Firstly, the design must not be in the public

domain. Secondly, the disclosure of the design was made in circumstances importing an obligation of

confidence. It would seem that these two elements were in the mind of the Court of Appeal in

the Hunter Manufacturingcase, when it pointed out that the registered design had not been 'thrown

upon the public knowledge' or 'become a matter of public knowledge' so as to amount to a public

disclosure (at 426-427), and that the communications between the parties in this case 'imported an

obligation of confidence' (at 426). The latter finding is an example of the readiness of courts to

impose an obligation of confidentiality where information of business or commercial value is given

with some business object in mind: see Coco v AN Clark (Engineers) Ltd (supra, at 48).

On (b), the Court of Appeal also held that there was a confidential relationship established when the

AMB box was submitted to the relevant government authority for testing, and therefore this limited

disclosure to the Productivity and Standards Board for a specific purpose did not constitute prior

publication of the design. The provision relied upon appears to be s 6(l)(a). The other relevant

provision would be s 6(3) excusing 'communication of the design by the proprietor thereof to a

government department ... to consider the merits of the design'.

Author/Proprietorship

uthorship>

Proprietorship in a design is vested in the author of the design: see ss 2(1) and 2(3) of the UK Act.

This rule is displaced in some cases, such as where the author is an employee and the design is created

in the course of his employment; in such a case, the employer is the original proprietor of the design:

see s 2(1B) of the UK Act.

The 'author' is defined as the person who created it: see s 2(3) of the UK Act. But what is the meaning

of 'create'? Does it relate only to the act of putting the lines down on paper? Or does it encompass

something else, such as giving instructions as to how the lines should appear? This was the question

posed by the trial judge in theHunter Manufacturing case (at para 26 of the unreported judgment

dated 28.4.1999). The design of the electrical meter box for use in HDB flats was designed by the

plaintiffs' employee. She was provided with feedback from a third party who liaised with HDB to

ascertain their requirements. This third party did not lay claim on the authorship of the design, but the

defendants contended that the third party was the true author of the design. The defendants' challenge

was made on the basis of evidence, in particular, the fact that the plaintiffs' employee was vague and

hesitant when she was asked for details about the conception of the design. However, the trial judge

found that the plaintiffs' employee was credible when she claimed to be the author of the design. This

finding was upheld by the Court of Appeal, who added that in any event, it did not lie in the mouth of

a defendant to assert that another party was the proprietor of the design when that party not only

disclaimed any involvement in the creation of the design but affirmatively asserted that the plaintiff

was the author. This principle first appeared in Real Electronics Industries Singapore (Pte) Ltd v

Nimrod Engineering Pte Ltd (T Vimalanathan, Third Party) [1996] 1 SLR 336, a case on copyright.

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Had the challenge been on the law, the courts would have had the opportunity to deal with those

interesting questions relating to the scope of the term 'create' or 'design'. But the Court of Appeal did

refer to the following passage from Laddie, Prescott & Vitoria, The Modern Law of Copyright and

Designs (2nd Ed, 1995) (para 33.3):

'The author is the person who conceives the particular features which were incorporated in the

design. Although, no doubt, he may work through the medium of an amanuensis, he must have

chosen the shapes, lines, textures and colours, if any, of that which is sought to be registered.

But a person who gives general instructions to another for the creation of a design is not the

author ...'

It would also be relevant to refer to copyright cases. A local copyright case in which the concept of

authorship was considered is Alteco Chemical Pte Ltd v Chong Yean Wah t/a Yamayo Stationery

Manufacturer[2000] 1 SLR 119. There, the modern meaning given to 'authorship' is tantamount to

equating it with the act of making the arrangement and paying for the creation of the work. This

definition of authorship confuses the concept of authorship with that of ownership. (This case is also

discussed under the Section on "Copyright' supraabove.) More useful guidelines on authorship may

be found in English cases: see, for example, Cala Homes v Alfred McAlpine Homes East Ltd [1995]

FSR 818, where architectural drawings were drawn by a draughtsman following very detailed

instructions of X, the court decided that X was a joint author even though he did not 'push the

pen'; Ray v Classic FM plc [1998] FSR 622, where it was emphasised that an author was the person

who assumed 'a direct responsibility for what actually appears on the paper'.

Infringement

The monopoly conferred on the registered proprietor of a registered design is an exclusive right to

make or commercially exploit an article in respect of which the design is registered and to which that

design or one not substantially different from it has been applied: see s 7 of the UK Act.

The principles which have been applied by our courts when making the comparison between the

registered design and the design applied to the defendant's article are as follows:

(1) The eye to judge the differences and similarities is the eye of the customer or potential

customer: Risis Pte Ltd v Polar Gems Pte Ltd & Ors [1995] 1 SLR 88: Sebel Furniture Ltd v

Tiong Hin Engineering Pte Ltd [1999] 2 SLR 662.

(2) The court must bear in mind the doctrine of 'imperfect recollection' (except in cases where

the customer is a specialist in the industry): Sebel Furniture Ltd (supra); Essen System Builders

(S) Pte Ltd & Anor v Essential Roofing Systems Pte Ltd & 2 Ors (Suit 63/1995, unreported

judgment dated 31.10.1997).

(3) It is the general impression of the articles as a whole which is important: Risis Pte Ltd

(supra): Sebel Furniture Ltd (supra).

(4) Where the design is a common article, there is no infringement if there exist minor

differences between the two designs: Risis Pte Ltd v Polar Gems Pte Ltd & Ors (supra); Essen

System Builders (supra).

(5) Where there is a 'striking feature' in the registered design, and this feature is absent from the

defendant's design or has been altered such that it is not recognised, it is impossible to say that

one is an imitation of the other: Sebel Furniture Ltd (supra).

In the Hunter Manufacturing case, the approach used by the trial judge was this: where the design is

of limited novelty in that only limited features thereof are new, then equally small differences

between the registered design and the defendant's design would be sufficient to avoid infringement.

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The Court of Appeal doubted that this was the correct approach, preferring the following suggested in

Laddie, Prescott & Vitoria, The Modern Law of Copyright and Designs (2nd Ed, 1995) (para 35.15):

'(1) Assess what are the essential or significant features of the registered design having regard

to such matters as the statement of novelty, relevant prior art and functional exclusions; and

then, (2) Compare the registered design with the alleged infringement to assess whether

visually the latter has incorporated all the design features which, as a result of step (1), are

considered essential parts of the registration.'

The Court of Appeal elaborated that in step (2), the comparison exercise conducted must have

regard to the design as a whole; there will be no infringement, if the alleged infringement is

substantially different from the registered design looked at as a whole. Further, attention should

be focused on those features which have eye appeal, and features of shape or configuration

which are dictated solely by the function and methods or principles of construction are

excluded, as required by s 7(6) of the UK Act.

The Court of Appeal found that the general effect of the two designs was substantially the same,

concluded that there was infringement, and reversed the finding of the trial judge. One reason was that

the 'outstanding' feature in the registered design - the modular design of the electrical meter box - was

present in both the plaintiffs' and the defendants' boxes. To this extent, the test adopted by the Court

of Appeal appears to be a refined version of the 'striking feature' test (see principle No (5) above). The

Court also took into account the fact that the shapes and sizes of the two boxes were the same,

commenting that '[s]ize as a concept is encompassed in the definition of shape and configuration' (at

432). This remark should not be taken out of context; where the two designs differ only in size, that is,

one design is a bigger version of the other, that in itself cannot avoid infringement.

Patents

Considering that we saw only four patent cases between 1995 (when our Patents Act (Cap 221, 1995

Ed), hereafter 'Patents Act 1994', came into force) and 1999, 2000 was a bumper year with a harvest

of three cases, with two from the Court of Appeal. Merck & Co Inc v Pharmaforte Singapore Pte

Ltd [2000] 3 SLR 717and Genelabs Diagnostics Pte Ltd v Institut Pasteur & Anor [2001] 1 SLR

121contain the first pronouncements from our highest appellate court on the fundamentals of patent

law: novelty, inventive step, utility, sufficiency of disclosure, and infringement. The third case of the

year, Flexon (Pte) Ltdv Bean Innovations Pte Ltd & Anor [2001] 1 SLR 24 examines the scope of the

action for 'groundless threats'.

Invention vs discovery

The Patents (Amendment) Act 1995 (Act 40 of 1995) deleted s 13(2) of the main Act. This was the

provision which excluded the patenting of certain matters as such, including discoveries, scientific

theories, and computer programs.

A question may arise as to the implication arising from the deletion of this provision, in particular,

whether it is intended to allow patenting of the previously excluded matters. As far as discoveries are

concerned, they remain unpatentable subject-matter. This declaration came from the Court of Appeal

in Merck & Co Inc v Pharmaforte Singapore Pte Ltd (supra). The patent in suit comprised, inter

alia, a purer form of a known compound, statin. There was a myriad of purification processes which

could be used to purify statin. On the question whether there was an inventive step, the patentee

argued that it was not known at the priority date that statin contained impurities, and therefore it

would not have been obvious to the skilled addressee to use the known processes to purify statin. (For

more details, see 'Inventive Step' infra.) In the view of the Court of Appeal, what the patentee had

achieved was a discovery, and that did not amount to an invention (at 743).

Novelty

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Novelty in an invention requires that it has not been made available to the public as at the priority date:

see s 14 of the Patents Act 1995. Together, Merck and Genelabs Diagnostics Pte Ltd v Institut

Pasteur & Anor[2001] 1 SLR 121 established two fundamental principles governing novelty.

First, there is a rule against 'mosaicing' the prior art in the assessment of novelty: Von Heydon v

Neustadt (1880) 50 LJ Ch 126. Therefore, as a general rule, prior art documents should not be read

collectively but individually, to determine what information each contained. An exception to this rule

appears to be the case where a later document referred to in an earlier document or where a series of

papers, which formed a series of disclosures, referred to each other: Sharpe & Dohme Inc v Boots

Pure Drug Co Ltd (1927) 44 RFC 367. In this regard, the Court of Appeal in Genelabs contributed its

views on the extent to which one is justified to refer to the earlier document (at 130):

'Would one therefore be justified to read the entire earlier document with the later document as

if they were one or does one confine such reading to only that part or those parts of the earlier

document which are referred to in the later document? As a matter of logic, it seems to us that

only that part or those parts of the earlier document which are referred to in the later document

should be so read. To go beyond that would be to read into the later document information

which played no part in the thesis advanced therein. That would be inconsistent with the

general principle that in determining the meaning of a document, regard may be had only to

what is stated in the document itself.'

Second, when determining whether an invention covered by the patent has been anticipated by each

disclosure in the prior art, the question to ask is: does following the teachings in that disclosure

inevitably lead to the invention? If the answer is 'yes', the invention is not novel. The form of this

inquiry hails from General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd & Ors [1972] RFC

457, and Merrell Dow Pharmaceuticals Inc & Ors v HN Norton & Co Ltd [1996] RFC 76. The Court

of Appeal in Genelabs elaborated on this formula (at 129):

'The prior disclosure must not only identify the subject matter of the claim in the later patent, it

must do so in a way that enables the skilled man to make or obtain it, a kind of enabling

disclosure.'

An 'enabling disclosure' is a requirement in patent law that the specification of the patent must

disclose the invention clearly and completely for it to be performed by a person skilled in the art (for

further details on 'enabling disclosure', see 'Sufficiency of Disclosure', infra). If the skilled person

carries out experiments based on the disclosure in the prior art to see if it results in the invention, it is

important that he follows the directions closely; otherwise, even if these experiments were to lead to

the invention covered by the patent, they could not be relied upon to show that the teachings in the

prior art would inevitably have the consequence of producing the invention. This was what happened

in Merck. The results of the experiments conducted by the defendants' expert were discounted because

he had modified the experimental environment.

The 'would-it-inevitably-lead-to-invention' question is the overriding formula for determining novelty.

But various other inquiries may exist within this formula. In Merck, the patent related to a purer form

of statin, a known compound with a known use, namely, as an antihypercholesteremic agent. It was

argued that a purer form of a known compound was per se not novel, and that it was novel only if it

had a further advantage over the known compound. The Court of Appeal, while rejecting both

arguments, indicated that they should be subsumed under the investigations whether the invention had

been anticipated by prior art (that is, within the 'would-it-inevitably-lead-to-invention' inquiry) or

whether it involved an inventive step.

To answer the 'would-prior-art-inevitably-lead-to-invention' question, it is important to identify the

crux of the invention. In Genelabs, the patent in suit covered inter alia HIV-2, a retrovirus capable of

causing AIDS in man. As at the priority date, only one group of retrovirus was known to cause AIDS

in man, ie HIV-1. The challenge to the novelty of HIV-2 was based on 4 prior publications. Three of

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them reported the isolation of a virus (SIV) in monkeys with an AIDS-like syndrome. The fourth was

a study of certain Senegalese people who were infected with a virus that was closely related to SIV

but who showed no signs of AIDS. Subsequent studies showed that SIV was in substance the same

virus as HIV-2. The Court of Appeal identified the crux of the invention as being the discovery that

another virus SIV could infect humans with AIDS. The focus of the inquiry then shifted to the

question: did any of the four prior documents show that SIV had the capacity to infect humans with

AIDS? The answer to this question was 'no', and that led to the conclusion that the prior documents

would not inevitably lead to the discovery of HIV-2.

Inventive step

When determining the issue of inventive step, the approach is that laid down in Windsurfing

International v Tabur Marine (Great Britain) [1985] RFC 59: Merck (at 731): and Genelabs (at 136).

This approach entails four steps:

(1) Identify the inventive concept embodied in the patent in suit.

(2) Assume the mantle of the normally skilled but unimaginative addressee in the art at the

priority date and impute to him what was. at that date, common general knowledge in the art in

question.

(3) Identify what, if any. differences exist between the prior art and the alleged invention.

(4) Ask whether, viewed without knowledge of the alleged invention (ie without hindsight),

those differences constitute steps which would have been obvious to the skilled man or whether

they require any degree of invention.

In Merck, the dispute centred upon the conclusion reached in step (4). The patent in suit comprised a

purer form of a known compound. There was a myriad of standard purification processes known at

the priority date. The trial judge found that, having regard to these known purification processes, the

invention was obvious. In reaching this conclusion, the trial judge applied the 'well-worth trying'

test (ie the invention is obvious if the skilled person would have felt that the invention was well worth

trying, to solve a problem or achieve a beneficial result: John-Manville's Patent [1967] RFC 479) and

the 'lying on the road' test (ie the invention is obvious if the prior art was 'lying on the road' and there

for the research worker to use: Genentech Inc's Patent [1989] RFC 147). The Court of Appeal upheld

this conclusion.

In Genelabs, the dispute centred upon the application of step (2), in particular the knowledge which

the skilled addressee has, having regard to the prior art. The prior art relied on comprised the same

four documents used to attack the novelty of the invention. It was argued that a skilled addressee

would gather from these documents the knowledge that there was another virus SIV which infect

humans with AIDS, and that if the assessment in step (4) had been made with this piece of

information in mind, the skilled addressee would have found the isolation of the SIV/HIV-2 virus

obvious. The premise of this argument was false; the Court of Appeal repeated its earlier finding

made on the issue of novelty, that the prior documents disclosed that SIV infected monkeys but did

not go further to indicate that SIV was pathogenic to humans. It follows that the argument must fail.

The Court of Appeal specifically warned against the use of hindsight or 'ex post facto rationalisation

based on new discovery made after the publication of the four documents' (at 136) in this inquiry.

Utility

Under the UK Patents Act 1949, inutility was an express ground for revocation of a patent: see s

32(l)(g). The scope of this ground was explained in the Report of the Banks Committee to Examine the

Patent System and Patent Law (Cmnd. 4407): that a patent was invalidated if it had a claim which

covered a mechanism or a process which was useless for the purposes indicated by the

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patentee, ie which did not produce the result or one of the results claimed, expressly or impliedly, in

the specification. The Report of the Banks Committee went on to observe that this ground could 'bear

harshly in those cases where a claim of a patent can be interpreted to cover something that lacks

utility as well as things that certainly possess it' (see para 376 of the Report). When the UK Patents

Act 1949 was repealed and replaced by the 1977 Act, inutility was left out of the new Act. There is a

view that inutility is no longer a ground of revocation, and that what used to be covered by inutility is

now dealt with within the current requirement for 'complete and clear disclosure' (see ss 14(3) and

72(1 )(c) of the 1977 Act) and/or that for 'industrial applicability': see Cornish, Intellectual

Property (4lh Ed, 1999) at paras 5-53 and 5-94. (For more discussion of 'utility' in the context of

industrial applicability, see 'Industrial Applicability', infra.)

In Singapore, the Court of Appeal has taken the opposite stand on this matter in Merck. The

discussion on utility arose in the context of novelty. The trial judge concluded that the purer form of

statin, a known compound, was not novel because it lacked utility in the sense that it did not have any

improved performance or therapeutic advantage as compared to the existing statin as an anti-

hypercholesteremic agent. On appeal, it was argued that in view of the absence of s 32(1 )(g) in the

UK Patents Act 1977 (and in our Patents Act 1994), utility was not a prerequisite to acquiring a patent.

The Court of Appeal disagreed, noting that the patent legislation before 1949 did not contain such a

provision as s 32(1 )(g) but that had never precluded the courts from considering the question of

utility in determining patentability. Reference was made to Badische Anilin und Soda Fabrik v

Levinstein [1887] 4 RPC 449 where the Lord Chancellor thought that it was 'obvious' that an

invention must be useful, even though the word was not found in the Patent Act 1883. In other words,

utility was a common law concept. This common law concept was indeed given statutory recognition

in the UK Patents Act 1949 but, as noted above, the Banks Committee had some reservations about it.

The Court of Appeal applied the meaning attributed to 'utility' at common law: 'whether by [the

directions in the complete specification] the effects which the patentee professed to produce could be

produced' (per Lindley LJ inLane Fox v Kensington & Knightsbridge Electric Lighting Co Ltd [1892]

3 Ch 431). In this case, there was nothing to suggest that the patent could not produce the purer form

of statin, and therefore any objection based on inutility must fail.

Industrial applicability

The term 'utility' in English/Singapore patent law relates to the workability of the invention (see above

on 'Utility'). In the US, the requirement of 'utility' set out in 35 USC §101 (1988) has a different

meaning: an invention is 'useful' if it confers to society some "specific benefit in currently available

form' and use in experimental research or some potential future use will not suffice: Brenner v

Mason 383 US 519 (1966). There is a view that this American notion of 'utility' - that the invention

must have a known use at the time of the patent application - also exists in the UK, but within the

requirement of industrial applicability. The authority often cited for this proposition is Chiron

Corporation v Murex Diagnostics Ltd [1996] RPC 535 where the English Court of Appeal held that

the claims in the patent for Hepatitis C virus relating to the polypeptides which did not have any

known use or purpose (as opposed to those polypeptides which would encode the Hepatitis C virus)

were invalid for lack of industrial application.

In Singapore, the definition of 'industrial applicability' is the same as that in the UK: an invention

shall be taken to be capable of industrial application if 'it can be made or used in any kind of industry,

including agriculture' (see s 16(1) of our Patents Act 1994; section 4(1) of the UK Patents Act 1977).

Whether we also have the doctrine of utility as laid down in the Chiron case is unclear. In Merck, this

was not an issue before the Court of Appeal, but it was raised at the trial before Lai Kew Chai J. The

learned judge did not find it necessary to receive or apply the doctrine of utility into the law on

industrial application, having invalidated the claims in the patent for a purer form of statin for lack of

novelty and inventive step. However, he did in the course of his judgment make this remark (at para

46 of Suit 413/1999, unreported judgment dated 22.12.1999):

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'It would be in my view controversial to resurrect the doctrine of utility as bearing upon

whether an invention is capable of industrial application, under the law of Singapore. We

should not have to read beyond the plain words of section 16(1) of the Act ...'

The plain words of s 16(1) refer to the capability of the invention to be made or used in any industry.

The 'doctrine of utility' in patent law acquires particular significance in the patenting of gene

sequences or parts thereof. With the completion of the Human Genome Project this year, there might

be temptation to file applications to patent the gene fragments before unravelling their use or function

(if any). In the US, this would prove to be difficult. In the early 1990s, when the National Institutes of

Health (NIH) filed applications in the US to patent gene fragments with no known function, the US

Patent Office had issued a preliminary rejection of these claims citing the ground, inter alia, that these

claims lacked patentable utility. Further, on 5 January 2001, the US Patent Office, after much

consultation with academic and industry, issued new guidelines which raise the bar posed by this

'utility' criterion.

Sufficiency of disclosure

A patent may be revoked if the specification does not disclose the invention clearly and completely for

it to be performed by a person skilled in the art: s 80(l)(c) of our Patents Act 1994.

Guidelines as to how this 'clear and complete disclosure' can be satisfied are given in Genelabs. The

claim in the patent in suit covered a sequence of amino acids or part thereof which raised a specific

immunological reaction with the antibodies against a HIV-2 retrovirus. The part of this sequence

which raised this specific reaction was the 18mer sequence, but this was not disclosed in the claim.

The appellants argued that such failure of disclosure invalidated the claim under s 80(l)(c). The Court

of Appeal cited with approval the following passage in Mentor Corporation & Anor v Hollister

Inc [1993] RFC 7 (at 10):

'The question for decision in this case is whether the specification discloses the invention

clearly enough and completely enough for it to be performed by a person skilled in the art. This

obviously is a question of degree. Disclosure of an invention does not have to be complete in

very detail, so that anyone, whether skilled or not, can perform it. Since the specification is

addressed to the skilled man, it is sufficient if the addressee can understand the invention as

described, and can then perform it. In performing the invention the skilled man does not have to

be told what is self-evident, or what is part of the common general knowledge, that is to say,

what is known to persons versed in the art ...'

In this case, the appellants' contention of insufficient disclosure was dismissed because their own

expert witness in his testimony agreed that once the sequence of amino acids was disclosed, as it had

been done in the claim, the common general knowledge existing at the priority datewould allow the

skilled addressee to determine that the part of the disclosed sequence which raised the specific

immunological reaction with the antibodies against a HIV-2 retrovirus was the 18mer sequence.

Infringement

Two issues can arise in the determination of infringement. First, whether there is an infringing act

prohibited by s 66 of the Patents Act 1994. Second, whether there is an infringement of the patent

monopoly, a question which involves a construction of the claim of the specification of the patent, as

interpreted by the description and any drawings contained in that specification: see s 113(1) of the

Patents Act 1994.

The ambit of s 66 was considered by the High Court in Genelabs (Suit 1762/1998, unreported

judgment dated 31.3.2000). The second defendants were the exclusive distributors in Malaysia of the

first defendants' infringing test kits. In the trap purchase, the second defendants had acted as a conduit

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between the first defendants and a buyer in Malaysia, transporting the infringing test kits from

Singapore to Malaysia. Section 66(1 )(a) provides that a person infringes a patent for the invention if

he does any of the following acts in Singapore in relation to the invention without the consent of the

proprietor of the patent:

'(a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or

imports the product or keeps whether for disposal or otherwise:

(b) ...'

Tay Yong Kwang JC held that 'disposal' would include sale but the word had a wider meaning in this

section, including disposing of the infringing products qua conduit. Such a role was different from

that of a mere warehouseman or carrier, and hence Kalman v PCL Packaging (UK) Ltd [1982] FSR

406 (which held that British Airways was not liable for warehousing or carrying the goods into the

UK) did not assist the second defendants. The learned judicial commissioner was satisfied that the

second defendants had 'in Singapore, disposed of or offered to dispose of or, at the very least, had

kept the infringing kits for disposal or otherwise within the meaning of s 66(1 )(a) of the Patents Act'

(at para 222). This conclusion was not challenged on appeal.

What is more interesting in the judgment is Tay JC's views on an argument advanced by the second

defendants arising from the application of the principle of territoriality. It is this principle that

explains the need for the infringing act to be committed in Singapore; this is expressly provided for in

s 66(1). Thus, for example, the disposal of the infringing product must take place in Singapore.

Similarly, the offer to dispose of the infringing product must be made in Singapore. On the latter, the

second defendants argued that there was a further restriction: it must be an offer made in Singapore to

dispose of the product in Singapore. This proposition finds support in Kalman v PCL Packaging (UK)

Ltd (above), where Falconer J said (at 417-418):

'In section 60(1 )(a) [of the UK Patents Act 1977, which is identical to the Singapore

provision], ... of the enumerated acts which if performed in the United Kingdom would be

infringing, the one immediately preceding the words 'offers to "dispose of" is the one I have

just considered, "disposes of". To be an infringement, that immediately preceding act "disposes

of" must be an act within the United Kingdom. In my view, the legislature was intending in the

expression "offers to dispose of" to prohibit offering in the United Kingdom to do the

immediately preceding prohibited act, that is, disposing of the product in the United Kingdom.'

The second defendants' argument was that the disposal of the test kits took place in Malaysia, and

hence, their offer to dispose of the goods was not one to dispose of them in Singapore. The premise of

this argument - that the disposal of the test kits took place in Malaysia - is questionable. The fact that

the contract stated that the test kits would be delivered to Malaysia does not mean that the disposal did

not take place in Singapore. If that was the case, a sale concluded in Singapore to sell infringing

products where the products would be exported out of Singapore by the purchaser would not qualify

as a disposal of the goods in Singapore.

Tay JC rejected the second defendants' argument for a different reason. In his view, the restriction

imposed by Falconer J could not be supported by a proper reading of s 66(l)(a), since it required

juxtaposing another 'in Singapore' at the end of each of the verbs therein, and it would make little

sense where some verbs are concerned to say 'in Singapore, he uses or imports the product in

Singapore'. If it is an infringing act so long as the offer to dispose is made in Singapore, acts which

are caught would include an offer made in Singapore to sell infringing products which would be

manufactured in Thailand and sent directly to Indonesia for resale or use there. Such a conclusion

entails a very liberal application of the principle of territoriality.

Construction of patent claims has been considered in the following High Court decisions: V-Pile

Technology (Luxembourg) SA & Ors v Peck Brothers Construction Pte Ltd [2000] 3 SLR 358; Merck

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& Co Inc v Pharmaforte Singapore Pte Ltd (Suit 413/1999, unreported judgment dated

22.12.1999); Flexon (Pte) Ltd v Bean Innovations Pte Ltd & Anor [2001] 1 SLR 24. All these cases

adopted the 'purposive approach' laid down in the leading English authorities, Catnic Components Ltd

v Hill & Smith Ltd [1982] RFC 183, andImprover Corporation v Remington Consumer Pte Ltd [1990]

FSR 181.

The 'purposive approach' has now received the endorsement of the Court of Appeal in Genelabs. This

approach as restated by Hoffman J (as he then was) in Improver (above) is as follows:

'The language should he given a "purposive" and not necessarily a literal construction. If the

issue was whether a feature embodied in an alleged infringement which fell outside the primary,

literal or a contextual meaning of a descriptive word or phrase in the claim ("a variant") was

nevertheless within its language as properly interpreted, the court should ask itself the

following three questions:

(1) Does the variant have a material effect upon the way the invention works? If yes, the variant

is outside the claim. If no -

(2) Would this (ie the variant had no material effect) have been obvious at the date of

publication of the patent to a reader skilled in the art. If no, the variant is outside the claim. If

yes -

(3) Would the readers skilled in the art nevertheless have understood from the language of the

claim that the patentee intended that strict compliance with the primary meaning was an

essential requirement of the invention. If yes. the variant is outside the claim.

On the other hand, a negative answer to the last question would lead to the conclusion that the

patentee was intending the word or phrase to have not a literal but a figurative meaning (the

figure being a form of synecdoche or metonymy) denoting a class of things which included the

variant and the literal meaning, the latter being perhaps the most perfect, best-known or striking

example of the class."

The Court of Appeal emphasised that the question of infringement was a question of fact.

In Genelabs, the alleged infringing test kits contained the same 18mer sequence which raised the

specific immunological reaction detailed in the patent claim, but it also had five extra amino acids

extra (23mer) which were not found in the claim. The trial judge had found that the 23mer was no

more than a sticking and stablising agent for the all-important 18mer on the nitrocellulose strip (see

finding of Tay JC in para 211 of his judgment). In other words, it was an immaterial variant. The

Court of Appeal found no sufficient basis to interfere with the trial judge's conclusion of infringement.

Groundless threats

Section 77 of the Patents Act 1994 gives a right to bring an action for •groundless threats' - that is,

threats of infringement proceedings which are unjustified either because the patent is invalid and/or

the acts in respect of which proceedings were threatened did not constitute an infringement. This

provision is derived from s 70 of the UK Patents Act 1977.

To constitute a threat under s 77, the document (which is said to contain the threat) must be looked

through the eyes of a reasonable and normal recipient for the purpose of determining if there can be a

reasonable argument that it will be understood as a threat of patent proceedings: Flexon (Pie) Ltd v

Bean Innovations Pte Ltd & Anor [2001] 1 SLR 24, following English decisions on s 70 of the UK

Patents Act 1977.

In Flexon, the patentee's lawyers had sent a letter to the manufacturer of a mailbox system which

allegedly infringed the patent in suit, threatening to commence legal proceedings unless the

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manufacturer immediately ceased 'making prototypes of, manufacturing, supplying, delivering,

installing, selling and/or offering to sell the said mailbox system'. It was not disputed that this letter

contained threats, for the purposes of s 77. What was in issue was the correct interpretation of s 77(4)

which provides that: 'Proceedings may not be brought under this section for a threat to bring

proceedings for an infringement alleged to consist of making and importing a product for disposal or

of using a process'.

Clearly, a threat made to the manufacturer or importer of the product or user of the process in respect

of making or importing the product or using the process, falls within this exception. But the patentee

in Flexon wanted the High Court to adopt a wider reading of s 77(4), arguing that this subsection

applies whenever the threat is made to manufacturers and importers of the patented product and users

of the patented process, regardless of the type of infringing act complained of. The High Court held

that this was not the natural meaning of the subsection, preferring to follow some English

cases (Cavity Trays Limited v RMC Panel Products Limited[1996] RFC 361, Brain v Ingledew Brown

Bennison [1997] FSR 511) which held that threats relating to promotion, marketing and sale were

actionable, even if made to the primary infringers.

Transitional provisions

The Patents Act 1994 came into force on 23 February 1995. Prior to that, patent protection was

acquired in Singapore by re-registering patents registered in the UK: see Registration of United

Kingdom Patents Act (Cap 271, 1985 Ed). The position of those UK patents which had been re-

registered in Singapore immediately before 23 February 1995 is dealt with in s 116(3): they are

treated as if they were patents granted under the Patents Act, subject to any modification as may be

prescribed. An express modification is made in s 116(3) itself: the term of protection of such 'old'

patents shall date from the date of the patent in the UK and they remain in force only so long as they

have not been revoked in the UK.

However, whether a particular provision in the Patents Act 1994 applies to an 'old' patent is ultimately

a question of statutory interpretation: Genelabs. The patent in suit was re-registered in Singapore in

1993, therefore coming within the purview of s 116(3). One of the plaintiffs was suing in its capacity

as exclusive licensee (see s 74). The exclusive licence agreement was signed in 1986, but was

registered in Singapore only in 1999, shortly before the commencement of the trial of the action. An

issue arose as to the effect of this late registration. Under the old law, the exclusive licensee would not

have been prejudiced by such late registration; there was only a penalty for non-registration, namely,

inadmissibility of the document in court as evidence of title as licensee: see s 11(2) of the Registration

of United Kingdom Patents Act. Under the Patents Act 1994, s 75 requires the licence agreement to be

registered within 6 months of the date of the document (or where it is 'not practical' to do so within

this period, to register it 'as soon as practicable thereafter'), failing which no award of damages or

order for an account of profits in respect of any infringement occurring before the registration of the

transaction will be made. It was very clear in the mind of the Court of Appeal that s 75 did not apply

in this case, since it was impossible for the exclusive licensee to comply with s 75, the 6-month period

having expired before s 75 came into force on 23 February 1995. Acknowledging that the situation

was less clear in cases where the 6-month period had not expired on the operative date, the Court of

Appeal resolved the matter by going 'back to basics', and applying the established rule of construction

that 'the legislature must not be deemed to have intended to affect existing rights unless by express

provision' (at 145). In this case, s 116(3) did not qualify as such express provision. The Court of

Appeal concluded that s 75 had no retrospective effect on transactions which occurred before its

operative date.