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  • Ch.12 Intellectual Property Law
    the publication or use of which would be contrary to public order or morality b Examples of registrable designs 12 2 7 Examples of registrable designs include the shape and configuration of an electrical meter box Hunter Manufacturing Pte Ltd v Soundtex Switchgear Engineering Pte Ltd 1999 3 SLR R 1108 the shape of a chair Sebel Furniture Ltd v Tiong Hin Engineering Pte Ltd 1999 3 SLR R 690 the shape of an orchid applied to ornamental pieces for use as brooches and pendants Risis Pte Ltd v Polar Gems Pte Ltd 1994 2 SLR R 1091 c Example of unregistrable design 12 2 8 An example of an unregistrable design is the shape and configuration of an electrical isolator where the features depended entirely on industry standards Nagasima Electronic Engineering Pte Ltd v APH Trading Pte Ltd 2005 2 SLR R 641 3 Definition of new a Design is new if it is not substantially same as any other design registered or published in Singapore or elsewhere 12 2 9 A design is new if it is not the same or substantially the same as any other design that has been registered or published in Singapore or elsewhere Publication includes sale or use of any article which embodies the design b Novelty of design assessed as at date of application for registration 12 2 10 The novelty of a design is assessed as at the date of the application for registration Where the applicant has claimed a right of priority see Section 12 2 3 above the date of his application shall be the date of his application in the foreign country c Certain prior disclosures disregarded when assessing novelty of design 12 2 11 Certain prior disclosures are disregarded when assessing the novelty of a design These are essentially disclosures which cannot be said to have thrown the design into the public domain For example a disclosure of a design made during business negotiations such as to import an obligation of confidence on the parties involved would not destroy the novelty of the design Hunter Manufacturing Pte Ltd v Soundtex Switchgear Engineering Pte Ltd 1999 3 SLR R 110 D Ownership and dealings of design 1 Owner of design usually person who created it 12 2 12 The owner of a design is usually the person who created the design and he is the one entitled to apply for registration of the design There are two notable exceptions to this general rule Design created in pursuance of a commission unless there is an agreement to the contrary the commissioning party shall be treated as the owner Design created by an employee in the course of employment unless there is an agreement to the contrary the employer shall be treated as the owner 2 Registered designed is personal property and may be assigned as such 12 2 13 A registered design or any right in it is personal property and may be assigned as such absolutely or by way of security Licences may also be granted for the use of the registered design Such dealings should be registered with the Registry of Designs failure to do so means that the assignment or licence is ineffective as against a person acquiring a conflicting interest in the registered design in ignorance of it E Maximum duration of rights conferred is 15 years 12 2 14 The maximum duration of the exclusive rights conferred by registration is 15 years F Exclusive rights and infringement 1 Registered owner has exclusive rights to make or import articles which embody the registered design 12 2 15 The registered owner has the exclusive rights to make or import for the purposes of trade eg sale hire articles in respect of which his design is registered which embody the registered design or one that is substantially the same 2 Infringement occurs when person does exclusive rights without authorisation or certain preparatory acts 12 2 16 Infringement occurs not only when a person does any of the above exclusive rights without authorisation there can also be infringement in respect of certain preparatory acts for example making something that enables the infringing article to be made 3 Protection conferred by registration limited to allow for certain acts 12 2 17 The monopoly conferred by registration is limited to allow for certain acts such as Acts done for a private non commercial purpose Acts done for the purpose of evaluation analysis research or teaching Acts done in relation to genuine articles that is those marketed in and outside of Singapore by the registered owner or with his consent conditional or otherwise G Remedies for infringement 12 2 18 The range of remedies which the Court can order in infringement proceedings includes an injunction either damages or an account of profits an order for delivery up and or disposal of infringing articles in relation to the registered design However if the registered owner does not succeed in his claim of infringement he may find himself liable for a claim for making groundless threats of design infringement The remedies in such a claim can include an injunction against the continuance of the threats damages as well as a declaration that the threats are unjustifiable F Protection available under the RDA only when there is overlap with copyright protection 12 2 19 It is very possible that designs which qualify for protection under the RDA are also original artistic works in which copyright subsists see Section 12 1 2 above 12 2 20 Where there is such an overlap there is no cumulative protection under registered design and copyright law protection is available under the RDA only Also if a design is registrable under the RDA but has not been registered the design falls to be covered by neither the registered design nor the copyright regime Therefore if the artistic work is a registrable design and the intention is to industrially apply it steps should be taken to register it under the RDA otherwise there would be no protection for the design at all Return to the top SECTION 3 PATENTS A Source of law 12 3 1 Inventions are protected in Singapore under the Patents Act Cap 221 2005 Rev Ed the PA It is based on the UK Patents Act 1977 but there are some important differences B Formalities of registration 1 Registration may be obtained through domestic or international application 12 3 2 Registration may be obtained in two ways through i a domestic application filed with the Registry of Patents within the Intellectual Property Office of Singapore IPOS or ii an international application filed in accordance with the Patent Cooperation Treaty with the Registry acting as the Receiving Office for the application 2 Person who has earlier filed application in Paris Convention WTO country may claim right of priority 12 3 3 A person who has earlier filed an application for registration in a Paris Convention WTO country may if he files for registration in Singapore within 12 months from the date of such application claim a right of priority For the significance of a claim of right of priority see Section 12 3 6 below It is important to note that it is an offence for a Singapore resident without the Registrar s written consent to file or cause to be filed a patent application outside Singapore without first filing an application for the same invention in Singapore at least two months before the application outside Singapore is made C Subject matter of protection 1 Patent may be granted for invention which is product or process 12 3 4 A patent may be granted for an invention which is a product or a process The invention must satisfy the following conditions it is new it involves an inventive step it is capable of industrial application and the publication or exploitation of the invention would not generally be expected to encourage offensive immoral or anti social behaviour Behaviour is not to be regarded as offensive immoral or anti social merely because it is prohibited by any law in force in Singapore 2 Invention is new if it does not form part of state of art 12 3 5 An invention is new if it does not form part of the state of the art The state of the art refers to all matters whether a product a process information about either or anything else which have 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 A matter contained in a prior patent application is also included There is no need for the matter to be widely available to the public in order to form part of the state of the art Windsurfing International Inc v Tabur Marine GB Ltd 1985 RPC 59 If a known product is disclosed in a form which makes it suitable for a stated use it is no longer new notwithstanding that it has never been described for that use Martek Biosciences Corp v Cargill International Trading Pte Ltd 2012 2 SLR 482 A useful guide to determining whether an invention is new is the reverse infringement test Under this test an invention is no longer new if a prior art publication contains clear and unmistakeable instructions or descriptions which if followed would allow a person skilled in the art to obtain a product or process which would infringe the patent assuming that the patent is valid Mühlbauer AG v Manufacturing Integration Technology Ltd 2010 2 SLR 724 Dien Ghin Electronic S Pte Ltd v Khek Tai Ting 2011 3 SLR 227 It is a general rule that mosaicing of prior art i e combining selected features in different prior art publications is not allowed when assessing whether an invention is new FE Global Electronics Pte Ltd v Trek Technology Singapore Pte Ltd 2006 1 SLR R 874 and Mühlbauer AG v Manufacturing Integration Technology Ltd 2010 2 SLR 724 12 3 6 Whether an invention is new is to be assessed as at the date of the application for registration If the applicant claims a right of priority see Section 12 3 3 above the date of his application shall be the date of his application in the foreign country 3 Invention involves inventive step if it is not obvious to person skilled in art 12 3 7 An invention involves an inventive step if it is not obvious to a person skilled in the art Such a notional person is not to be endowed with inventive capacity but is deemed to have practical knowledge and experience of the kind of work in which the invention is intended to be used Ng Kok Cheng v Chua Say Tiong 2001 2 SLR R 326 referred to by the Court of Appeal in First Currency Choice Pte Ltd v Main Line Corporate Holdings Ltd 2008 1 SLR R 335 He may be a team of highly qualified researchers whose combined skills would normally be employed in the relevant art Optical Coating Laboratory v Pilkington 1995 RPC 145 at 156 12 3 8 To determine whether an invention is obvious the court would first identify the inventive concept embodied in the patent then assume the mantle of the normally skilled but unimaginative person in the art at the priority date of the patent and impute to him what was at that date common general knowledge in the art identify what if any differences exist between that knowledge and the patented invention and finally consider whether without knowledge of the invention those differences constitute steps which would have been obvious to the person skilled in the art or whether they require any degree of invention Windsurfing International Inc v Tabur Marine GB Ltd at 73 74 applied in Merck Co Inc v Pharmaforte Singapore Pte Ltd 2000 2 SLR R 708 and by the Court of Appeal in First Currency Choice Pte Ltd v Main Line Corporate Holdings Ltd 2008 1 SLR R 335 and and Mühlbauer AG v Manufacturing Integration Technology Ltd 2010 2 SLR 724 see also Pozzoli SPA v 1 BDMO SA et al 2007 EWCA Civ 588 where the Windsurfing test is reformulated in the context of obviousness The fact that an invention is simple does not mean that it is obvious Peng Lian Trading Co v Contour Optik Inc 2003 2 SLR R 560 followed in the First Currency case Commercial success is a factor which can be taken into account in determining obviousness though it is not conclusive Ng Kok Cheng v Chua Say Tiong 2001 2 SLR R 326 and and in and Mühlbauer AG v Manufacturing Integration Technology Ltd 2010 2 SLR 724 12 3 9 When assessing whether an invention involves an inventive step mosaicing of prior art is generally allowed unless it would not have been obvious to a person skilled in the art to mosaic the different pieces of prior art Martek Biosciences Corp v Cargill International Trading Pte Ltd 2012 2 SLR 482 4 Invention taken to be capable of industrial application if it can be made or used in any kind of industry 12 3 10 An invention is to be taken to be capable of industrial application if it can be made or used in any kind of industry including agriculture However a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body will not be considered capable of industrial application although this does not prevent the patenting of drugs to be used in any such treatment or diagnosis D Ownership and dealings of patent 1 Patent normally granted to actual devisor of invention 12 3 11 The patent for an invention is normally granted to the actual deviser inventor of the invention unless by virtue of any statute rule of law treaty international convention or enforceable term of any agreement entered into with the inventor before the making of the invention it is to be granted to any other person or a successor in title 2 Patent or application for patent is personal property 12 3 12 A patent or an application for patent is personal property As such it and any rights in or under it may be assigned mortgaged licensed or vested by operation of law in the same way as any other personal property The assignment mortgage application for a patent or any right in a patent or application as well as any assent relating to any patent application or right shall be void unless it is in writing and signed by or on behalf of the parties to the transaction 3 Any person who claims to have acquired property in patent should register transaction 12 3 13 Any person who claims to have acquired the property in a patent or an application for a patent by virtue of any transaction instrument or event collectively transaction should register the transaction with the Registrar of Patents failing which his rights are restricted as against an infringer and person acquiring a conflicting interest in the invention in ignorance of the transaction 4 Exclusive licensee of patent has right to bring proceedings for infringement 12 3 14 An exclusive licensee of a patent has the same right as the proprietor of the patent to bring proceedings for infringement of the patent E Duration of patent 12 3 15 The maximum period of duration of the exclusive rights conferred by registration of a patent is 20 years from the filing date To enjoy this full term the patent must be renewed before the expiry of the 4th year and every year thereafter F Exclusive rights and infringement 1 Registered owner has exclusive right to prevent any person from doing certain things 12 3 16 The registered owner has the exclusive right to prevent any person from doing any of the following things in Singapore in relation to a patented invention if the invention is a product making disposing of offering to dispose of using or importing the product or keeping the product whether for disposal or otherwise if the invention is a process using the process or offering it for use in Singapore when the person knows or it is obvious to a reasonable person in the circumstances that its use without the owner s consent would be an infringement of the patent and if the invention is a process disposing of offering to dispose of using or importing any product obtained directly by means of the process or keeping the product whether for disposal or otherwise 2 Whether rights have been infringed depends on comparison of alleged infringing product with patent claims 12 3 17 Whether these rights have been infringed depends on a comparison of the alleged infringing product or process with the patent claims The claims are to be construed purposively Catnic Components Ltd v Hill Smith Ltd 1982 RPC 183 and the following comparative approach has been endorsed by our Court of Appeal in Genelabs Diagnostics Pte Ltd v Institut Pasteur anor 2000 3 SLR R 530 see also the affirmation of the Catnic case as the bedrock of patent construction in House of Lords in Kirin Amgen Inc v Hoechst Marion Roussel Ltd 2004 UKHL 46 at 51 52 also referred in First Currency Choice Pte Ltd v Main Line Corporate Holdings Ltd 2008 1 SLR R 335 and Mühlbauer AG v Manufacturing Integration Technology Ltd 2010 2 SLR 724 Does the variant have a material effect on the way the invention works If yes the variant is outside the claim If no Would this that is the variant having 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 Would the reader 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 12 3 18 The abovementioned approach would give the patentee the full extent but no more than the full extent of the monopoly which a reasonable person skilled in the art reading the claims in context would think that the patentee was intending to claim and Mühlbauer AG v Manufacturing Integration Technology Ltd 2010 2 SLR 724 3 Permitted acts which do not constitute infringement of patent acts done privately and for non commercial purposes acts done for experimental purposes relating to the subject matter of the invention and acts which consist of the extemporaneous preparation of a medicine for a person in accordance with a medical or dental prescription or consist of dealing with such medicine G Remedies for infringement 12 3 20 The remedies which the Court can order in infringement proceedings include an injunction either damages or an account of profits an order for delivery up and or disposal of infringing articles in relation to the registered patent and a declaration that the patent is valid and has been infringed H Groundless Threats 12 3 21 Where a person threatens another person with proceedings for any infringement of a patent the aggrieved person may also counterclaim for groundless threats of infringement proceedings To succeed the plaintiff in the groundless threats proceeding must prove that the threats were so made and satisfy the court that he is the person aggrieved by them He will be entitled to relief unless the defendant is able to justify the threat by showing that the acts in respect of which infringement proceedings were threatened constitute or would constitute an infringement of its patent and the patent must not be invalid in the relevant respect ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd 2010 1 SLR 1 Return to the top SECTION 4 CONFIDENTIAL INFORMATION TRADE SECRETS A Nature of law on confidential information 12 4 1 The law on confidential information is concerned with preventing a person from divulging information which has been given to him in confidence and on the express or implicit understanding that the information should not be disclosed to others or otherwise used by him It is given statutory recognition in Singapore in section 6 of the Copyright Act which states Nothing in this Act shall affect the operation of the law relating to breaches of trust or confidence The law on confidential information provides a useful adjunct to the other intellectual property rights For instance whilst copyright protects the expression of the idea only as mentioned in Section 12 1 2 above the law on confidential information is wider and can protect the idea itself Additionally the law can be useful for certain types of trade secrets for which the other rights may not be appropriate such as the recipe for the Coca Cola drink or a secret business plan B Elements of the law on confidence 12 4 2 To be protectable the information must have the necessary quality of confidence about it the information must have been imparted in circumstances importing an obligation of confidence and there must be an unauthorised use of the information to the detriment of the party communicating it Coco v Clark Engineers Ltd 1969 RPC 41 followed by the Court of Appeal in Obegi Melissa and Others v Vestwin Trading Pte Ltd and Another 2008 2 SLR R 540 1 Necessary quality of confidence a Information must not already be available to public at large 12 4 3 To have the necessary quality of confidence the information must not already be available to the public at large It does not have to be new inventive or special as any ordinary or mundane information can be the subject matter of confidence provided it is private to the person who discloses the information even though others could gather similar information if they took the trouble to do so The information can relate to technical commercial and personal matters e g price lists customer lists and financial statements The information can be confidential as a whole even though its component parts are in the public domain however the information has to be sufficiently well developed such that it can be defined with sufficient objective certainty Invenpro M Sdn Bhd v JCS Automation Pte Ltd 2014 2 SLR 1045 Mere gossip or information relating to scandalous or immoral material is not protectable b Factors affecting confidentiality of information 12 4 4 In general the information is likely to be considered to be confidential and therefore protectable if release of the information would injure the owner of the information or benefit others the owner believes the information to be secret and not already in the public domain the owner s belief in respect of a and b above is reasonable and the information must be judged in the light of usages and practices of the particular trade or industry concerned Thomas Marshall Exports Ltd v Guinle 1979 Ch 227 c Information must be clearly and specifically identified in action for breach of confidence 12 4 5 In an action for breach of confidence the owner must clearly and specifically identify the confidential information that is alleged to have been wrongly disclosed or used by the defendant Chiarapurk Jack v Haw Par Brothers International Ltd 1993 2 SLR R 620 2 Obligation of confidence a Obligation of confidence can arise by contract or by implication of law 12 4 6 The obligation can arise by contract or be implied in equity by applying principles of good faith and conscience such as where there is a duty of good faith as in the relationship between a lawyer and his client a banker and his customer and an employer and his employee Another situation in which such an implication would arise is where a person discusses his information e g business plan with a potential business partner with a view to commercially exploiting the information A person who is given confidential information will not be bound by the obligation if he is unaware and has no reason to be aware of the confidential nature of the information If the parties deal directly an objective test is the preferred basis for determining whether good faith and conscience supports the imposition of a duty of confidence Invenpro M Sdn Bhd v JCS Automation Pte Ltd 2014 2 SLR 1045 12 4 7 In addition an equitable obligation of confidentiality may be imposed on a third party recipient who has knowledge of the breach of confidence by the direct recipient Such knowledge is usually sufficient to give rise to actual or constructive knowledge notice of the breach Invenpro M Sdn Bhd v JCS Automation Pte Ltd 2014 2 SLR 1045 b Ex employee not bound by duty of good faith 12 4 8 An ex employee is not bound by the duty of good faith He is permitted to make use of his memory of the information that he has acquired during employment except trade secrets and information covered by the express term of his employment contract Whether the information is to be regarded as a trade secret depends on such factors as the nature of the employment the nature of the information how the information was handled in the company e g whether the employer stressed the confidential nature of the information and whether the information could easily be isolated from the other information that the employee could use ul Faccenda Chicken Ltd v Fowler 1987 Ch 117 applied in Tang Siew Choy v Certact Pte Ltd 1993 1 SLR R 835 Asia Business Forum Pte Ltd v Long Ai Sin 2003 4 SLR R 658 and the Court of Appeal in Man Financial S Pte Ltd v Wong Bark Chuan David 2008 1 SLR R 663 and Clearlab SG Pte Ltd v Ting Chong Chai 2014 SGHC 221 3 Unauthorised use of information a Objective test of conscionability as to whether there is obligation not to disclose or use confidential information 12 4 9 A person who has acquired confidential information under confidential circumstances is under an obligation not to disclose or use the information Whether there is such an obligation on him depends on whether it is conscionable for a recipient of confidential information to disclose or use the information in the circumstances in question Douglas v Hello Ltd 2001 QB 967 at 65 The test is objective He is liable even if he does not appreciate the confidentiality of the information National Broach v Churchill Gear 1967 1 WLR 384 has no intention to take advantage of the information Interfirm Comparisons v Law Society of New South Wales 1977 RPC 137 or uses the information subconsciously Seager v Copydex 1967 1 WLR 923 b Third party to whom confidential information has been wrongfully disclosed would not be liable if he is bona fide purchaser 12 4 10 A third party to whom confidential information has been wrongfully disclosed would not be liable for disclosing or using the information if he is a bona fide purchaser for value without notice of the confidentiality of the information see Stevenson Jordan and Harrison Ltd v Macdonald and Evans Ltd 1951 69 RPC 10 But once he knows that the information was originally given in confidence he can be restrained from disclosing or using the information Wheatley v Bell 1984 FSR 16 c Unauthorised disclosure is allowed if it is in public interest 12 4 11 Unauthorised disclosure is allowed if it is in the public interest or there is a just cause or excuse e g to prevent cover up of a wrongdoing Lion Laboratories Ltd v Evans 1985 QB 526 C Remedies for breach of confidence 12 4 12 Where the requirements are established the owner of the confidential information can apply to the Court for an injunction either damages or an account of profits and an order for delivery up and or disposal of materials containing the confidential information Return to the top SECTION 5 TRADE MARKS PROTECTION UNDER TRADE MARKS ACT A Source of law 12 5 1 Singapore has a dual system of trade mark law protection for trade marks may be available both under the Trade Marks Act Cap 332 2005 Rev Ed the TMA and at common law see Section 6 below These two systems are independent of each other B Formalities of registration 1 Protection under TMA conditional upon registration of trade mark 12 5 2 Protection under the TMA is conditional upon registration of the trade mark with the Registry of Trade Marks within IPOS There is one exception in this regard special protection is granted under the TMA to well known trade marks regardless of whether they are registered see further Sections 12 5 30 12 5 32 below 2 Registration may be obtained through domestic or international application 12 5 3 Registration may be obtained in two ways through i a domestic application filed with the Registry of Trade Marks or ii an international application filed under the Madrid Protocol designating Singapore as a country where protection is sought 3 Person who has earlier filed application in Paris Convention WTO country may claim right of priority 12 5 4 A person who has earlier filed an application for registration in a Paris Convention WTO country may if he files for registration in Singapore within 6 months from the date of such application claim a right of priority For the significance of a claim of right of priority see Section 12 5 13 below 4 Application to specify the goods and services for which trade mark is to be registered 12 5 5 Singapore follows the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks C Subject matter of protection 12 5 6 There are three key criteria for registration the subject matter must be i a trade mark which ii is distinctive and iii does not conflict with an earlier trade mark 1 Trade mark a Trade mark is any sign capable of being graphically represented to distinguish goods or services 12 5 7 A trade mark is any sign capable of being graphically represented that is used or proposed to be used by a trader to distinguish his goods or services from those of other traders Classic examples include brand names devices or logos and colours Where the sign consists of a three dimensional shape it must not consist exclusively of the shape which results from the nature of the goods themselves the shape of goods which is necessary to obtain a technical result or the shape which gives substantial value to the goods 12 5 8 Non visually perceptible signs eg sound marks such as the Intel chime can also qualify as trade marks provided that they are graphically represented b Sufficient for trade mark registration if trader has bona fide intention to use sign 12 5 9 As indicated in Section 12 5 7 above to qualify as a trade mark the sign need not have been used in the course of trade as at the date of filing the application for registration It is sufficient if the trader proposes to use the sign or to use the language of the TMA has a bona fide intention to use it see further Section 12 5 18 below In such a case the trader must ensure that within 5 years following the date of completion of the registration procedure the trade mark is put to genuine use otherwise the registration may be revoked 2 Distinctive a Meaning of distinctiveness 12 5 10 A trader s trade mark is distinctive of his goods or services if in particular it is not descriptive of those goods or services It is a question of degree in every case whether the sign is so descriptive of the goods or services in question that it will be refused registration There are some signs which are so descriptive that they are incapable of distinguishing the trader s goods or services for example soap for soap Such a sign cannot qualify as a trade mark regardless of the amount of use made of it by the trader 12 5 11 A sign which is less descriptive of the trader s goods or services may nevertheless be devoid of distinctive character if it cannot do the job of distinguishing without the trader first educating the public that it is a trade mark Trade marks falling within this category include the word LOVE in relation to jewellery Love Co Pte Ltd v The Carat Club Pte Ltd 2009 1 SLR R 561 and laudatory terms like ROYAL to convey pre eminence or superior quality of the goods or services Sime Darby Edible Products Ltd v Ngo Chew Hong Edible Oil Pte Ltd 2000 2 SLR R 604 A trader who adopts such an inherently descriptive trade mark may however use it to such an extent that it becomes in fact distinctive of his goods or services in such a case the requirement for distinctiveness would be satisfied To prove that the trade mark has acquired distinctiveness through use it is usual to tender evidence of sale volume advertisements etc 12 5 12 The following is an example of a trade mark which while not totally meaningless when used in relation to the goods or services in question is not so descriptive as to be devoid of distinctive character LADY ROSE in relation to perfumes Hai Tong Co Pte Ltd v Ventree Singapore Pte Ltd 2013 SLR 941 3 No conflict with earlier trade marks a Trade mark which conflicts with earlier trade mark would be refused registration 12 5 13 A distinctive trade mark would nevertheless be refused registration if it conflicts with an earlier trade mark that is an earlier registered trade mark or a trade mark whether registered or not which is well known in Singapore In determining whether which mark is earlier in time account will be taken of any priority claimed in respect of the trade marks see Section 12 5 4 above 12 5 14 There is a conflict generally speaking when the two marks are identical or similar and their co existence in the market would be likely to confuse the public There are two situations where it is not necessary to prove such confusion b Situations where it is not necessary to prove that co existence would be likely to confuse public 12 5 15 The first situation is where the marks are identical and the goods services in question are identical The likelihood of confusion is presumed 12 5 16 The second situation is where the earlier trade mark is well known to the public at large in Singapore This special category of well known trade marks is protected against any registration in relation to identical similar dissimilar goods or services which would cause dilution in an unfair manner or take unfair advantage of the distinctive character of the mark This is the Singapore model of the anti dilution right It is modelled after the WIPO Joint Recommendations Concerning the Provisions on the Protection of Well known Marks 4 Other obstacles to registration 12 5 17 Finally there are other obstacles to registration For example a trade mark shall not be registered if it is contrary to public policy or morality or the application is not made in good faith Examples of lack of good faith would be the case where the applicant has no bona fide intention to use the trade mark at all but wishes to prevent a competitor from using the mark or one that is similar to it Weir Warman Ltd v Research

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  • Chua Puay Kiang v Singapore Telecommunications Limited and Others[2000] 3 SLR 640; [1999] SGHC 1
    considered to supplement or to replace voice recognition This alternative uses the pseudo alphabets sic as sometimes engraved on the DTMF pad in combination with and symbols as follows 1 A 01 B The physical layout on the pad inscription should make it easy for user so that no memorising is necessary 1 C 2 D and so on PS the alphabets sic layout of DTMF pad should be made easily available in addition to inscription on phones The procedural sequence is attached For your consideration please Perhaps Mrs Law could include this in the minutes as an after note signed LIM TOON RT DIAGRAM 44 A number of discussions followed and at the end the group came up with a report on 18 June 1984 entitled Automatic Directory Information Service In that report the group adopted 1 2 and 3 the top three keys on a telephone key base as base keys for inputting letters of the alphabet Mr Ma claimed that that study group did not adopt the suggestion of Mr Lim Toon because Mr Ma was heavily influenced by James Martin s book Future Development in Telecommunication In this book the author had suggested designating a key together with the keys 1 2 and 3 as base keys from a telephone keypad to represent each letter of the alphabet This was Alpha Digit Alpha Digit ADAD This method required the caller first to press the key where the letter of the alphabet was located It was only after that step that the corresponding key was pressed Thus to get letter A one would press key 2 followed by key 1 and so on The figure 2 would signify one of the letters A B or C 1 would mean that the letter on the left was desired ie A In short this was the opposite of the Digit Alphabet Digit Alphabet DADA mentioned above 45 The template suggested in the group s ADIS report was taken from James Martin s book which is as follows Diagram 46 Mr Ma added that after 18 June 1984 members of the study group started to write technical specifications for the ADIS By October 1986 the technical specifications had been completed and were discussed by another group headed by Mr Lim Toon According to Mr Ma he was present at the demonstration on 27 February 1988 where the plaintiff showed how to send alpha numeric messages to an RMS pager The plaintiff did not bring his computer nor any computer program for the demonstration The demonstration involved keying in the message on the telephone keys which was received on a pager 47 Insofar as is material the evidence of Mr Ang Dian Seng a software engineer attached to the Software Development and Maintenance Department of Singapore Telecom Mobile Link Pte Ltd a subsidiary of the first defendants one of the persons involved in the design of the first defendants API method was as follows 48 He was present at the demonstration on 27 February 1988 when the plaintiff made a brief presentation as to how to send alpha numeric messages using the DTMF telephone The plaintiff did not at that demonstration show the source code or object code of his computer program to anyone At the demonstration the plaintiff borrowed a pager from one of the TAS staff present and used the telephone in the demonstration room He picked up the telephone receiver dialled a number and inputted a message The message then appeared on the pager The TAS officers present immediately noted a major drawback they could not get the calling line identification CLI CLI was necessary for the TAS to bill the caller as well as to trace nuisance calls This limitation put paid to the plaintiff s system and therefore was found unsuitable for application by the staff present at the demonstration This was made known to the plaintiff who indicated that he would make a further study of the above shortcoming 49 Another shortcoming discovered by the TAS staff subsequent to the demonstration was that the plaintiff s system used a personal computer to receive messages from the caller The computer would then perform a store and forward function in relaying the messages to the alpha numeric pager and by this method the paging caller would never know whether he had called a valid or invalid pager number 50 Owing to certain feedback from the Radio Services Marketing Department Mr Ang subsequently discussed the matter with Mr Hair Eng Sung and started looking up files dating from 1984 and examined the research and design previously done internally on the same or similar projects Such projects included the ANPS and the Automatic Directory Information Service ADIS In this connection Mr Ang said that he studied the following input coding methods a The 1 2 3 base keys coding method as stated in James Martin s book Future Development in Telecommunications 2nd Ed Prentice Hall Inc 1977 3BA 185 to 188 b The 0 base keys coding method suggested by Mr Lim Toon in his memo RT T6 01 dated 5 March 1984 3BA 702 c The 1 2 3 base keys input method proposed by Mr Ma Chi Sing in his study paper dated 18 June 1984 on ADIS for the 103 service 3BA 705 and d The PADIT Pseudo Alphabet DTMF Input Terminal requirements and the coding method as described in Tender document PT 133 84 Y 3BA 828 to 831 51 Mr Ang added that although he had seen the plaintiff s coding method he did not however rely on it in the course of developing the Alpha Numeric Push button Input API base key method 52 The basic design considerations for API set by Mr Hair Eng Sung and himself Mr Ang before he started his design were a to develop a convenient message input method for the callers b the calling procedure should be consistent with the existing calling procedure and c the API feature should easily be incorporated into the hardware and the software structure of the RMS 53 After Mr Ang had studied the various input methods he discussed them with Mr Hair Eng Sung and they came to the conclusion that two choices of base keys were possible 1 2 3 and 0 1 2 3 were the uppermost keys on the push button telephone while 0 were the lowermost keys on the push button telephone They had by then decided to limit each letter to 2 keys as it would reduce the time required for making such paging calls Based on these two choices of base keys he did some design studies and finally adopted the coding method using the lowermost keys of the telephone 0 as base keys 54 Once Mr Ang had decided on the base key the next step involved the computer program He did this in about March 1988 By this time he had already studied the DTMF program well when he was testing the ANPS supplied by FOLEC one of the tenderers to TAS earlier He then modified the DTMF program which was part of the telephone interface program in the ANPS to include the coding table for supporting the API feature During the tests he made a number of modifications to the program One was to allow callers using payphones and coinafons to input a message length of up to 25 characters instead of 10 characters without additional charge This was to enable such callers to be able to input a meaningful API message 55 During this time in conjunction with the modifications to the computer program made by him Mr Hair Eng Sung was involved in the drawing of the API Coding Table Three sets of tables and drawings of a telephone template with the letters of alphabet were ultimately produced at different times The last table became the final version of the API coding table 56 On 18 April 1988 Mr Hair Eng Sung and he Mr Ang came with a paper on the RMS entitled Pseudo Alpha Numeric Push Button Input PAPI It was Mr Hair who was primarily responsible for preparing the paper Mr Ang only contributed to the design aspect and the user s calling procedure in relation to it 57 The final alphabet layout on the telephone keypad adopted was the same as that of Mr Ma Chi Sing s recommendation in his study paper of 18 June 1984 This was because it was closer to most telephone sets available in the market that had letters inscribed on the telephone keypad Mr Hair and Mr Ang also added some additional symbols such as etc for the convenience of the callers since Mr Ang believed that these were the more commonly used symbols 58 On 15 October 1988 this service was offered to the public on a trial basis for one year Subsequently it was offered to the public without additional subscription fee Mr Ang added that the plaintiff at no time showed nor explained to the TAS officers how the message was sent to the ANPS through his computer program 59 Mr Ang pointed out the following differences between the API of TAS and the program of the plaintiff a TAS API allowed the paging caller to call the pager number directly while the plaintiff s program required a two step dialling b TAS s API had no voice response while the plaintiff s program had the voice response c The letters of the alphabet were positioned differently in TAS API and the plaintiff s program d TAS API is available on the RMS exchange while the plaintiff s program was only available on a stand alone PC e TAS API had CLI while the plaintiff s program did not have that feature and f TAS API could assure the paging caller that the pager number which he had called was valid or not invalid or disconnected once communication between the parties were established while the plaintiff s program could not provide such assurance because it performed a store and forward function in relaying the message to the pager 60 Mr Ang denied that he had copied the plaintiff s computer program or infringed any alleged copyright in the plaintiff s computer program in any way when he made the necessary modifications to the computer program supplied by FOLEC and Motorola Inc to incorporate the service of sending Alpha numeric messages to pagers via a DTMF telephone He reiterated that he had never seen the source code and or the object code of the plaintiff s computer program All he knew about the plaintiff s computer program was that it could apparently send Alpha numeric messages to pagers via a DTMF telephone using the codes in his drawing and table He said that there were many ways of designing a computer program to achieve such an idea He underscored the aspect that the plaintiff s computer program and that of the defendants worked differently 61 The next significant witness for the defendants was Mr Hair Eng Sung an engineer with Singapore Telecom Page Link Pte Ltd a subsidiary of the first defendants and the officer in charge of its Radio Paging Base Statistics Operations and Maintenance The highlights of his evidence were as follows 62 Mr Hair first became involved with the Alpha Numeric Paging System ANPS or Radio Memo Service RMS in September 1985 He said that although TAS had implemented the ANPS system which was commissioned into service on or about 15 April 1987 a number of technical problems remained to be sorted out He conceded that the system which was in place did not have the feature for sending alphabet messages through a DTMF telephone He did not consider developing this feature at that time as he was busy assisting in the implementation of another new paging system and was also trying to fine tune the ANPS system Prior to 27 February 1988 there was also no feedback from their Radio Services Marketing Department of an urgent requirement to provide the function to send alpha numeric messages through DTMF telephones 63 Consequent upon an internal memorandum from Mr Leong dated 20 February 1988 he attended a demonstration given by the plaintiff at TAS premises at Comcentre on 27 February 1988 His evidence in this connection was by and large in consonance with that of Mr Ang and needs no repetition 64 Mr Hair confirmed that on 18 April 1988 he and Mr Ang produced a paper entitled Radio Memo Service Pseudo Alpha Numeric Push Button Input PAPI This paper was targeted at TAS s marketing department and its objective was to confirm that the ANPS software could be modified to support the feature of sending alpha numeric messages to RMS pagers using DTMF telephones It was also to recommend that the said feature be provided to all telephone subscribers and public telephones 65 In para 3 2 a of the said paper the following passage appears A coding method which is a modified version to what has been demonstrated by Photo Electronic Research Centre the plaintiff was adopted In this method every pushbutton key is designated with 3 alphabets or special characters functions The selection of the 1 out of 3 characters functions is performed by first selecting any one key from 0 at the bottom row of a keypad which determines the column of the 1 of 3 designated character function and then followed by the actual character function key Two key strokes would be required for a character function input and one keystroke for a numeric input except digit 0 which requires pressing the 0 key twice 66 Mr Hair claimed that his reason for referring to the plaintiff s method in his paper was to give the marketing department some idea of the functions and purposes of the PAPI coding system since the plaintiff had provided a point of reference which was familiar to them as they were all present at the demonstration of the plaintiff s system He reiterated that his reference to the plaintiff s method did not mean that the defendants had taken the plaintiff s method and modified it 67 Mr Hair s averments as regards the comparison between the plaintiff s table and drawing and the first defendants API coding table and drawing as stated in paras 34 and 36 of his affidavit of evidence in chief were as follows 34 I now turn to a comparison between the plaintiff s table and the API coding table Firstly I believe that no one in the first defendants employ had seen the plaintiff s table as annexed to the statement of claim until the commencement of these proceedings I have already explained in para 10 above that the plaintiff s coding table and keypad layout we saw at the demonstration is different from that annexed to the statement of claim It should be noted that there are quite a number of differences between the plaintiff s table annexed to the statement of claim and that shown at the demonstration on 27 February 1988 These are as follows a There is no code for numbers in the plaintiff s table shown at the demonstration apart from the number 0 b The plaintiff s table shown at the demonstration has code 9 for while the one annexed to the statement of claim has code 9 for and c The plaintiff s table shown at the demonstration has code for while the one annexed to the statement of claim has code to mean erase 35 Comparing the plaintiff s table annexed to the statement of claim and the API coding table the following differences can be observed a All the codes for obtaining the various alphabets are different For example the code in the plaintiff s table to obtain A is 1 while it is 2 in the API coding table b The API coding table has the following additional characters which are absent from the plaintiff s table These are i space 1 ii 0 iii 0 iv 0 v vi and vii 0 c As for it means end text in the API coding table but Spell or return in the plaintiff s table and d The API coding table also has a title for each of the alphabets numbers characters and codes which the plaintiff s table does not 36 As regards the plaintiff s drawing again I believe that no one in the first defendants employ had ever seen the plaintiff s drawing annexed to the statement of claim until the commencement of these proceedings I can see no resemblance between the plaintiff s drawing and the API coding table Furthermore there are also differences between the plaintiff s drawing annexed to the statement of claim and that shown at the demonstration namely the characters and over key 9 and back and erase over key 68 In sum Mr Hair denied that the first defendants had copied the plaintiff s drawing or table 69 The evidence of Mr Lim Toon the Executive Vice President International Service of the first defendants was that on 3 March 1984 nearly four years before the plaintiff s demonstration he chaired a meeting of some TAS officers to review the existing 103 directory services traffic situation A study group headed by Mr Ma was appointed at the meeting and the role of the study group was to look into possible methods for an automatic directory information service ADIS to provide the directory information service without using operations and to prepare tender specifications for such methods 70 Consequently on 5 March 1984 Mr Lim Toon sent the study group an internal memorandum In his memorandum he suggested that they consider a pseudo alphabet method for a caller to input the name of the person whose telephone number he wanted This was to use the 12 buttons on a DTMF telephone keypad comprising the numbers 1 to 0 and the keys and in different combinations to produce the various letters of the alphabet It was merely an idea and he left it to Mr Ma and his team to consider it as they thought fit 71 According to Mr Lim Toon based on the method illustrated in his memorandum dated 5 March 1984 the complete table with a standardised pad would logically be as follows 72 Mr Lim Toon had envisaged that the alphabet layout would be displayed on the push button telephone keypad so as to make it easy for users as there is no need for them to memorise the layout He had no prior research precedents or examples when he came up with this idea It was a relatively simple concept 73 Mr Lim Toon attached a procedure for inputting the letters of the alphabet together with his memorandum In it he also suggested that space be denoted by This was likewise only a suggestion for the study group s consideration Apart from that he did not consider any numbers special functions or special characters when he drafted the memorandum 74 The other witness for the defendants was Mr Ho Siaw Hong a Divisional Manager in the Satellite Business Development with the first defendants Inasmuch as his evidence was by and large complemental to the evidence proffered by the other defence witnesses it need not detain us 75 Mr Leong was not called by the defendants to give any evidence and in this regard the plaintiff s counsel invited the court to draw an adverse inference pursuant to s 117 of the Evidence Act Cap 97 I shall revert to this later in my submission 76 Insofar as is material the essence of the evidence of Mr Goh Tiong Hwee an information technology consultant engaged by the Institute of Systems Science ISS National University of Singapore an expert called by the defendants was that he had studied the computer programs of the plaintiff as well as that of the defendants and in his opinion the two programs were vastly different and not substantially similar to each other His conclusions as appear at paras 25 to 28 of his first affidavit of evidence in chief read as follows Comparison of the plaintiff s computer program and the first defendants computer program 25 Both the plaintiff s computer program and the first defendants computer program enable various combination of codes pressed on the telephone to be converted into pre arranged letters of the alphabet However in my opinion there are significant differences between these 2 programs Firstly the routes taken by both programs in converting the various codes into the respective letters of the alphabet are entirely different The first defendants program adopts a pre arranged table and requires the computation of an address into this table All letters of the alphabet and other characters required are obtained only from this table The plaintiff s program on the other hand has no such table Instead it asks a series of questions and ascertains the required letter of the alphabet at the end of these different questions Structurally therefore they are quite different from each other Both routes are perfectly reasonable in achieving their objective 26 Secondly the structure of both programs are also quite different in view of the different languages used The plaintiff s program uses Basic language The first defendants program on the other hand uses Assembler language Both languages are different dialects of computer languages In other words a person familiar with Basic language may not know Assembler language and vice versa Moreover although both languages are different dialects of computer languages my opinion having compared both programs is that neither program is a direct line for line or even file for file translation of the other 27 At the same time both Basic and Assembler are different generation of computer languages Assembler is a 2nd generation language while Basic is a 3rd generation language Assembler language contains virtually no English and is more like object code The English seen on p 7 of the first defendants computer program between line numbers 3208 and 3225 for example are comments to assist the programmer They are not an integral part of the program In other words they can be removed without affecting the running of the program 28 Having examined the two computer programs for the reasons stated above it is my opinion that the 2 programs are very different and not substantially similar to each other The only similarity is in the fact that both programs can convert various codes depressed on a telephone into letters of the alphabet To me this is only an idea In any case the routes taken to achieve this end are themselves very different 77 In his supplemental affidavit of evidence in chief Mr Goh outlined how he applied the abstraction filtration comparison test applied in John Richardson Computers Ltd v Flanders 1993 FSR 497 to determine if the defendants program is a copy of the plaintiff s program The test referred to by Mr Goh appears to entail the following three stages 1 the abstraction stage where the plaintiff s program was dissected into different levels of increasing generality 2 the filtration stage where the material deemed not capable of being protected by copyright was removed and 3 the comparison stage where what remained was compared to the defendants program to determine whether there had been any copying 78 Mr Goh said that the abstraction stage of the test could be generally described as reverse engineering on a theoretical plane The idea was to break the program into different levels of increasing generality from the most detailed level to a level where the program itself was nothing more than an idea 79 Mr Goh then managed to break down the plaintiff s program into the following levels of abstraction a Main purpose b Flowchart of program structure and architecture c Module specification and data structures d Algorithm e Source code and f Object code 80 Mr Goh explained in detail functions of the foregoing levels at paras 18 to 41 of his second affidavit Suffice it if I referred only to certain highlights of his opinion which are as follows a Main purpose Specifically the plaintiff s BASIC program was designed to receive numeric input from the DTMF decoder and based on the input to generate an alpha numeric input b Flowchart 1 The plaintiff s program basically employs a straight line coding structure Straight line coding is the most obvious way of writing a computer program Basically the programme writes down from beginning to end the individual steps needed to accomplish the task It would be similar to the directional instructions one would give another person as to how to get from one location to another ii The flow chart prepared by Mr Goh of the plaintiff s program is as follows See annexure C iii It could be seen from the flowchart drawn by Mr Goh the flowchart or structure of the plaintiff s programme is vastly different in both context and content from what was indeed shown to the TAS officers by the plaintiff on 27 February 1988 c Module specification and data structure 1 In Mr Goh s evaluation the plaintiff s program had no significant data structures to speak of The plaintiff s program appeared to contain only simple variables d Algorithm He gave an illustration of an algorithm for the SETUP module which is in a way a sort of terse English the steps to be taken by a program He added that the algorithm of a program is almost as detailed as the source code itself e Source code The fifth step in creating a program is the coding of the source code He explained that using the algorithm as a guide the programmer would translate what has been written in plain English into source code using key words a computer understands The resultant source code is more detailed than the algorithm and will include the data structure mentioned earlier He then made reference to the plaintiff s program which was made available to him after the action had commenced f Object code The object code is the final set of instructions which the computer understands and uses directly ie without further translation to run a program However as the plaintiff s program is written in the BASIC language it did not have an object code According to him the plaintiff s BASIC program ran as source code using a BASIC interpreter without creating a separate file containing the object code Filtration stage 81 Mr Goh then proceeded to filter out those elements of the program which were not protected by copyright He was in this regard advised by counsel that the following concepts were used to determine what was not protected a The idea expression dichotomy b Facts c Public domain d The merger doctrine and e Elements dictated by external factors 82 As Mr Goh had been given to understand that the only part of the plaintiff s program alleged to have been copied by the defendants was the part which contained the Teletyper table he confined himself only to that aspect in his application of the filtration and the subsequent comparison stage to those parts of the plaintiff s program which converted the numeric input into an alphanumeric output 83 In Mr Goh s opinion the plaintiff s teletyper table did not actually appear in any of the module specifications In his view all that was left after the filtering process was the actual program code itself and this was the part which was to be used for the comparison stage Comparison 84 Mr Goh s conclusions as appear in paras 57 and 58 of his second affidavit read as follows 57 Comparing the source codes of the two programs clearly shows that there is no similarity between them The source codes as they were written in different languages are clearly different This is especially so in light of the fact that the plaintiff s program does not actually have a table and relies on an entirely different technique to perform the encoding 58 It is therefore my conclusion after applying the abstraction filtration comparison test that the defendants program is not substantially similar to the plaintiff s program Issues and conclusions 85 The principal question in this case is whether the defendants had infringed the plaintiff s copyright rights if any in his table drawing and his computer program 86 It was submitted by plaintiff s counsel that insofar as the table and drawings were concerned the table was a literary work within the meaning of s 7 of the Copyright Act Cap 63 the Act which provides that literary work includes a a table or compilation expressed in words figures or symbols whether or not in a visible form and b a computer program or compilation of computer programs and the drawings are artistic works within the ambit of the same section which provides inter alia that artistic work means a a painting sculpture drawing engraving or photograph whether the work is of artistic quality or not Counsel contended that copyright subsisted in each of the works pursuant to s 27 of the Act 87 He argued that the defendants API coding table 3BA 660 was not independently created it was substantially similar to the plaintiff s table 1BA 55 and such a similarity viewed in the context of the opportunity the defendants had for copying the plaintiff s table prior to creating the defendants API coding table established a prima facie case of copying Consequently the burden of proof according to him had been shifted from the plaintiffs to the defendants and it was therefore for the defendants to prove that there was no copying Insofar as the plaintiff s drawings were concerned counsel submitted that the fact there appeared to have been some differences between the two tables was irrelevant since they were substantially the same and displayed the same important characteristics He added that the fact that the defendants API coding table might not be regarded as a drawing in the sense the plaintiff s works were did not itself prevent it from infringing the plaintiff s drawings 88 The defendants reply in relation to the foregoing submissions by plaintiff s counsel was that a copyright law did not protect an idea but only protects the form of expression of the idea b the plaintiff s table was either a literary work or an artistic work but could not be both at the same time In any event the plaintiff s table was not a literary or artistic work and c even if the plaintiff s table enjoyed copyright the defendants had not infringed his copyright In this context counsel for the defendants submitted that a the defendants API coding table was independently created b it was not substantially similar to the plaintiff s table and c any copying if any was only in respect of the idea On matters relating to the alleged infringement by the defendants of the plaintiff s drawing counsel for the defendants contended that the API coding table was not a drawing and was therefore completely different from the plaintiff s drawing and that the drawings 2BA 503 511 and 514 alleged at trial by plaintiff s counsel to allegedly infringe the plaintiff s drawings were different from the plaintiff s drawings 1BA 55 89 It is an aphorism that the law of copyright does not protect the idea but it protects the form of expression For a copyright to be infringed the defendant must be shown to have copied that form of expression see George Wei The Law of Copyright in Singapore 1989 at p 14 The learned author however sounds a note of caution by adding a footnote to the foregoing see footnote 33 at p 14 supra that the concept that copyright is only concerned with the form of expression is perhaps at its weakest in connection with the question of infringement and that extremely difficult problems arise in differentiating the central idea of a work from its form of expression 90 In LB Plastics Ltd v Swish Products Ltd 1979 RPC 551 Lord Wilberforce said at p 619 that The protection given by the law of copyright is against copying the basis of the protection being that one man must not be permitted to appropriate the result of another s labour That copying has taken place is for the plaintiff to establish and prove it as a matter of fact The beginning of the necessary proof normally lies in the establishment of similarity combined with proof of access to the plaintiffs productions 91 However where there is substantial similarity that similarity is prima facie evidence of copying which the party charged may refute by evidence that notwithstanding the similarity there was no copying but independent creation see the observations by Lord Wright in King Features Syndicate Inc v O and M Kleeman Ltd 1941 AC 417 at 436 which were re affirmed by Lord Hailsham of St Marylebone in LB Plastics supra at p 625 line 1 92 Lord Salmon made a general observation in LB Plastics supra at p 615 that you need a concept in order to put it down on paper There is no copyright in a concept but once it is put down on paper there is a copyright in what is on the paper 93 The first contention on behalf of the defendants was that the plaintiffs could only claim copyright protection for his table if at all either as literary work or as an artistic work but he could not put forward a double barrelled claim that it was a literary and or artistic work as pleaded in para 9 of his statement of claim However the plaintiff s counsel s submission in this regard para 10 1 of his written submission was that the plaintiff s table was literary work and his drawings were artistic works within the meaning of s 7 of the Act 94 Counsel for the plaintiff submitted that the plaintiff s table had as its important characteristic the use of base keys 0 and as pre control keys with the numerical keys representing the letters of the alphabet in order and the use of the key 00 for the number 0 and a single key for numbers 1 to 9 He then contended quoting the plaintiff s expert Mr See that the plaintiff s coding system was a substantially new and efficient work of originality with minimum key strokes to convert alpha numeric cum auto error correction erase and space functions He also emphasized that the plaintiff s use of the double digit 00 represented the foundation stone of the alpha numeric coding systems He argued that although the plaintiff s table might be viewed as a compilation of known elements it was nonetheless an original work involving ingenuity skill and labour in the arrangement of those elements resulting in an important and novel work He submitted that originality in copyright works merely required the author to have made the work with his own skill and labour and not to have copied from another Reference was made in this regard to an observation by Lord Reid in Ladbroke Football Ltd v William Hill Football Ltd 1964 1 WLR 273 at 277 which reads To my mind it does not follow that because the fragments taken separately would not be copyright therefore the whole cannot be Indeed it has often been recognised that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright 95 The facts of the Ladbroke case as set

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  • Virtual Map (Singapore) Pte Ltd v Singapore Land Authority and another application[2009] 2 SLR(R) 558; [2009] SGCA 2
    obtained the requisite leave of the court to appeal pursuant to s 34 2 a of the Supreme Court of Judicature Act Cap 322 2007 Rev Ed SCJA VM s position is that no leave of the court is required in order for it to appeal against the Judge s decision However without prejudice to its position VM has filed Originating Summons No 561 of 2008 OS 561 seeking leave from this court to appeal against the Judge s decision VM had previously applied on 1 April 2008 to the Judge via Summons No 1491 of 2008 SUM 1491 for leave to appeal but that application was dismissed by the Judge on 21 April 2008 2 What is before us in the present instance is therefore not the substantive appeal against the Judge s decision but rather two applications ie SUM 2056 and OS 561 concerning the striking out of the Notice of Appeal and the grant of leave by this court for VM to appeal against the Judge s decision respectively The background 3 The detailed facts of this case have already been comprehensively set out in the judgment of the District Judge see 2 13 of the DC decision We thus propose to set out only the salient facts which are necessary for the resolution of the present two applications 4 Prior to the copyright suit SLA and VM were parties to seven licensing agreements collectively the licence agreements five of which were in respect of SLA s street directory data of Singapore in vector format street directory vector data and two of which were in respect of SLA s address point data of Singapore in vector format address point vector data By way of a letter dated 10 June 2004 SLA wrote to VM giving it 30 days notice to terminate the licence agreements all the licence agreements provided for termination by either party with not less than 30 days notice The reason for the termination of the licence agreements is unclear VM contended that the licence agreements were terminated in anticipation of the launch of SLA s own online map search service at www map gov sg while SLA explained that the licence agreements were terminated because it had become aware that VM had taken legal action against several different parties for unauthorised reproduction of VM s online maps and had demanded large payments in exchange for settling those copyright infringement suits even in cases where the unauthorised reproduction had been minor and had already been removed What is undisputed however is that the licence agreements duly came to an end as at 10 July 2004 and VM does not contend that SLA terminated the licence agreements wrongfully see the DC decision at 9 and the HC decision at 4 5 After the termination of the licence agreements SLA s solicitors wrote to VM on 20 July 2005 to demand that the latter cease using materials that contained reproductions of SLA s works VM denied having breached SLA s copyright A flurry of correspondence between the parties followed which eventually culminated in SLA commencing the copyright suit SLA s claim in the copyright suit is that VM had infringed its copyright by virtue of the fact that VM s online maps were reproductions of a the maps in the Singapore Street Directory 1 st Edition 1954 until the 21 st Edition 2002 2003 current e dition for ease of reference we shall use the term the Singapore Street Directory to denote these various editions b SLA s street directory vector data and c SLA s address point vector data The above items will hereafter be referred to collectively as the works 6 At first instance the District Judge found that SLA was the owner of the copyright in the works as the requirement of originality laid down in s 27 of the Copyright Act Cap 63 1999 Rev Ed for copyright to subsist in the works had been met see the DC decision at 41 and 44 She also found that there had been widespread or wholesale copying id at 91 by VM of SLA s street directory vector data and address point vector data collectively these two sets of data will be referred to as the copyright works in VM s online maps given especially the numerous fingerprints of copying found in those maps These fingerprints consisted of inter alia deliberate errors inserted by SLA in the copyright works see generally the DC decision at 76 85 The District Judge however found that there was insufficient evidence id at 87 to demonstrate that VM had copied the maps in the Singapore Street Directory since the evidence of copying advanced by SLA had primarily been in respect of the copyright works 7 The District Judge rejected VM s contention that its online maps were the result of independent creation using global positioning system GPS data and high resolution satellite imagery which was then validated on the ground and continuously revised and updated the GPS survey and not the result of copying the copyright works This was because in addition to the fact that no cogent explanation was proffered by VM for the presence of the fingerprints in its online maps see the DC decision at 119 she found crucially that VM s map making process was very much based on the copyright works id at 116 I n reality VM s map making process was heavily dependent on the raster maps in VM Space the origins of which was SLA s vector data and VM s vector data which again was derived from SLA s vector data Vincent VM s expert witness spoke about the advent of new age mapping using GIS geographic information systems software I had no qualms with all the facets of map making in the new age Unfortunately however dynamic such new mapping methods are the truth which VM simply could not escape from was that its actual map making process was heavily dependent ultimately on SLA s vector data to provide the backbone or skeleton of its own online maps emphasis added emphasis in original omitted 8 In the final analysis the District Judge held that VM had clearly modelled its online maps on SLA s vector data id at 122 and the nature of the copying done by VM constituted a substantial reproduction of the copyright works Accordingly VM had infringed SLA s copyright in the copyright works ibid 9 With regard to VM s defence that the licence agreements expressly and impliedly entitled VM to use the works in the creation of its VM s online maps including subsequent versions of those maps the District Judge held that on a construction of the express terms of the said agreements there was nothing which gave VM the contractual right to retain and continue using its online maps irrespective of whether those maps infringed SLA s copyright id at 134 She also held that the alleged implied term that VM was allowed to keep any maps created under the licence agreements as well as subsequent versions of the same and to continue to maintain and market distribute sell or offer to sell or otherwise deal with the same id at 137 as contended by VM flew in the face of the express terms of the licence agreements ibid and there was simply no business efficacy to speak of ibid that could justify implying such a term which would effectively undermine SLA s legal right to have its intellectual property rights protected in accordance with the law and which would be contrary to the expressed intentions of the parties to the contract ibid The District Judge also dismissed VM s defence based on estoppel on the ground that t here was no evidence that SLA had lulled VM into a false sense of security or into thinking that SLA had abandoned any intention to pursue a claim against it see the DC decision at 145 10 In the light of her findings the District Judge granted all the reliefs asked for by SLA save the prayer for full discovery of certain information and documents including an injunction to restrain VM from infringing SLA s copyright in the copyright works and an order for the delivery up and or destruction of all of VM s documents the continued retention and or use of which would be a breach of the injunction id at 148 149 11 VM appealed to the High Court against the whole of the District Judge s decision At the hearing of the appeal VM informed the Judge that it was prepared to accept that SLA had copyright in the copyright works but maintained that there had been no copying or substantial reproduction of those works see the HC decision at 6 The Judge eventually dismissed the appeal He agreed with the findings made by the District Judge at first instance as well as her reasons as to why copyright infringement had been established in the instant case id at 62 Effectively the Judge affirmed the District Judge s decision not just on the point of copying and substantial reproduction but also on the construction of the licence agreements as well as the issue of estoppel The issues before us 12 As mentioned at the outset of this judgment see 1 above SLA applied in SUM 2056 to strike out the Notice of Appeal on the basis that the court s leave to appeal was required pursuant to s 34 2 a of the SCJA which provides that the court s leave is required if the amount or value of the subject matter at the trial is 250 000 or less see further 15 below and that such leave had not been obtained by VM prior to the filing of the Notice of Appeal SLA s primary contention was that since the copyright suit had been commenced in the District Court where the civil jurisdiction of the court is capped at 250 000 see ss 19 21 read with s 2 of the Subordinate Courts Act Cap 321 1999 Rev Ed which was the applicable edition of that Act at the time the copyright suit was commenced the amount or value of the subject matter at the trial per s 34 2 a of the SCJA was less than 250 000 in the present case and therefore leave of the court was required before VM could appeal to the Court of Appeal Counsel for SLA Mr Dedar Singh Gill also argued at the hearing before us that s 34 2 a of the SCJA should be read together with those provisions of the Subordinate Courts Act which delineated the upper limit of the District Court s civil jurisdiction and that effect must be given to the parliamentary intention behind s 34 2 a of the SCJA viz that there should only be one tier of appeal as of right ie without the need to obtain the court s leave to appeal 13 In contrast for reasons that will be elaborated in full later see 21 below VM contended that no leave of the court pursuant to s 34 2 a of the SCJA was required for its appeal against the Judge s decision However as mentioned see 1 above VM also applied via OS 561 without prejudice to its position that no leave of Court was required in order to appeal to this court for leave to appeal VM further argued that even if the court s leave were required such leave should be granted as the requirements for obtaining the court s leave to appeal had been met in the present case 14 Following from the parties arguments there are two issues for our consideration a whether the court s leave under s 34 2 a of the SCJA is required for VM to appeal to the Court of Appeal against the Judge s decision if this question is answered in the affirmative a corollary issue would arise as to whether the Notice of Appeal should be struck out in the given circumstances and b if leave to appeal must indeed be obtained from the court whether such leave should be granted to VM Whether leave to appeal under section 34 2 a of the Supreme Court of Judicature Act is required General principles 15 We will start by examining s 34 2 a of the SCJA which provides as follows 2 Except with the leave of the Court of Appeal or a Judge ie a Judge of the High Court per s 2 of the SCJA no appeal shall be brought to the Court of Appeal in any of the following cases a where the amount or value of the subject matter at the trial is 250 000 or such other amount as may be specified by an order made under subsection 3 or less emphasis added 16 The operative phrase in s 34 2 a of the SCJA is the amount or value of the subject matter at the trial In Tan Chiang Brother s Marble S Pte Ltd v Permasteelisa Pacific Holdings Ltd 2002 1 SLR R 633 Tan Chiang Brother s Marble this court interpreted the corresponding phrase in s 34 2 a of the Supreme Court of Judicature Act Cap 322 1999 Rev Ed the 1999 SCJA which is in pari materia with s 34 2 a of the SCJA to mean the entire claim of the plaintiff at the trial regardless of the actual amount awarded by the trial judge or the part s of the trial judge s decision appealed against by the appellant see also the decision of this court in Teo Eng Chuan v Nirumalan V Kanapathi Pillay 2003 4 SLR R 442 Teo Eng Chuan at 20 23 Singapore Civil Procedure 2007 G P Selvam chief ed Sweet Maxwell Asia 2007 at para 57 16 8 and Singapore Court Practice 2006 Jeffrey Pinsler gen ed LexisNexis 2006 at para 56 3 9 Thus in Tan Chiang Brother s Marble although the appellant appealed in respect of only that part of the claim in which it had not succeeded and the counterclaim the total monetary value of which taken together did not exceed 250 000 it was held that no leave of the court to appeal under s 34 2 a of the 1999 SCJA was required given that the total amount of the appellant s claim at the trial well exceeded 250 000 id at 14 and 25 In the subsequent case of Teo Eng Chuan this court reiterated that it was not the amount in dispute on appeal which would determine whether the leave of the court under s 34 2 a of the 1999 SCJA was required id at 20 21 20 The approach of only looking at the quantum which a party would be disputing before the Court of Appeal to determine if leave is required not only ignores the plain words of s 34 2 a and our ruling in Tan Chiang Brother s Marble but will also give rise to anomalies 21 Take a case like the present commenced in the High Court where apart from special damages the quantum of general damages which the injured would be entitled to would be at large Of course at the trial itself the plaintiff would have to state how much he is claiming for general damages That together with the special damages would be the value of the subject matter Assuming that altogether it is more than 250 000 and supposing the High Court whether it be a decision of the High Court itself or a decision on appeal from the Registrar on assessment awards the plaintiff a total sum of 200 000 as damages isn t the plaintiff entitled as of right to appeal to the Court of Appeal for a sum claimed which is in excess of 250 000 We do not think such an appeal would require the leave of the court emphasis added 17 On the same basis that it was the quantum of the entire claim of the plaintiff at the trial that mattered it was held in Teo Eng Chuan at 23 that Even if the plaintiff had exaggerated his claim and the High Court had only awarded him less than 250 000 there is no reason why the defendant who had no hand in the action being instituted in the High Court should be denied an opportunity to appeal if he is dissatisfied with even that lower award emphasis added However a plaintiff who unreasonably inflates his claim and commences his action in the High Court when it could very well have been commenced in the Subordinate Courts instead may be penalised in costs see Tan Chiang Brother s Marble at 24 see also the Singapore High Court decision of Cheong Ghim Fah v Murugian s o Rangasamy 2004 3 SLR R 193 at 12 18 The decided cases have also clarified the scope of s 34 2 a of the SCJA as follows a The phrase the amount or value of the subject matter at the trial in s 34 2 a of the SCJA does not include non contractual interest and costs as these are merely consequential matters see Abdul Rahman bin Shariff v Abdul Salim bin Syed 1999 3 SLR R 138 which actually concerns the words the amount in dispute or the value of the subject matter in s 21 1 of the Supreme Court of Judicature Act Cap 322 1985 Rev Ed 1993 Reprint but which in our opinion is equally applicable to s 34 2 a of the SCJA b The expression trial includes any judicial hearing whether in open court or in chambers see Tan Chiang Brother s Marble at 20 and Spandeck Engineering S Pte Ltd v Yong Qiang Construction 1999 3 SLR R 338 Spandeck Engineering at 17 Further vis à vis an appeal to the Court of Appeal against the order of a High Court judge in a registrar s appeal the hearing before the registrar and the appeal to the judge against the registrar s decision effectively constitute one hearing given that the judge hears the matter de novo for the purposes of the word trial see Teo Eng Chuan at 10 14 and Hailisen Shipping Co Ltd v Pan United Shipyard Pte Ltd 2004 1 SLR R 148 Hailisen Shipping Co Ltd at 14 One tier of appeal as of right for civil cases 19 In Tan Chiang Brother s Marble 16 supra this court explained that s 34 2 a of the 1999 SCJA was a process to screen appeals to the Court of Appeal as the legislative intention was to allow only one tier of appeal as of right for civil claims up to a certain amount or value in this case the limit of 250 000 At 13 of Tan Chiang Brother s Marble this court explained Decisions of the High Court can either be in relation to an action commenced in the High Court or in relation to an action commenced in the Subordinate Courts which comes on appeal before the High Court The jurisdictional limit of the District Court is 250 000 or less A claim exceeding that limit must be commenced in the High Court Implicit in the scheme of things is that there should as a rule be only one tier of appeal In 1998 when the figure in s 34 2 a of the SCJA ie the Supreme Court of Judicature Act Cap 322 1985 Rev Ed 1993 Reprint was raised to make it fall in line with the enhanced civil jurisdiction of the District Court the Minister for Law Prof S Jayakumar in his second reading speech in Parliament when moving an amendment Bill to the SCJA said In view of the enhanced District Courts jurisdiction of 250 000 in civil matters the Chief Justice has proposed that the existing 30 000 limit in section 34 2 a be raised to 250 000 In other words bring its limit in line with the enhancement If the limit is not raised to 250 000 District Court cases of less than 250 000 can first go on appeal to the High Court and then the Court of Appeal This would strain the limited resources of the Court of Appeal emphasis added Referring to its earlier decision in Spandeck Engineering this court proceeded to observe as follows see 19 of Tan Chiang Brother s Marble A s the limit of 250 000 in s 34 2 a was also the upper limit of the District Court s jurisdiction the objective of s 34 2 a was to ensure that where appeals from the decision of the District Court had been heard and disposed of by the High Court there should be no further appeals therefrom to the Court of Appeal unless on sufficient grounds being shown leave of either the High Court or this court ie the Court of Appeal was obtained The provision provide d for a process to screen appeals to be brought to this court thus preventing the clogging up of this court by all kinds of appeals What was contemplated by the Legislature in relation to an action commenced in the District Court was that there should be only two tiers of hearing the first instance hearing and an appeal A further appeal to the Court of Appeal was only possible with leave emphasis added In a similar vein this court reiterated in Teo Eng Chuan 16 supra that id at 23 It is vitally important to bear in mind the scheme of things for civil appeals under the 1999 SCJA Generally there should be one tier of appeal whether it is a case from the District Court or from the High Court emphasis added 20 Nonetheless some including VM in the present case have suggested that this court s decision in Hailisen Shipping Co Ltd which we will elaborate in detail below at 26 30 has laid down a general rule or an exception that where no monetary value can be placed on the subject matter of the trial or where the issue on appeal does not involve a monetary value the matter does not come under the purview of s 34 2 a of the 1999 SCJA and likewise s 34 2 a of the SCJA and no leave of the court is required see Singapore Civil Procedure 2007 16 supra at para 57 16 8 and Singapore Court Practice 2006 16 supra at para 56 3 9 As will be demonstrated shortly a proper reading of Hailisen Shipping Co Ltd does not in fact support this unqualified proposition Our decision on whether leave to appeal is required 21 VM s reply to SLA s application in SUM 2056 to strike out the Notice of Appeal was twofold First VM argued that as it was appealing inter alia against the District Judge s order that it deliver up to SLA and or destroy among other items all its maps and products containing its maps those maps and those products were part of the subject matter of the copyright suit In this connection VM contended that it had spent millions of dollars developing its maps the actual value of which far exceeded 250 000 and thus the monetary value of the subject matter at the trial before the District Judge exceeded 250 000 as far as VM s appeal to the Court of Appeal was concerned Hence no leave of the court under s 34 2 a of the SCJA was required Second VM argued relying on this court s decision in Hailisen Shipping Co Ltd 18 supra that no specific monetary value could be placed on the subject matter at the trial in the context of the present proceedings and accordingly no leave of the court to appeal was required 22 With respect to the second argument we should point out that in VM s application to the Judge for leave to appeal against his decision ie SUM 1491 see 1 above VM had argued that the following matters were the subject matter at the trial in the context of the present proceedings a whether an injunction should be granted to SLA b whether VM would have to deliver up to SLA or destroy all its ie VM s maps and products containing its maps and c whether damages payable by VM to SLA should be assessed Before us VM repeated this argument It submitted that t he subject matter of the trial when viewed in totality must refer to all of the relief that SLA sought emphasis in original and since no monetary value could be placed on such relief no leave of the court was required for an appeal to the Court of Appeal 23 In so far as VM s first argument at 21 above is concerned we find as a matter of fact that it is without merit There is no evidence before the court save for a bare assertion that VM has expended millions of dollars developing its maps VM s only evidence in this regard was a reference to Virtual Map Singapore Pte Ltd v Suncool International Pte Ltd 2005 2 SLR R 157 where Lai Kew Chai J Lai J had referred at 8 to the District Court s decision in Virtual Map Singapore Pte Ltd v Suncool International Pte Ltd 2004 SGDC 190 in which the District Court had in turn referred at 9 to the fact that VM had said that it had spent 3m developing creating and maintaining its online map provision services No evidence was adduced before Lai J or in the present proceedings on the amount of money which VM had actually spent in that regard 24 In any event we are of the view that it is not open to VM to now argue that the monetary value of the subject matter of the trial in the present case exceeded 250 000 since it had proceeded to trial on the basis of SLA s claim being within and limited to the jurisdiction of the District Court By accepting that the District Court had jurisdiction of the matter VM is now estopped from asserting that the monetary value of the said subject matter exceeded 250 000 At the time of the trial as far as SLA was concerned VM s maps had no value because they were counterfeit whereas as far as VM was concerned the maps had substantial value because they were not counterfeit and therefore could be used for commercial purposes Be that as it may if VM considered its maps to be worth an amount in excess of the jurisdictional limit of the District Court it should have applied to have the entire action transferred to the High Court That was not done VM cannot be allowed to blow hot and cold in the same action by now asserting that its maps have a monetary value in excess of 250 000 25 In contrast VM s second argument that leave of the court to appeal under s 34 2 a of the SCJA is not required because the subject matter at the trial in the present case has no specific monetary value see 21 above cannot be dismissed out of hand and it is necessary for us to examine the decision in Hailisen Shipping Co Ltd 18 supra in some detail 26 In that case Pan United Shipyard PUS contracted with Castle Shipping Company Castle to repair and supply equipment to Castle s vessel Dilmun Fulmar the vessel Castle failed to pay part of the bill and PUS arrested the vessel A settlement agreement the settlement agreement was subsequently reached under which Castle agreed to pay PUS in three instalments a total of 310 000 in full and final settlement of the debt which it owed to the latter The vessel was released after the first instalment of 140 000 was paid Castle then sold the vessel to Hailisen Shipping Co Ltd Hailisen After the sale Castle failed to make the remaining instalment payments under the settlement agreement PUS thus commenced an in rem action for the balance sum of 170 000 the in rem action and arrested the vessel once again Hailisen applied as an intervener to the in rem action to set aside the warrant of arrest and sought damages for wrongful arrest Subsequently the assistant registrar set aside the warrant of arrest but did not award Hailisen any damages for wrongful arrest On appeal by both PUS against the setting aside of the warrant of arrest and Hailisen against the assistant registrar s refusal to award damages Belinda Ang Saw Ean J Ang J affirmed the assistant registrar s decision to set aside the warrant of arrest see The Dilmun Fulmar 2004 1 SLR R 140 she also allowed Hailisen s appeal and held that Hailisen was entitled to damages to be assessed PUS in turn appealed against Ang J s decision Hailisen argued that PUS was not entitled as of right ie without first obtaining the leave of the court to appeal against Ang J s decision since the claim in the in rem action was only for 170 000 Hailisen thus applied to have PUS s appeal struck out on the ground that PUS had failed to apply for the court s leave as required by s 34 2 a of the 1999 SCJA 27 Chao Hick Tin JA delivering the judgment of this court held that the subject matter of the in rem action was not PUS s claim of 170 000 He explained at 15 of Hailisen Shipping Co Ltd T he question to ask is what was the subject matter before Ang J Here we must observe that while PUS was only claiming for 170 000 which ordinarily should have been claimed by way of an action commenced in a District Court PUS s claim had to be commenced in the Singapore High Court because it was an in rem action What was before Ang J was not the claim of 170 000 of PUS but the questions of whether the warrant of arrest of the vessel should be set aside and if so whether there should be an order for an assessment of damages Both these questions were the subject matter before Ang J which she answered in the affirmative Neither of them bore any specific value Indeed the damages to be assessed were wholly at large The claim of PUS in the main action ie the in rem action could in no way limit the damages suffered by Hailisen due to the wrongful arrest Therefore the matter did not fall within s 34 2 a of the 1999 SCJA and no leave was required emphasis added 28 At face value it is difficult for us to disagree that VM s characterisation of the subject matter in the present case which is essentially an unquantified claim for damages as well as for the non monetary remedies of an injunction and an order for the delivery up and or destruction of infringing materials in respect of breach of copyright is supported by the decision of this court in Hailisen Shipping Co Ltd However it does not in our view necessarily follow that Hailisen Shipping Co Ltd is applicable to the present case There is a material difference between the jurisdictional context in which the claim in Hailisen Shipping Co Ltd was brought and that in which SLA s claim in the copyright suit was brought In the present case SLA made its claim in and within the jurisdiction of the District Court thereby limiting its damages to 250 000 and no more In contrast in Hailisen Shipping Co Ltd the claims ie PUS s claim for the balance sum of 170 000 and Hailisen s claim for damages for wrongful arrest were made in the High Court which has unlimited jurisdiction and Hailisen was not obliged to limit its claim for damages to a particular quantum In our view the decision in Hailisen Shipping Co Ltd cannot be used as authority to found an argument that no leave of the court is required for an appeal to the Court of Appeal where the subject matter of the trial from which the appeal stems does not have a specific monetary value The answer to VM s second argument as set out at 21 above is that the subject matter of the copyright suit in the present case did have a monetary value that was fixed by the jurisdiction of the District Court viz a monetary value not exceeding 250 000 29 In our view there is a simpler answer to the problems associated with characterising the subject matter of an action and then trying to put a monetary value on it for the purposes of determining whether s 34 2 a of the SCJA applies In the District Courts the monetary value of the subject matter of an action is limited by the jurisdictional limit of 250 000 In the High Court there is no such limit Therefore the question arises as to whether s 34 2 a of the SCJA was ever intended to deal with admiralty claims such as that arising in Hailisen Shipping Co Ltd 18 supra which because of the special nature of their subject matter are governed by a special statute viz the High Court Admiralty Jurisdiction Act Cap 123 2001 Rev Ed HCAJA and have to be pursued in the High Court Prior to the enactment of s 34 2 a of the SCJA in its present form to limit appeals as of right to the Court of Appeal in relation to claims which do not exceed 250 000 in value in a legislative framework intended to provide only one tier of appeal as of right any admiralty action regardless of the monetary value of the claim therein could form the basis of an appeal to the Court of Appeal as of right Given the legislative policy of having only one tier of appeal as of right for civil cases and in particular of limiting appeals as of right from the District Courts to only the High Court see the speech by the Minister for Law Prof S Jayakumar Prof Jayakumar during the second reading of the Supreme Court of Judicature Amendment Bill 1998 Bill 40 of 1998 Singapore Parliamentary Debates Official Report 26 November 1998 vol 69 at col 1629 see also 19 above where 13 of Tan Chiang Brother s Marble 16 supra which sets out the relevant part of Prof Jayakumar s speech is quoted in full it is difficult to imagine that Parliament had intended s 34 2 a of the SCJA to cut down the one tier right of appeal in admiralty actions without expressly providing for that Moreover there could conceivably be no reason for Parliament to do so Other examples of actions in which there is a vested statutory right of appeal to the Court of Appeal which entitlement would be affected by a literal reading of s 34 2 a of the SCJA would be proceedings under the Companies Act Cap 50 2006 Rev Ed and the Trade Marks Act Cap 332 2005 Rev Ed that are required to be commenced in the High Court There is no reason why we should interpret s 34 2 a of the SCJA so as to blow away by a side wind a party s statutory right to appeal without first obtaining the court s leave to the Court of Appeal which right previously vested and still vests in respect of inter alia the aforementioned types of actions 30 We are of the view that this court s intellectual effort in characterising

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  • Virtual Map (Singapore) Pte Ltd v Singapore Land Authority[2008] 3 SLR 86; [2008] SGHC 42
    the trial For instance in relation to Fort Gate SLA s expert Mr Calvert who explained that its shape is identical in both SLA s and VM s maps said that it was not possible for VM to have the same exact portrayal as in SLA s map and especially so since Fort Gate does not have the shape portrayed in SLA s map If VM had indeed worked on the basis of satellite images its depiction of the shape of Fort Gate would have been different from that of SLA 27 Furthermore two existing buildings adjacent to Fort Gate are not depicted on SLA s maps Remarkably these two buildings which should have appeared on VM s satellite images are also missing from VM s online maps Unique features in SLA s address point database 28 The fourth type of fingerprints relate to a number of unique features in SLA s address point database 29 For a start SLA uses a unique building name convention with respect to Housing Development Board HDB buildings It identifies public residential buildings with the prefix HDB An example of this is HDB Alexandra More pertinent is that SLA s naming of HDB blocks has some inconsistencies in that HDB was sometimes followed by a hyphen eg HDB Alexandra and was sometimes without a hyphen eg HDB Alexandra SLA s building name convention and all its inconsistencies in using or omitting the hyphen are mirrored in VM s data This speaks little of independent creation by VM Identical X and Y coordinates for 58 address points 30 Finally reference must be made to 58 identical X and Y coordinates for address points in SLA s database that were reproduced in VM s database These coordinates concern the point that SLA chose for the geographical location of a building or units in the same building sharing the same six digit Singapore postal code As SLA s expert Mr Calvert explained the skeleton of SLA s data is the absolute and relative position of map date The X and Y coordinates identify the exact absolute and relative position of a feature on a map and may be regarded as the information layer of a map As SLA s counsel Mr Dedar Singh Mr Singh emphasised to copy the address point would be to copy the absolute and relative position of a feature on a map 31 VM submitted that the fact that only 58 address points were copied meant that only a negligible number of address points were the same in both its data and that of SLA However SLA s expert Mr Calvert who stressed that there should not be this number of identical address points explained that in regard to these identical address points the question should not be what the dog said as it is a miracle that the dog spoke at all He added as follows To have one identical may be coincidence to have two is suspicious to have 58 is incontrovertible evidence that the co ordinates come from the same source Furthermore as building outlines in SLA and VM are of different shapes the chances of both generating the exact same centre points for each building is so infinitesimally low as to be negligible iii VM must explain that similarities did not result from copying 32 In the light of the many damning fingerprints mentioned above the following words of Lord Millet in Designers Guild Ltd 14 supra at 2425 which describe the first part of his two step test are relevant If the plaintiff demonstrates 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 copyright work the burden passes to the defendant to satisfy the judge that despite the similarities they did not result from copying emphasis added 33 VM had prior access to SLA s copyright data by virtue of the licence agreements As such it was up to VM to prove that the fingerprints in question did not result from its copying of SLA s data It was all too clear that its witnesses failed in this task miserably 34 VM s task of proving that the new maps are the result of its own independent creation was made more difficult because the two persons most intimately involved with its map making exercise namely Mr Khairul Anuar bin Mohd Yunos Mr Anuar and Mr Rizal Firdaus Mr Rizal had no qualifications in land survey or any experience in cartography 35 Mr Rizal a designer cum web programmer described himself as the leader of VM s mapping team His lack of competence as a map maker was exposed when he was asked during cross examination to comment on one of VM s maps which was obviously off the mark because the roads intended to lead to a car park stopped well before the car park The relevant part of the proceedings is as follows Q See the VM website map Can you tell us what is wrong with that map there A There is no error down here Q There is nothing wrong with the map on VM website A This one I obtained from the satellite Q The problem is that the roads don t take you to the car park Can you explain A I don t know Q You have put yourself as an expert in making maps And you don t know how to read this map Your answer is you don t know A This is taken from the satellite Maybe it is human error The person had forgotten to take down the road No explanation emphasis added 36 It was hardly surprising that SLA s counsel Mr Singh asserted that a clear inference can be drawn in relation to VM s claim of independent map creation when its map maker is unable to even identify an irregularity in a map showing roads that do not as they should lead to the car park in question 37 Apart from their lack of credentials the evidence of Mr Anuar and Mr Rizal did not advance VM s claim that its online maps had been independently created Mr Anuar put VM in a spot when he admitted in his AEIC just how important a part SLA s data played in his map making exercise He stated as follows at para 8 I was provided with a Kangoo vehicle fitted with VM Intellitrac Global Positioning System GPS equipment as well as the Defendants in house GPS tracking software VM Space installed in an IBM laptop for the purpose of the road surveys The vector data licensed from the Singapore Land Authority would already be installed in VM Space for each map area assigned to me emphasis added 38 Realising how damaging his AEIC was to VM s case Mr Anuar sought to delete the above mentioned italicised sentence from his AEIC during the trial Although he now claimed that he did not know what maps were utilised in VM Space his answers during cross examination merely confirmed what he had expressed in his AEIC at para 8 During the appeal VM sought to downgrade Mr Anuar s testimony by calling him a driver This was a desperate move to dilute the value of his evidence as it was clear from Mr Anuar s contract of employment that he had been hired as a surveyor and not a driver 39 Both Mr Anuar and Mr Rizal spoke of verifying altering updating or changing SLA s data when referring to their own map making exercise in their AEICs and during cross examination The following part of the proceedings during the cross examination of Mr Anuar illustrates the position Q What you were doing was when you were conducting your GPS surveys you were using the GPS surveys to verify the data that was in VM Space A It is correct emphasis added 40 Mr Rizal explained that for the online maps on VM s website prior to 9 August 2004 he converted SLA s vector data into a format compatible with VM s software after which he made them more interactive and fully coloured However he claimed that the online maps uploaded on 9 August 2004 were not derived from SLA s vector data For these later maps he claimed to have used the GPS data from his surveyors and traced the roads in a blue line in what was the centre of the roads He then refined and adjusted the blue lines to best reflect where the roads were and he did this with reference to SLA s vector data Thereafter he converted the information into a raster image and superimposed it onto VM s vector data 41 As the new information was superimposed on VM s vector data one is still left with a question as to the source of VM s vector data For this the following extract from the cross examination of Mr Rizal speaks volumes Q When you first created what you say is your vector in 2000 you used SLA s vector to create your own vector A Yes Q You accept that your 2000 vector is derived from SLA s vector A Yes 42 It must be noted that when referring to compilations Copinger and Skone James on Copyright vol 1 Kevin Garnett et al eds Sweet Maxwell 15th Ed 2005 Copinger and Skone James on Copyright stated at p 398 para 7 44 that even to copy the claimant s work but then go to the source to check that the information is correct will be an infringement It was not surprising that SLA s counsel Mr Singh submitted that VM s map making involved nothing other than verification or alteration of SLA s data in VM Space 43 Apart from the above evidence which showed that there was no independent creation by VM the fact remains that VM was unable to give a satisfactory explanation as to why there were so many fingerprints of SLA s works in its own online maps When cross examined on the need to explain fingerprints VM s expert Mr Vincent said as follows Q Would you agree if I say that if there are errors and fingerprints they call for an explanation A Yes I will absolutely agree with that 44 The main map maker Mr Rizal testified that he had come to court without having read Mr Calvert s AEIC which detailed so many fingerprints and that he had not discussed Mr Calvert s report with VM s expert Mr Vincent In view of this he was in no position to deal intelligibly with questions regarding the fingerprints A sample of his answers should be considered 45 When questioned about the non existent short road that purportedly extends from Jurong West Street 23 Mr Rizal s testimony as to why this deliberate error in SLA s vector data found its way into VM s online map made no sense whatsoever The relevant part of the cross examination is as follows Q I f you say that you have these people driving in vehicles tracking by GPS p 365 Vol 1 you have people collecting data for you you have satellite images how did these errors come about A During the creation of this new road there is no log data for this road because this is a restricted area Q This is not a restricted area the road just doesn t exist A My surveyor cannot go into this place Ct But witness there is no such place Any explanation A No emphasis added 46 As for the non existent building numbered 92 which was placed by SLA at the junction of Pitt Street and Jalan Besar Mr Rizal also could not explain why with all the satellite images this non existent building also appeared in VM s online map as late as February 2005 The relevant part of the proceedings is as follows Q Can you see a circle with building numbered 92 Y ou have the same building in VM s map which doesn t exist on the ground Any explanation A No explanation Maybe this is an error made by my team 47 As for the non existent building numbered 6 along Edgedale Plains that had been deliberately placed by SLA in its map Mr Rizal did not effectively counter the allegation of copying When questioned his answer was as follows Q The small building numbered 6 does not exist but the same building finds its way in Defendant s screenshot in Sep 04 Any explanation A No explanation Human error 48 When cross examined on why an incorrectly named building in SLA s data was reproduced in VM s online maps Mr Rizal also had no answer The relevant part of the cross examination is as follows Q Mistake is the same A Human error Q Are you hazarding guesses What sort of answers are you giving now Are you guessing A No I am not guessing It is true Human error There are many involved in doing the updating And there could be old files with the same things Small old files in existence Human error 49 In the light of Mr Rizal s unhelpful testimony it was not surprising that DJ Thian said in her GD at 119 that his unconvincing answers spoke volumes of the sustainability or lack thereof of VM s claims that it did not copy SLA s vector data and that its online maps were a product of independent creation 50 As for why SLA s naming conventions for HDB blocks were reproduced in VM s online maps VM also could not offer a convincing explanation that the similarity has nothing to do with copying When cross examined on this fingerprint VM s shareholder Mr Adrian Khoo Eng Cheng Mr Adrian Khoo who is also a director of Robert J Steiner Pte Ltd a computer software company that collaborated with VM in the creation of the latter s maps said as follows Q The question is that when SLA calls it HDB Alexandra you will call it the same But when SLA calls it HDB Alexandra without the hyphen you will follow A I think my database entry staff overlooked this Ct What is the explanation for the inconsistencies appearing in both SLA and VM s database A I have no explanation emphasis added 51 VM also could not explain why 58 address points were identical When cross examined Mr Adrian Khoo said as follows Q Can you tell us why these 58 are identical A We use a software called the database admin module to update and create our XY address points Apparently there was some misunderstanding on walk up apartments So we sort of left that out Q So will I be right to say that you say you left it out you just followed what was in the SLA address point A Yes emphasis added 52 The conclusion to be drawn with respect to VM s position on the copying of SLA s address point database was summarised by Mr Calvert in the concluding part of his AEIC as follows All the examples bar one indicate that VM has based its address point database on SLA s address point database The modifications of some of the AP s coordinates in the examples suggest in my opinion a deliberate attempt to create the illusion of difference In my opinion it is highly unlikely that VM has generated APs with exactly the same co ordinates without the use of any or all of mapped building boundaries or a common list of co ordinates From my own experience what VM are doing is deliberate obfuscation for if VM had produced APs independently then the chances of having identical co ordinates would be practically nil The example of Annex C indicates that where VM have not copied and that is a minority of cases they are incapable of providing accurate data of the same standard as SLA and more importantly of the same standard to which they claim independent creation 53 As for why the words Jalan and Jln in SLA s maps are followed by VM despite having claimed to have collated information from SingPost Mr Adrian Khoo was at a loss when cross examined on similarities between SLA s data and VM s maps The relevant part of the proceedings is as follows Q As for the use of Jalan and Jln can you explain why you have these identical usages of the terms as in the SLA database A No I can t explain Q So Mr Khoo will I be correct to say that this information you have earlier testified comes from SingPost actually comes from SLA A No Q If you followed SingPost you will not have the issues identified in the illustrations I gave you If this information only appears in SLA s address point how does it find its way into the VM s address point A For this particular information the data was carried over from SLA s address point for HDB naming convention emphasis added 54 SLA s expert Mr Calvert explained that while it was theoretically possible to create maps through VM s professed method of using GPS and satellite imagery the evidence reveals that VM did not follow its own professed method He summed up the position regarding VM s claim of independent map making as follows when he was cross examined In their evidence they say that they have a copy of SLA s vector data within their software and also hard copy of maps which were licensed from SLA so therefore what they have done is to verify the SLA roads and not create a map independently This does not detract from their statement that they have driven every road

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  • Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd
    the concept of creating and the latter to one of possessing proprietary rights An author need not be an owner and the converse is equally true Further the authorship of the Tables was not pleaded as one of joint authorship by the Respondent s employees The crucial issue which therefore arises is whether the Respondent as a body corporate can indeed legally be considered an author of a copyrighted work assuming that this was factually what happened We shall now consider this issue Who is an author 44 First the Act and similarly the Australian Copyright Act 1968 is silent as to the definition of author except to say in s 7 that an author in relation to a photograph means the person who took the photograph As a result the answer to who an author is can only be deduced from other sources 45 A useful starting point is s 9 of the UK Copyright Designs and Patent Act 1988 c 48 UK the 1988 UK Act Section 9 1 of the 1988 UK Act provides that an author in relation to a work means the person who creates it This definition is reiterated in David Hay gen ed Words and Phrases Legally Defined vol I LexisNexis 4th Edition 2007 at p 212 46 Second a closer examination of s 27 of the Act seems obligatory in the light of the Appellant s arguments in order to ascertain the legislative intent of who an author might be Section 27 provides the following Original works in which copyright subsists 27 1 2 Subject to the provisions of this Act where an original literary dramatic musical or artistic work has been published a copyright shall subsist in the work or b if copyright in the work subsisted immediately before its first publication copyright shall continue to subsist in the work if but only if c the first publication of the work took place in Singapore d the author of the work was a qualified person at the time when the work was first published or e the author died before that time but was a qualified person immediately before his death 4 In this section qualified person means a citizen of Singapore or a person resident in Singapore emphasis added 47 The Appellant argued that s 27 of the Act requires an author to be a qualified person and as qualified person has been defined to mean a citizen of Singapore or a person resident in Singapore note 1 in s 27 4 of the Act the Respondent as a body corporate cannot claim to be an author under the Act We have difficulties with this contention 48 The Judge in our view was correct in holding that sub ss 27 2 c d and e of the Act are disjunctive and not conjunctive This is also the settled Australian position see below at 49 Australia as a signatory to the Berne Convention for the Protection of Literary and Artistic Works the Berne Convention had to give effect to Art 3 1 of the Berne Convention which sets out alternative connecting factors based on an author s personal status and the place of first publication of the work Protection will be accorded where one of the connecting factors is established Having acceded to the Berne Convention in December 1998 Singapore has also unambiguously agreed to comply with the minimum terms set out by the Berne Convention In any event as s 27 of the Act was modelled on s 32 of the Australian Copyright Act 1968 we do not think it can be seriously argued that the position in Singapore differs from the Australian one on this 49 Ricketson at para 5 10 confirms that only one of the connecting factors is required by s 32 of the Australian Copyright Act 1968 to be present at the time the type of work or subject matter in question is created or made for copyright to subsist These connecting factors refer either to the personal status of the author or maker of the work or other subject matter at the time of making the personal criterion or to the place of first publication of the subject matter the territorial criterion It is therefore abundantly clear that the personal criterion and the territorial criterion are meant to be alternatives and fulfilling either criterion would suffice 50 We note that George Wei at p 288 fn 118 also takes the same view that s 27 2 essentially sets out two alternative connecting factors for published works namely first publication in Singapore s 27 2 c and the personal status of the author as a qualified person s 27 2 d e It is submitted that it is not necessary under s 27 2 for published works to be both first published in Singapore and made by a qualified person at the relevant time Either factor will do It is submitted that limbs c d and e of s 27 2 do not set out cumulative requirements emphasis in original in italics emphasis added in bold italics Satisfying either the personal criterion or the territorial criterion is sufficient for the work to acquire copyright in Singapore The Judge therefore quite correctly rejected the Appellant s submissions at trial that the author must be a qualified person as this would make s 27 2 d mandatory contrary to the intent of the statute 51 The Judge was also correct when she held that the purpose of s 27 2 was only to ensure that a claim for copyright had sufficient connection with Singapore in order to warrant protection under the Act rather than to provide a definition of who could be an author of a subsisting copyright under the Act see 26 of the Judgment 52 However the Judge erred in declaring subsequently at 25 of the Judgment that although the author of the work must be a qualified person for the purposes of meeting the criteria of s 29 2 d there is no statutory provision that exhaustively states that the only author relevant for all purposes of the Copyright Act must be a qualified person emphasis in original The Judge relied on s 2 of the Interpretation Act Cap 1 2002 Rev Ed the Interpretation Act which defines person to include any company or association or body of persons corporate or unincorporated to substantiate her point and added for good measure that there are also no statutory provisions in the Act which state that an author must necessarily be a living person see 25 of the Judgment 53 While it is true that s 2 of the Interpretation Act defines person as including a company it must be remembered that the words and expressions defined in the Interpretation Act only have the meanings respectively assigned to them in the absence of anything in the subject or context of the relevant statute that is inconsistent with such meanings As a matter of principle in interpreting statutes the general ordinarily gives way to the special or particular 54 It is also interesting to briefly digress and note that an altogether different position has been statutorily adopted in Malaysia In the Malaysian Copyright Act 1987 Act 332 Malaysia the term qualified person has been expanded to include a in relation to an individual a person who is a citizen of or a permanent resident in Malaysia and b in relation to a body corporate a body corporate established in Malaysia and constituted or vested with legal personality under the laws of Malaysia The Malaysian definition of qualified person is thus fundamentally different from the definition in the Act and the Australian Copyright Act 1968 both of which do not explicitly provide for a body corporate It therefore does not come as a surprise that the Malaysian courts have had no difficulty in interpreting the word author as referring not only to natural persons but also to companies see Creative Purpose Sdn Bhd Anor v Integrated Trans Corp Sdn Bhd Ors 1997 2 MLJ 429 However since the Act is silent on this point can it similarly be inferred that non living persons could be authors for the purposes of copyright 55 Returning to the legal position here it is also noteworthy that leading treatises in Australia and England take the view that only natural persons can be qualified persons Ricketson at para 5 20 unequivocally points out that In the context of s 32 of the Copyright Act 1968 Cth equivalent to s 27 of the Act which is concerned with works it is clear that qualified person applies only to natural persons emphasis in original 56 Likewise Kevin Lindgren QC et al Copyright and Designs vol 1 LexisNexis 2004 at para 12 040 states It is important to note that a body corporate cannot be a qualified person in relation to original works The reason for this is that the qualified person and first owner of copyright in an original work is the author and although a body corporate may be the copyright owner by virtue of the operation of a contract of employment an assignment or in any of the other ways expressly provided for in the Australian Copyright Act 1968 it cannot be an author emphasis added We also note that Copinger at para 4 10 has taken the view that w ith very limited exceptions such as computer generated works and old photographs the author of these categories of work must be a natural person The fact that one person is acting as employee of another cannot affect the question of authorship nor can the fact that one person is an agent for another emphasis added With these views in mind we will now excavate further the historical and legislative policy considerations undergirding this issue A non living author 57 The 19th century saw the emergence of the European doctrine of droit moral under which authors intellectual and creative rights in their works were recognised in addition to their purely economic rights Continental jurisdictions therefore regarded an author s work as an emanation or extension of his or her personality inseparably linked with his or her honour and reputation and thus deserving of a long period of protection see Ricketson at para 6 55 This concept naturally leads to the conclusion that an author must be a human being 58 Hugh Laddie et al The Modern Law of Copyright and Designs vol 1 Butterworths 3rd Ed 2000 Laddie points out at para 10 8 that the Berne Convention is concerned with the rights of human authors to their original literary dramatic musical and artistic works As a consequence Laddie further observes thatthe Continental legal tradition has always been to regard the author s right to his property as the starting point and to look upon limitations to its term as a regrettable necessity It is because of this that Art 7 of the Berlin Revision of the Berne Convention in 1908 provided that the term of protection should include the life of the author plus 50 years after his death The extension of the term of copyright was inextricably linked to increased life expectancies at that time 59 The UK s approach to the duration of copyright has been slightly different from that of the Continental jurisdictions in that those who seek legislation in favour of exclusive privileges which restrain trade and freedom of communication ought to show that they are justified in the public interest see Laddie at para 10 8 This approach equally takes into account the fact that the starting point of copyright is a human author Both the UK Copyright Act 1911 and the 1988 UK Act have provided for the term of protection as the author s life plus 50 years This was supposed to reflect two generations of heirs of the author However with increased life expectancy in developed countries especially in regional groupings where the majority of member countries are developed with relatively high standards of living such as the European Union it was unsurprising that the European Commission issued a directive in 1993 which increased the post mortem auctoris period to 70 years and this has been implemented in the UK since 1995 60 Since the duration of copyright protection has always been based on the author s life expectancy and the rationale for the post mortem auctoris term was so as to benefit two generations of the author s heirs it is patently clear that incorporated bodies were never contemplated to have been authors for the purposes of copyright It would be absurd to suggest that a company could have a lifespan let alone generations of heirs Thus it must follow that authors have to be living persons 61 However the Judge found that there was no difficulty in accepting that an incorporated body could be the author of an original work see 31 of the Judgment The Judge considered that it would be at 32 of the Judgment consistent with the statutory regime found in the Act if the copyright in the work is found to expire 70 years after the expiration of the calendar year in which the work was first published This is provided for in ss 28 3 and 29 of the Act in situations where a work is unpublished before the death of the author or where it is an anonymous and pseudonymous work 62 In our view the Judge plainly erred on this point Neither of these scenarios is present in this case There was no posthumous publication because if the Respondent qualifies as the author of the Tables Punters Way would have been published during the lifetime of the Respondent Similarly if the Respondent was the author of the Tables then the Tables cannot possibly be an anonymous or pseudonymous work and s 29 does not apply The prerequisites for the operation of either section have not been satisfied by the Respondent 63 Sections 28 and 29 of the Act are in pari materia with ss 33 and 34 of the Australian Copyright Act 1968 It has been established that the rationale of these provisions is to encourage the ultimate disclosure and dissemination of protected works and the information and knowledge that they contain This objective would not be achieved if such works remain protected indefinitely and are withheld from the public domain Superimposing ss 28 3 and 29 onto the factual matrix at hand would be wrong as these provisions plainly do not contemplate scenarios where an incorporated body is an author Since it is not possible to rely on the date of publication as the litmus test for the expiry of the copyright it appears that if a company qualifies as an author it would possess an indefinite and extraordinary perpetual copyright to its work Pertinently we should add sub ss 28 3 and 28 5 of the Act expressly refer to the death of an author as the reference event for copyright protection in certain instances Why would this be the case if non living authors were intended to be embraced by the Act 64 The rationale underpinning copyright protection is not about the utility of the work but rather the protection of the originality of the expression employed to communicate ideas It is therefore unhelpful to say that the contents in a compilation will become obsolete irrelevant or useless after some time and therefore not worth copying or protecting for as long as there is evidence of originality in the work protection is conferred Even if the work becomes obsolete after time the copyright owner would still be able to bring an action against anyone who utilises the work for an infringement of copyright regardless of the relevancy of the work at that time Should companies and like entities qualify as authors they would be entitled to claim a perpetual monopoly over their works to maximise the economic returns of copyright protection This would be contrary to the underlying policy of the Act which is to accord copyright protection for a limited duration that best strikes a balance between the competing public and private interests see above at 26 29 65 It also seems obvious that authorship by a company could never have been contemplated by the Statute of Anne as companies operating as distinct legal entities were not a typical feature of commerce when it was enacted In the UK prior to the mid 19th century incorporation was only done by way of royal charter or by private Act of Parliament However the Crown and Parliament were usually suspicious of lending their dignity and the benefits of separate personality to commercial organisations As a result most joint stock companies did not have separate legal personality Parliament finally permitted the incorporation of companies by registration when it passed the Joint Stock Companies Act 1844 7 8 Vict c 110 UK 66 It was only in the late 19th century that there was a proliferation of incorporated entities in the UK and whereupon a registered company could acquire separate personality upon registration This principle of separate legal corporate personality was affirmed in the celebrated case of Aron Salomon v A Salomon and Company Limited 1897 AC 22 67 From the foregoing it is clear that the historical origins of the Act envisaged rights to be accorded to natural persons and not corporate bodies and that legal rights flowed only from human authorship In addition it is telling that the duration of copyright in subject matter other than works is merely stated as continuing to subsist until the expiration of 70 or 50 years after the expiration of the calendar year in which the recording film broadcast was first published made Our views are further fortified by the recent decision of the Australian Federal Court of Appeal in Telstra Corporation Limited v Phone Directories Company Pty Ltd 2010 FCAFC 149 the Telstra Appeal where two members of the quorum stated unequivocally at 100 and 134 that under Australian law an author had to be a human author 68 We note that the Judge also relied on the case of Alteco Chemical Pte Ltd v Chong Yean Wah trading as Yamayo Stationery Manufactuer 1999 2 SLR R 915 Alteco to support the proposition that an incorporated body could be the author of a copyright protected work In that decision it appears that a modern interpretation of authorship was created suggesting that the author had become the person who made the necessary arrangements and paid for the creation of the work A company could therefore be the author of the work if its employees created the work product 69 However the High Court in Alteco did not expressly declare that a company could be an author of a work a point acknowledged by the Judge Further the decision in Alteco seemed to have blurred the distinctions between the concepts of authorship and ownership In Tan Tee Jim SC and Ng Loy Wee Loon Intellectual Property Law 2000 1 SAL Ann Rev 230 at 235 237 251 Tan and Ng the authors observe that the Alteco case failed to make the distinction between authorship and copyright ownership in s 30 of the Act As Tan and Ng rightly point out in essence what the Court did was to imply a constructive trust against the author of the work thereby allowing the parent company to own the work and there was no necessity for a modern interpretation of the word author 70 This view has been similarly reiterated in George Wei at pp 1391 1393 He points out that the Act adequately governs the law on ownership even for foreign works which enjoy copyright in Singapore Additionally it is observed that the person who made arrangements for the production of a work or who paid for the work as in the case of Alteco would not be entitled to claim to be the author of the work as this did not generally relate to authorship skills We agree Alteco s innovative tailoring of the term author ought not to be followed 71 It must be emphasised that a work created by an employee author has a limited duration dependent on the life of the employee even if first ownership vests in the employer Thus while the law accepts that a person other than the author may be a first owner the question of who the author is remains a distinct and an important one 72 We therefore reject the Respondent s argument that an author for the purposes of copyright law can and should extend to corporate entities It would clearly be against public policy to allow copyright protection in perpetuity This would be the scenario should a company be deemed capable of being an author for the purpose of copyright Section 2 of the Interpretation Act ought not to be incorporated into the rubric of copyright law and an author must be a natural person in copyright law Can a natural author be identified 73 The identification of an author is still pertinent as s 27 of the Act provides that in order for copyright to subsist in a work the work must be original As mentioned in 40 above originality is closely related to the author This principle was recently affirmed in Telstra Corporation Limited and Another v Phone Directories Company Pty Ltd and Others 2010 FCA 44 Telstra Gordon J masterfully condensed the position thus at 20 originality under the Australian Copyright Act 1968 means that the creation of the work required some independent intellectual effort and or the exercise of sufficient effort of a literary nature E ach phrase confirms that for a work to be sufficiently original for the subsistence of copyright substantial labour and or substantial expense is not alone sufficient More is required What that more is will of course vary from case to case but must involve originality by an identified author in an identified work emphasis added 74 In the Telstra Appeal at 32 Keane CJ heartily affirmed Gordon J s dicta Authorship and originality are correlatives The question of whether copyright subsists is concerned with the particular form of expression of the work You must identify authors and those authors must direct their contribution assessed as either an independent intellectual effort of a sufficient effort of a literary nature to the particular form of expression of the work Start with the work Find its authors They must have done something howsoever defined that can be considered original emphasis added 75 We agree with this approach An author must first be identified before the work in question can be deemed to be original In fact the Respondent s counsel acknowledge in the Respondent s skeletal submissions that all that is required for the test for originality is that the work originates with an author or joint authors from some independent intellectual effort Since the Respondent is unable to assert that it is the author of the work as a body corporate the remaining question at this juncture is whether the Respondent is even able to identify specific human authors of the Tables To avoid doubt we should add that it is not necessary to name each and every author to make out a claim for copyright protection but it has to be shown that the work product in question has been generated from human author s working alone or collaboratively ie the existence of such persons must be clearly established 76 The Respondent s witness Phan Tjun Sern Phan had stated in his Affidavit of Evidence in Chief AEIC note 2 that Punters Way was a continuing project developed from ideas and valuable contributions by racing professionals and readers However ideas and contributions put forward by the readers and horse racing experts would not be protected by the scope of copyright as copyright protects the material form of a work and not the ideas in the work Even if the suggestions could be protected the readers and horse racing experts were not employees of the Respondent and correspondingly the Respondent would not be able to claim copyright ownership of the Tables if any 77 Further relying on a passage in Laddie at para 3 94 the Respondent submits that the definition of a literary work includes a compilation and the author of such a work is the person who gathers or organises the collection of material and who selects orders and arranges it The Respondent then contends that as its employees were the people who gathered organised selected ordered and arranged the information and data they were the authors of the Tables which was an original work capable of being protected by copyright 78 However we hesitate to accept this definition of authors in this situation Although the contributions of these individuals may have led to the compilation of the work they were not part of the actual process of compilation In this context the Telstra Appeal at 92 is instructive It affirmed that where the work of individuals was not collaborative but was instead merely organised to facilitate the production of the work this would not be collaboration of the kind contemplated by the definition of joint authorship 79 Here the collection of the horse racing data such as the horses and jockeys names as well as their track work records and the organisation and selection of such data were either computerised or done by separate people However each individual s responsibility and contribution which has not been particularised was based on the evidence before us insufficient to render the individual an author or joint author of the Tables 80 It certainly cannot be said that a reader who writes in with suggestions for the improvement of the publication can be considered an author Neither can the IT employee who entered the names of the horses in a race be considered an author of the compilation Although it is undeniable that both contributed to the end product data aggregation or input is not creativity 81 Not infrequently in cases involving a high degree of automation there will be no original work produced for the simple reason that there are no identifiable human authors This may well be the reason why the Respondent was unable to identify any particular individual or individuals or a specific group of people as being the human authors of the Tables However whatever the case may be it is clear that copyright cannot subsist without a human author and the Respondent is unable to even begin to satisfactorily identify any author let alone authors It remains unclear who was responsible for the compilations Even assuming arguendo that the Respondent s employees had some authorship role in the compilations the evidence did not satisfactorily establish when copyright protection attached 82 In the circumstances without the identification of a human author from whom the work originates there can be no original work capable of copyright protection We therefore find that the Respondent s claim that copyright subsists in the Tables that were authored by it fails The statutory presumptions 83 Additionally the Act contains statutory presumptions designed to assist a claimant in a copyright action for infringement of copyright We now examine these presumptions to determine if they can assist the Respondent s claim 84 The Judge found at 35 of the Judgment that the presumption under s 131 of the Act applies where a name purporting to be that of the author of a literary work appeared on copies of the work as published then it shall be presumed unless the contrary is established that the person is the author of the work The Judge therefore accepted that the Respondent was the author of the Tables as its name appeared on Punters Way and the onus was on the Appellant to disprove the Respondent s authorship 85 It is pertinent however that the Respondent itself acknowledges that s 131 of the Act is not applicable in the present circumstances as the Respondent s name appears only as Publisher in Punters Way and not as the author 86 The statutory presumption which the Respondent might be entitled to rely on would be s 132 of the Act which provides Presumptions in relation to publisher of work 132 Where in an action brought by virtue of this Part in relation to a literary dramatic musical or artistic work section 131 does not apply but it is established a that the work was first published in Singapore and was so published during the period of 70 years that ended immediately before the commencement of the calendar year in which the action was brought and b that a name purporting to be that of the publisher appeared on copies of the work as first published then unless the contrary is established copyright shall be presumed to subsist in the work and the person whose name so appeared shall be presumed to have been the owner of that copyright at the time of the publication As the Respondent is identified as the publisher in Punters Way the Respondent contends that copyright subsists in the Tables and the Respondent would be presumed to be the owner 87 Section 128 of the Australian Copyright Act 1968 is in pari materia with s 132 of the Act and this issue was comprehensively dealt with in Telstra We agree fully with Gordon J s analysis on s 128 of the Australian Copyright Act 1968 equivalent to s 132 of the Act at 37 In my view the Applicants reliance upon ss 128 and 129 is misplaced Each section reinforces the importance of identifying the author or authors of the work in suit In understanding the operation of the presumptions it is important to note the distinction between identifying an author or authors of the original work and the identity of the author or authors of the original work Lest it be overstated the Australian Copyright Act 1968 fixes on the author or authors If an author or authors within the meaning of the Australian Copyright Act 1968 cannot be identified at all in contradistinction to a situation where the author s or authors exact identity cannot be identified copyright cannot subsist On a reading of ss 128 and 129 it is the latter situation to which the Australian Copyright Act 1968 is directed emphasis in original in italics emphasis added in bold italics 88 The Respondent also relies on the case of Waterlow Publishers Ltd v Rose 1995 FSR 207 Waterlow which referred to the presumption in s 20 4 of the UK Copyright Act 1956 4 5 Eliz 2 Ch 74 which is similar to s 132 of the Act In Waterlow the fact that the publisher s name appeared on the copies of the work was enough to justify a finding that the presumption applied in accordance with the intention of s 20 4 Even though there were no identifiable authors copyright was held to nonetheless subsist in the relevant work with the publisher being the owner of the copyright 89 However cases which have relied on the equivalent of the s 132 presumption such as Waterlow and Microsoft Corporation v DHD Distribution Pty Ltd t as Austin Computers 1999 45 IPR 459 did not deal with the scenario where the very fact of authorship took centre stage Further the presumption was also not decisive in the dispute and it was not argued in those cases that an author could not be identified at all These cases are therefore of limited assistance here We also note that Waterlow appears to be an ex tempore decision This is another reason why undue deference should not be accorded to it 90 Laddie at para 3 94 states that where no name purporting to be that of the author appears on the work as first published but that of the publisher appears there is potentially available under s 104 4 of the 1988 UK Act a presumption that the named person was the owner of the copyright at the time of publication However Gordon J in Telstra at 39 thought that at its highest this passage merely suggests that it may be necessary in particular instances to rely upon the statutory presumptions Further these presumptions have little or no role to play where the question of subsistence of copyright in each of the works is the central issue between the parties 91 Pertinently it has also been observed in Laddie at para 39 85 All that the presumption does is to compel the court to reach the appropriate conclusion in the absence of evidence to the contrary If the opponent does offer evidence in rebuttal sufficient to satisfy the legal requirement of some evidence the presumption disappears and the case is in the court s hands free from any rule emphasis in original As authorship is in dispute in the present case and the Appellant has adduced evidence that copyright does not subsist in the Tables since there is no author the s 132 statutory presumption has been displaced 92 We round up our analysis of this issue by emphasising that it is settled practice that the necessary elements of authorship ownership validity and subsistence must be adequately pleaded for cases involving copyright infringement see Bullen Leake Jacob s Precedents of Pleadings vol 2 Lord Brennan and William Blair gen eds Sweet Maxwell 14th Ed 2001 at para 66 Q1 The Respondent has found itself in a quandary having pleaded that the company is the author of the Tables and having maintained this stance throughout the High Court proceedings Had the Respondent merely pleaded to be the owner of the copyright as the presumed owner of the copyright assigned to it by its employees the Respondent would still have had the locus standi to maintain a claim of infringement against the Appellant The Respondent tried to salvage its case by initially submitting to this Court that the Respondent is both the author and owner of the Tables However in the course of the hearing of this appeal the Respondent abruptly changed tack and submitted that it was primarily arguing its case on the basis of ownership and alternatively authorship 93 Regrettably such a course was no longer open to the Respondent on the basis of its pleaded case and the conduct of the proceedings below It had unequivocally nailed its colours to the mast and the Appellant had contested the case on that basis The Respondent cannot now rely on an alternative claim of ownership which was neither pleaded nor advanced in the proceedings below Summary of the First Issue 94 In summary the concept of authorship is integral to copyright and no such protection can be accorded without an author from which an original work emanates and from which the legal rights flow We can do no better than to reiterate the views of Gordon J in Telstra at 35 A uthorship is central to the determination of whether copyright subsists To suggest that copyright does not require the identification of authors where a work is sufficiently original puts the cart before the horse It ignores the fact that it is the original work of an author or authors who contribute to the particular form of expression of the work and reduce the work to a material form that is the act giving rise to the statutory protection of copyright 95 As the Respondent could not identify a human author or authors and we find that an incorporated body cannot be an author of a copyrighted work we reject the Respondent s assertion that it was entitled to copyright protection qua author Accordingly we do not find that copyright subsists in the Tables The Second Issue If the Respondent is entitled to copyright protection has the Appellant infringed its rights 96 As we disagreed with the

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  • Hunter Manufacturing Pte Ltd and Another v Soundtex Switchgear & Engineering Pte Ltd and Another Appeal No 1[2000] 1 SLR 401; [1999] SGCA 88
    ground that there was no substantial novelty in the design Lindley LJ said at 1896 2 Ch 38 43 13 RPC 351 358 This Act is confined to designs applicable to manufactured articles and to the application of such designs to such articles Again the Act does not apply to the things to which a design is applied the Act applies to the design applied to them The distinction is obvious enough when the design is for a pattern or ornament but when as in this case the design is for the shape of a thing the distinction is reduced to the difference between the shape of a thing and a thing of that shape A design applicable to a thing for its shape can only be applied to a thing by making it in that shape A design for the shape of something is what is meant by s 60 when shape is in question and a registered design for a shape of a thing is infringed if that thing is made in the shape shown by the registered design see s 58 In Dover Ltd v Nurnberger Celluloidwaren Fabrik Gebruder Wolff 1910 2 Ch 25 27 RPC 498 where it was held by the Court of Appeal that the design of a hand grip for the handle of a bicycle was not new or original Buckley LJ said at 1910 2 Ch 25 28 27 RPC 498 503 From s 93 the definition section of the Patents and Designs Act 1907 I learn that a design means something which is applicable to an article by or any other means whatever manual mechanical or chemical Design means therefore a conception or suggestion or idea of a shape or of a picture of a device or of some arrangement which can be applied to an article by some manual mechanical or chemical means It is a conception suggestion or idea and not an article which is the thing capable of being registered It may according to the definition clause be applicable to any article whether for pattern or for the shape or configuration or for the ornament thereof that is to say of the article or for any two or more of such purposes The design therefore is not the article but is the conception suggestion or idea of a shape picture device or arrangement which is to be applied to the article by some one of the means mentioned in the definition clause It is a suggestion of form or ornament to be applied to a physical body 32 A design therefore is a conception of features of shape configuration pattern or ornament applied to an article and reduced to visible form so as to be identifiable either by being embodied in the actual article or by being placed upon it in such a way that they are clear to the eye In the present case we need only be concerned with the shape and configuration of the design Of shape and configuration Buckley LJ in Gramophone Co Ltd v Magazine Holder Co 1910 27 RPC 151 159 had this to say A design within the Act may be one applicable to an article for the shape or configuration That is the head under which this design falls These two words shape and configuration are not I think tautologous The word shape prima facie imports and certainly includes the external form of the article Configuration conveys the idea not of the external form only but of the construction of a composite article The word configuration imports the arrangement by which the shape of a composite article is arrived at 33 In order to be registrable a design has to satisfy two criteria under s 1 1 of the UK Act First there is the positive criterion which so far as relevant here is that the design has features of shape and configuration which in the finished article appeal to and are judged by the eye ie the eye appeal Second there is the exclusionary part which excludes features of shape and configuration which are dictated solely by the function which the article has to perform Applying the statutory definition here what we need to consider are the features of shape and configuration as applied to AMB box which appeal to and are judged by the eye but excluding from the design features which are dictated solely by the function the AMB box has to perform 34 Both these criteria the positive and exclusionary for determination of a design were considered by the House of Lords in AMP Inc v Utilux Pty Ltd 1972 RPC 103 which concerned a registered design of an electrical terminal used in washing machines The House held that the features of shape or configuration in the design of the terminal fell within the exclusionary provision and therefore the registration was invalid In dealing with the question of eye appeal of the terminal Lord Morris of Borth y Gest in his speech said at pp 112 113 The question is raised as to the sense in which the features in a finished article are to appeal to and are to be judged solely by the eye I think that it is clear that the particular feature which is in question or under consideration must be seen when the finished article is seen But the words of the definition point in my view to considerations other than that of merely being visible The phrases appeal to and judged solely by the eye denote features which will or may influence choice or selection The eye concerned will be the eye not of the court but of the person who may be deciding whether or not to acquire the finished article possessing the feature in question This does not mean that the appeal or attraction must be to an aesthetic or artistic sense though in some cases it may be The features may be such that they gain the favour of or appeal to some while meeting with the disfavour of others Beyond being merely visible the feature must have some individual characteristic It must be calculated to attract the attention of the beholder Thus Lord Avonside in one case GA Harvey Co London v Secure Fittings Ltd 1966 RPC 515 said that for a design to appeal it must be noticeable and have some perceptible appearance of an individual character In the same case he referred to what had been constructed as being of a distinctive shape or configuration which appeals to the eye and that shape or configuration is an addition to or embellishment of the fundamental form of such a unit and is not dictated solely by function In another case Swain Matthew Ltd v Thomas Barker Sons Ltd 1967 RPC 23 Lloyd Jacob J spoke of artistic variants which had imported genuine design characteristics and of a striking feature making an immediate appeal to the eye On the same issue Lord Pearson said at p 121 The phrase is naturally to be read as importing some limitation of the expression features of shape configuration pattern or ornament Not all such features constitute a design It is not reasonable to suppose that the only limitation is that the features are visible in the finished article If that had been the intention it could have been expressed much more simply The emphasis is on external appearance but not every external appearance of any article constitutes a design There must be in some way a special peculiar distinctive significant or striking appearance something which catches the eye and in this sense appeals to the eye His Lordship then dealt specifically with the design in question at pp 122 123 I will now consider the features of shape or configuration which are alleged to constitute the design in the present case The article in respect of which the designed is registered is called a terminal but in fact it forms an electric connection between two electric conductors On being merely looked at it does not make any appeal to the eye It has no feature of shape or configuration which is special peculiar distinctive significant or striking There is nothing in its appearance which catches the eye It is not intended to be looked at it is to form part of the interior mechanism of the washing machine and would not normally be seen by anyone except a maintenance engineer If it had any eye appeal that would be wasted but I do not think it has any An experienced electrical engineer if he examined it carefully before it was incorporated in a machine might be able to envisage it in operation and form some provisional opinion as to its probable efficiency when tested in operation But he would be judging it by the mind for efficiency not by the eye for appearance 35 Thus the test of eye appeal is not simply that of a mere visual appreciation which takes 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 merely be visible but also be noticeable and have some perceptible appearance of an individual character Function 36 The exclusionary part of the statutory definition was also considered by the House of Lords in AMP v Utilux It was argued that the exclusion only applies in cases where a design is created with features of a particular shape or configuration because of the function the finished article to which the design applied has to perform Thus if the function of the article requires the design to be created in a certain shape or with a certain configuration only then and only then are its features dictated solely by function It was shown there that in relation to the electrical terminals numerous alternative shapes of terminal could have been used for the relevant washing machines and it was therefore argued that the design of the respondents terminal was outside the exclusionary provision These arguments were roundly rejected for if they were correct the statutory exclusion would have virtually no effect Lord Reid said at p 109 The respondents argument is that a shape is only dictated by function if it is necessary to use that precise shape and no other in order to perform the function Admittedly if that is the meaning the scope of this provision would be reduced almost to vanishing point because it is difficult to imagine any actual case where one shape and one shape alone will work Lord Pearson at p 122 also rejected the argument that a shape is only dictated by function if it is necessary to use that precise shape and no other in order to perform the function and held that if the shape is not there to appeal to the eye but solely to make the article work then this provision the negative part of the definition excludes it from the statutory protection In his opinion the phrase dictated by in the statutory definition means attributable to or caused or prompted by 37 Where a shape is adopted by a designer upon the sole requirement of functional ends ie to make the article work and not to appeal to the eye then the provision excludes it from statutory protection Lord Morris said at p 113 In the present case the terminal was simply devised so that it should do the job It was to perform the function that was defined by Hoover s requirements The terminal is I think to be considered as and looked at as a unit But if its constituent parts are considered I think that on the evidence each one was solely devised so that it should correctly perform its own particular function There was nothing extra There was nothing that could be regarded as any kind of embellishment First and last and all the time the key note was functional success The terminals unseen in the machines for which they were required save by those who make or service the machines had only to pass the test of being able to perform their functions They would be judged by performance and not by appearance Then responding to the contention that the exclusion only applies where a designer has no option because of the function which the article has to perform other than to make it in one particular shape Lord Morris continued at p 114 I am unable to agree with this view The contrast pointed to in the concluding words of sub s 3 is between on the one hand features either of shape or of configuration or of pattern or of ornament which have been added or applied to an article because in the finished article those features will appeal to the eye and will be judged solely by the eye and not be judged by any other test such as that of utility or on the other hand features of shape or configuration pattern or ornament being now omitted which are purely functional or in other words features of shape or configuration only brought about by or relevant to considerations of the functions which the article to be made in that shape or configuration will have to perform In my view the features of shape of AMP s terminals are essentially within the latter grouping and they will not be withdrawn from that grouping even though there might be an alternative or other shapes of terminals which would also fall within such grouping 38 Finally of the argument raised by the respondents that as there could be variations of shape in terminals that would successfully do what was required of them the features of shape were not dictated solely by the function which the terminals would have to perform Lord Morris said at p 113 In my view this contention is not sound If there are alternative features of shape but if each one is dictated solely by the function which is to be performed by the article then each one would be excluded from the expression design Later his Lordship reverted to the same point and said at p 115 The circumstance that other shapes of other terminals might also be dictated by the function to be performed by them will not alter the fact that the shape of Amp s terminals was dictated only by functional considerations and not also by the added consideration of making an appeal to the eye 39 In order to be excluded from registration under the exclusionary part of the statutory definition ie features dictated solely by function it is necessary that all of the features of the design should be so dictated If some features are dictated by function and others are not and the features have eye appeal then the design is registrable This was one of the points decided by the Privy Council in the case of Interlego AG v Tyco Industries Inc 1989 1 AC 217 1988 RPC 343 to which we now turn 40 In that case the plaintiffs were the proprietors of the well known Lego bricks which are toys for children and are plastic bricks with round knobs and clutches which enable the bricks to be interlocked so that a child could construct buildings or other objects One of the issues raised was whether the design had any eye appeal not solely dictated by the function the bricks had to perform The Privy Council held that the actual shape and dimensions of the knobs and tubes were not dictated solely by the function of the bricks and that the bricks were designed in part at least with a view to the appearance of the article as a whole In other words the design incorporated mixed functionality and ornament Lord Oliver of Alymerton delivering the judgment of the Privy Council said at 1989 1 AC 217 242 1988 RPC 343 353 354 Nothing is to qualify as a design at all unless it has features which appeal to and are judged solely by the eye a requirement conveniently paraphrased by saying that the finished article must have eye appeal That much is clear from the definition What is less clear is the ambit of the exclusion There are apart from authority three possible constructions of the definition taken as a whole as was pointed out by Megaw LJ in the Court of Appeal in AMP Inc v Utilux Pty Ltd 1970 RPC 397 at p 433 It could mean that all that is registrable or is to be considered in connection with an application for registration is that part of the shape or configuration which has eye appeal any purely functional feature being excluded from registration Alternatively it could mean that any design which includes any feature which is dictated solely by function is to be excluded from registration Or finally it could mean that a design which ex hypothesi has eye appeal will be excluded from registration only if every feature of it is one which is dictated solely by function No one has contended for the first of these possibilities and such a construction would indeed make very little sense In approaching the definition it is always to be borne in mind what is to be registered It is a shape configuration or pattern to be applied to a particular specified article and it is the shape or configuration of the whole article in respect of which there is to be a commercial monopoly That necessarily involves taking the design and the article as a whole Thus the effective choice must be between excluding the whole shape or configuration from registration because there is a part of it that is purely functional or treating the whole shape or configuration as registrable assuming that it has eye appeal unless the whole of it is dictated solely by functional considerations In their Lordships view the latter construction is the one which makes better sense and it is in fact the construction which is supported by the authorities What is contemplated here is that an article and that must mean the whole of the article and not simply a part of it is to be made in a particular shape or configuration Thus the shape or configuration as a whole is being applied to the article as a whole It then has to be asked is that shape or configuration ie the shape or configuration of the whole article dictated solely by the functional purpose Moreover it makes no sense to exclude from registration designs for articles which have and indeed may be intended to have as their principal attraction a distinctive and novel appearance merely because they contain also features perhaps even very minor ones which are dictated by functional requirements His Lordship then considered the decision of the House of Lords in AMP and stated the principles to be deduced from it as follows at 1989 1 AC 217 243 244 1988 RPC 343 355 First the primary essential before a shape can be registered as a design is that it should have eye appeal and in this context a the eye is that of the prospective customer and b the appeal is that created by a distinctiveness of shape pattern or ornamentation calculated to influence the customer s choice Secondly the negative part of the definition does not involve in order to demonstrate that a particular shape is dictated solely by function showing that the function could not have been performed by an article in some other shape All that has to be shown is that the relevant features of the shape were brought about only by or are attributable only to the function which the article in that shape is to perform even if the same function could equally well be performed by an article of a different shape Thirdly if every feature of the shape is one which is attributable solely to the function which the finished article is to perform then the exclusion operates even though the shape may also have eye appeal 41 Dealing with the design in question Lord Oliver said at 1989 1 AC 217 248 1988 RPC 343 359 Thus although the presence of knobs and tubes is no doubt attributable simply and solely to the functional purpose of providing clutch power the actual shape and dimensions of the particular knobs and tubes employed for that purpose were not dictated solely by their function but in part at least with a view to the appearance of the article as a whole This evidence cannot be ignored and in their Lordships view it necessarily negatives any conclusion that the shape or configuration of the Lego brick is dictated solely by the function which it has to perform It is a shape which in their Lordships opinion not only clearly has eye appeal but has also significant features both of outline and proportion which are not dictated by any mechanical function which the article has to perform as part of a construction set Design of AMB box 42 We now turn to the question whether the registered design in this case as applied to the AMB box possesses features of shape and configuration which appeal to and are judged by the eye The essence of the eye appeal as derived from AMP v Utilux and Interlego v Tyco supra is the distinctiveness of shape or configuration calculated to influence the customer s choice It is not sufficient that the features in question be merely visible there must be something special peculiar distinctive significant or striking about them something calculated to attract the attention of the beholder or which may or will influence the choice or selection by customers The registered design here as embodied in the AMB box is not merely visible it is more than that It has an individuality of appearance and is calculated to attract the attention of the beholder and influence the choice or selection by customers As embodied in the AMB box the design reveals an article which is functional yet attractive This is apparent from the way in which it is constructed its shape and configuration its modular sections and streamlined proportions 43 Turning to the exclusionary part of the statutory definition the trial judge arrived at the conclusion that the registered design was not dictated solely by the function the meter box has to perform In our opinion this conclusion is correct The trial judge was further of the view that there can be any number of designs that can perform the same functions and that appeared to be one of his reasons for the conclusion he arrived at However in our view the fact that there can be any number of designs that can perform the same functions is not a valid or sufficient reason It does not necessarily follow that because alternatives to the registered design exist the registered design is not dictated solely by the function the AMB box has to perform The crucial question here is whether this particular registered design is dictated solely by the function which the AMB box has to perform The answer is clearly in the negative In our judgment for the reasons given the features of shape and configuration of the registered design as manifested in the AMB box have eye appeal and are not dictated solely by the function the box has to perform The finding of the trial judge on this point is correct Novelty at the date of application for registration 44 We now turn to the second requirement for registrability of a design under the UK Act which is that the design is new at the date of application for registration This is governed by sub ss 2 and 4 of s 1 which so far as relevant are as follows 2 A design which is new may upon application by the person claiming to be the proprietor be registered under this Act in respect of any article or set of articles specified in the application 4 A design shall not be regarded as new for the purposes of this Act if it is the same as a design a or b published in the United Kingdom in respect of the same or any other article before the date of the application or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade In considering the application of these provisions to the case at hand two questions arise first whether the registered design was anticipated by any prior art and second whether there was any prior publication of the design Prior art 45 The prior art which counsel for Soundtex contends anticipated the registered design was the design for the SMB III box which was in use prior to the application for registration of the design of the AMB box It is contended that the design of the AMB box is the same or substantially the same as that of the SMBIII box The SMB III box had been in existence since 1993 and had been used in the HDB tender documents since 1994 The SMB III box is also rectangular in shape but larger than the AMB box with the MCB and the isolator being housed at the top with two flaps respectively for gaining access to them and the kilowatt meter at the bottom with a protrusion having a window with a perspex or glass cover so as to enable one to read the meter without opening the box The trial judge found that when the two designs were compared there are sufficient differences between the SMB III box and the AMB box to prevent the former from constituting prior art These differences are a the SMB III box has only one compartment as opposed to two in the AMB box b the flaps in the SMB III box for the MCB and the isolator are more squarish compared to the rectangular flaps in the AMB box c the protrusion in the SMB III box is greater than that in the AMB box and has a different angle d the SMB III box has protruding gland plates while those in the AMB box are flush and e the SMB III box has a protrusion at the top for the hinge which the AMB box does not have If the two designs are placed side by side one can immediately notice that they are different 46 Counsel for Soundtex challenges this conclusion It is argued that the differences enumerated did not relate to the shape or configuration of the registered design and that the registered design of the AMB box is the same or substantially the same as that of the SMB 111 box and that it differs from the latter only in immaterial details or in features which are variants commonly used in the trade Consequently there is no substantial novelty in the registered design compared to the SMB III box 47 Counsel for the plaintiffs on the other hand repeats the differences set out by the trial judge and further points to the features of shape and configuration present in the registered design which are not found in the SMB III box They are as follows Front view a The registered design comprises a rectangular box the main box with two rectangular covers demarcating two compartments b there is a substantial depressed gap between the top and bottom covers c the top and bottom covers do not cover the entire front view of the main box d the edges of the top and bottom covers corresponding to the edges of the main box are not flush with the respective edges of the main box e there are no protrusions at the top bottom or sides of the registered design and f there are two slim flaps on the top cover separated by a space of equal width Top and bottom views a There are no substantial protrusions or depressions on the top or bottom and b there are two gland plates on the top Side view a There are two compartments and b there is a depressed gap between the top and bottom covers of the two compartments 48 We do not agree with the contentions of counsel for Soundtex that the differences identified by the trial judge did not relate to the shape or configuration of the registered design They clearly do Looking at the two designs and comparing them as the trial judge did it is immediately apparent to us that the registered design as manifested in the AMB box possesses sufficient differences to set it apart from that as manifested in the SMB III box The trial judge pointed out five differences between the AMB and the SMB III box and there are other differences pointed out by counsel for the plaintiffs The most material differences are the following First the striking feature which is present in the AMB box but absent in the SMB III box is the division into two compartments with a clear and distinct dividing space between them The upper compartment contains the MCB and the isolator and the lower contains the meter with a protrusion The plaintiffs have termed this division as the hallmark of their modular design Second the structure and proportions of the two compartments of the AMB box and the protrusion with the perspex cover at the window give it a neater more elegant and streamlined look compared to the SMB III box In our judgment there is sufficient novelty in the registered design It cannot be said that the design of the AMB box differs from that of the SMB III box in immaterial details or in variants commonly used in the trade Prior publication 49 The next challenge mounted by Soundtex to the novelty of the registered design is that there were prior publications of the design before the date of application for registration They rely on the following instances of prior publication a Hunter s sale of the AMB box to ABB b submission by Hunter ABB of the AMB box to the PSB for testing c the derivation of the registered design from the HDB tender specifications 50 In connection with this issue it is relevant to refer to sub ss 1 and 3 of s 6 of the UK Act which provide 1 An application for the registration of a design shall not be refused and the registration of a design shall not be invalidated by reason only of a the disclosure of the design by the proprietor to any other person in such circumstances would make it contrary to good faith for that other person to use or publish the design b the disclosure of the design in breach of good faith by any person other than the proprietor of the design or c in the case of a new or original textile design intended for registration the acceptance of a first and confidential order for goods bearing the design 3 An application for the registration of a design shall not be refused and the registration of a design shall not be invalidated by reason only of the communication of the design by the proprietor thereof to a government department or to any person authorised by a government department to consider the merits of the design or of anything done in consequence of such a communication Sale by Hunter to ABB 51 The first instance of prior publication was the sale by Hunter of the AMB box The contract for the sale was evidenced by the two letters one by Hunter to ABB dated 6 June 1996 offering the components of the AMB box for sale and the other by ABB to Hunter dated 11 June 1996 in reply accepting the offer The trial judge held that this sale was not a prior publication of the AMB box and that what transpired between Hunter and ABB were discussions between them with a view to improving or perfecting the design and such discussions would be treated as confidential He referred to the case of Nevill v John Bennett Sons 1898 15 RPC 412 Also considered by the trial judge were Blank v Footman Pretty Co 1888 39 Ch D 678 5 RPC 653 Carflow Products UK v Linwood Securities Birmingham 1996 FSR 424 and Sommer Allibert UK Ltd v Flair Plastic Ltd 1987 RPC 599 52 Before we proceed further it would be helpful at this juncture to consider these cases In Nevill the plaintiffs who were the proprietors of a registered design brought an action against the defendants for infringement of their design One of the defences raised was that there was a prior publication of the design and accordingly the design was not new at the date of the application for registration The alleged prior publication arose in this way The plaintiffs had commercial dealings with one Fotiadi in Constantinople and in their course of dealings the latter sent to the plaintiffs a design which he thought would be desirable to be applied to goods for sale in Persia The plaintiffs then worked on the design and put it into a suitable practical form which was later approved by Fotiadi After approval the plaintiffs applied for the design to be registered and it was registered with the plaintiffs as the registered proprietor The defendants relied on such collaboration between the plaintiffs and Fotiadi as a prior publication Hall VC in rejecting this argument said at p 414 I n this case where everything was private and there was mere collaboration between Fotiadi through his agent Stelfox and the plaintiffs with a view to the design being put into a suitable and workable shape which was to be the property of the plaintiffs but to be engaged as was said for the use of Fotiadi in the Persian market to say that that private consultation that private working together amounted to prior publication seems to me to be entirely unfounded The idea of prior publication I quite believe is where a matter of that kind has been thrown upon the public knowledge and has become a matter of public knowledge not necessarily extensively but otherwise than in the way of private preparation which I have mentioned and it seems to me that a publication of that kind is altogether a different matter to what took place on this occasion 53 In Blank the plaintiff created a design and showed samples of the design to one Hummel who was his commission agent for the purpose of ascertaining whether the design would be attractive to potential customers Hummel took some samples and showed them to his main customers and actually obtained orders for considerable quantities of the material to which the design was applied But the orders were executed only after registration of the design It was held by Kekewich J that the showing of the samples of the design by the plaintiff to Hummel was communication of a confidential character being a necessary incident to the relation between the two parties and therefore did not amount to publication He held at 1888 39 Ch D 678 680 681 5 RPC 653 655 Mr Hummel has an interest in any design of Mr Blank s in goods of this class and though he is not a partner or in any way a partner he has that interest which makes him a person whom Mr Blank would naturally consult before endeavouring to put any of that class of goods on the market Mr Blank therefore having sketched this design shows it

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  • Sebel Furniture Ltd v Tiong Hin Engineering Pte Ltd[1999] 2 SLR 662; [1998] SGHC 350
    the eye and that will have to be my eye but I think that the eye of the customer or potential customer would not judge them any differently I have quite unhesitatingly come to the conclusion that the design applied to Tiong Hin s Dover chair is substantially different from the UK registered design In my judgment Sebel s exclusive right in the UK registered design of the Wide Program chair has not been infringed by making or selling the Dover chair or anything to do with it 24 Counsel for Tiong Hin has invited me to apply two other tests for infringement In Valor Heating Co Ltd v Main Gas Appliances Ltd 1973 RPC 871 the contest was between the designs applied to two gas fires or heating appliances Whitford J said at p 878 in the past in considering registered designs this court has taken the view that you must consider infringement not merely upon the basis of a side by side comparison but also upon the basis of having had a look at the registered design then having gone away and come back and perhaps been put in a position of deciding whether some other article is the one you originally saw He went on to say immediately following that I think myself in the end that these are really the factors that one has got to bear in mind when one is considering the question as to whether or not there is a substantial difference He came to the conclusion that the designs were substantially different and I think he did that on the basis of what was really a side by side comparison 25 I think it is right that in considering whether there is or is not a substantial difference I should bear in mind the concept of what is commonly and quite appropriately called imperfect recollection At the same time I should also bear in mind that a customer s recollection may be related to or influenced by functional features which are excluded in design copyright In the case before me I do not think I can say any more There is no evidence that any customer or potential customer had seen a Wide Program chair and having gone away and seen a Dover chair had found himself in a position to decide if the Dover chair was the Wide Program chair he had originally seen It is impossible No Wide Program chair has been commercially made but I have had the advantage of having seen the prototype of the Wide Program chair in the course of the trial I have taken account of these matters and I am satisfied that my conclusion as to the design applied to the Dover chair being substantially different from Sebel s UK registered design remains unaffected 26 In Dunlop Rubber Co Ld v Golf Ball Developments Ltd 1931 48 RPC 268 the contest was between the plaintiff s registered design for a golf ball and the design applied to the defendant s golf ball The statement of novelty said that novelty lay in the division of the surface by quadrangular figures into six equal areas and the division of those areas by a lattice pattern forming a four pointed star in the middle of each area Farwell J said at p 281 Now in a case where the registered Design is made up of a pattern which has no one striking feature in it but it appeals to the eye as a whole it may very well be that another design may be an imitation of it which makes the same appeal to the eye notwithstanding that there are many differences in the details It may well be that that is so but I think conversely it is true to say that if a design has in it a striking feature which catches and holds the eye and which is the one thing that strikes the eye when one looks at the design a design which otherwise may be like a registered design but which eliminates the striking feature or alters it so that it is not recognisable in such a case it seems to me it is impossible to say that one is an imitation of the other The striking feature in the registered design was the four pointed star 27 In Sommer Allibert Slade LJ cited this passage from the judgment of Farwell J and said at p 626 In the same way to our eyes and in our judgment the design of the back and lumbar gap of the Madrigal chair are the principal differences which distinguish that chair from the Sonata chair and indeed from the various specimens of the prior art which we have seen The marked differences between these particular features struck us at once and have continued to impress us throughout the case Features in the backrest of the Madrigal chair were found to be striking 28 I have referred to the differences between the Wide Program chair and the Dover chair They are substantial I have seen the chairs throughout the hearing and these differences have struck my eye and left an impression on me I am not sure that in such a case it would be necessary or useful to apply what is commonly referred to as the striking feature test but there are three particularly striking features The first is the overall rounded appearance of the Wide Program chair created by the line of the opening in the backrest the muscles on the two supports the rounded shoulders of the backrest and the rounded front corners of the seat The second is the forward appearance of the chair created by the arrangement of the legs The third is the fold over of the front edge of the seat which sweeps back at the sides to house sockets for the legs I think that these are striking features of the UK registered design which distinguish it from the design of the Dover chair and in my judgment Sebel s exclusive right in the registered design has not been infringed Counterclaim 29 I think it is convenient to consider the counterclaim now Tiong Hin says that on 23 May 1994 the date of registration of the UK registered design it was not new Section 1 2 of the UK Act provides A design which is new may upon application by the person claiming to be the proprietor be registered under this Act in respect of any article or set of articles specified in the application Section 1 4 provides A design shall not be regarded as new for the purposes of this Act if it is the same as a design b published in the United Kingdom in respect of the same or any other article before the date of the application or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade Section 11 2 provides At any time after a design has been registered any person interested may apply to the registrar for the cancellation of the registration of the design on the ground that the design was not at the date of the registration thereof new or on any other ground on which the registrar could have refused to register the design and the registrar may make such order on the application as he thinks fit 30 Section 4 of the Singapore Act provides The High Court shall have power upon the application of any person who alleges that his interests have been prejudicially affected to declare that exclusive privileges and rights in a design have not been acquired in Singapore under the provisions of this Act upon any of the grounds upon which the United Kingdom registration might be cancelled under the law for the time being in force in the United Kingdom 31 Tiong Hin s case is that the Original Program chair has been sold in Singapore since 1990 The evidence is that it has been sold in Singapore since 1987 but nothing turns on that If the UK registered design is the same as the design applied to the Original Program chair or if it differs only in immaterial details or in features which are variants commonly used in the trade then at the date of registration of the UK registered design and for some years before that the design was not new 32 In Ang Lay See v Solite Impex Pte Ltd 1998 2 SLR 365 Yong Pung How CJ said at para 34 at p 376 In the present appeal the sole issue before us was whether the lack of novelty of a design in Singapore as opposed to the lack of novelty of the same design in the UK would be sufficient ground for the High Court to declare under s 4 of the local Act that exclusive privileges and rights in the registered design have not been acquired in Singapore On this issue s 4 of the local Act is ambiguous While it may be suspect whether the legislature could have intended or possessed the purpose to include the lack of local novelty as a ground for cancellation Parliament could not possibly have intended the registration and subsequent protection in Singapore through registration in the UK of designs commonplace in Singapore Such a result would strike at the core object of design legislation and introduce undesirable counter mischiefs The grounds therefore upon which the High Court s powers pursuant to s 4 of the local Act are to be exercised must be read to include the local equivalents of the grounds applicable to the cancellation of registrations in the UK The High Court s powers under s 4 of the Singapore Act may be exercised upon a ground which is the local equivalent of a ground upon which UK registration might be cancelled under the UK Act UK registration might be cancelled on the ground that the design was not at the date of registration new s 11 2 The design was not new if it had been published in the United Kingdom s 1 4 I think clearly the local equivalent of this ground for cancellation is that the design was not at the date of registration new and it was not new if it had been published in Singapore 33 I allowed an amendment to the particulars of objections to the validity of Sebel s UK registered design at the commencement of the trial and Mr Payne gave this evidence in examination in chief Q Difference P 2 and chair depicted at AB 232 Note P 2 is the Original Program chair and the chair depicted at AB 232 is the chair of which the Wide Program chair is the prototype A 1 Edge profile Perimeter of backrest and perimeter of seat In AB 232 For appearance 2 Muscle of either side of chair between seat and backrest In AB 232 To give smooth transition between seat and backrest and to aid function of flexing Q Muscle A This part rises above profile Looks stronger Q Other differences A 3 Smile Note The smile refers to the opening in the backrest which is not unlike the parting of the lips when a person smiles 4 Shoulders and front of seat rounded 5 30 mm wider 6 Rib detail AB 235 Underside of seat of the same chair The differences are quite apparent See figures 1 3 10 and 12 34 Counsel for Tiong Hin submitted that because the statement of novelty claimed that the novelty of the design lay in the shape and configuration of the chair as shown in the representation at AB 232 and AB 235 I should ignore the differences in the edge profile the muscles and the smile because they are finishes and are not covered by the statement of novelty The argument is that these features are neither shape nor configuration 35 I am unable to agree Configuration means an arrangement of the parts or elements in the design and in the UK Act design means features of shape configuration pattern or ornament applied to an article by any industrial process being features which in the finished article appeal to and are judged by the eye See s 1 1 All the features associated with the edge profile the muscles and the smile are parts or elements in the design applied to the Wide Program chair and they are features of shape and configuration and are covered by the statement of novelty 36 As to the rounder and softer appearance and the chair being wider counsel for Tiong Hin relied on Mr Hyde s evidence that the Wide Program chair and the Original Program chair have the same basic appearance All I need to say is that the Wide Program chair is rounder and softer in appearance as can be seen and it is seen to be wider and is in fact wider by 30mm As to the ribs on the underside they are functional features but it can be seen that they are also different 37 Tiong Hin has not made good its case that the UK registered design was not new at the date of registration The UK registered design had not at that date been published in Singapore It differs substantially from the design applied to the Original Program chair No other ground upon which the UK registration might be cancelled has been alleged and in my judgment Tiong Hin is not entitled to a declaration that it is invalid or an order that exclusive privileges and rights in the UK registered design have not been acquired in or extended to Singapore Copyright Drawings of seat shell 38 Mr Payne said in his first affidavit I am the person who drew the drawings being sheets 1 and 2 of two sheets of drawings of Part No 7406 I have seen the Original Program chair and say it is a faithful reproduction of my drawings The legend on sheet 1 included the statement Drawn KP 26 9 84 Mr Payne said KP were his initials The Original Program chairs were first sold in Australia in mid 1986 I think Mr Payne made the drawings in September 1984 and I find accordingly He is an Australian citizen and has been employed by Sebel since 1981 At the time the drawings were made he was in charge of the drawing office within the research and development department These drawings are of the seat shell of the Original Program chair 39 Section 27 of the Copyright Act provides 1 Subject to the provisions of this Act copyright shall subsist in an original artistic work that is unpublished and of which the author a was a qualified person at the time when the work was made 2 Subject to the provisions of this Act where an original artistic work has been published a copyright shall subsist in the work if but only if c the first publication of the work took place in Singapore d the author of the work was a qualified person at the time when the work was first published 4 In this section qualified person means a citizen of Singapore or a person resident in Singapore Artistic work means a drawing and drawing includes a plan See s 7 40 It is not disputed that the two sheets of drawings of Part No 7406 are artistic works and that the provisions of the Copyright Act apply to Australia and to Australian citizens No evidence has been adduced as to the works being anything other than original and unpublished when they were made or as to the works not having been first published in Australia Mr Payne the author of the drawings was in charge of the drawing office within the research and development department of Sebel and I find that the drawings were made by him in pursuance of the terms of his employment In my judgment copyright subsists in the drawings of the seat shell of the Original Program chair and Sebel is entitled to the copyright See s 30 6 41 Section 15 3 provides For the purposes of this Act an artistic work shall be deemed to have been reproduced a in the case of a work in a two dimensional form if a version of the work is produced in a 3 dimensional form and the version of the work so produced shall be deemed to be a reproduction of the work Section 26 1 provides For the purposes of this Act unless the contrary intention appears copyright in relation to a work is the exclusive right b in the case of an artistic work to do all or any of the following acts i to reproduce the work in a material form The copyright in an artistic work is infringed by doing in Singapore without the consent of the owner any act comprised in the copyright See s 31 1 42 Sebel s case is that Tiong Hin has without its consent reproduced the drawings of the seat shell of the Original Program chair in a material form by producing a version of the drawings in a three dimensional form in the seat shell of the Dover chair The submission is that Tiong Hin had access to Sebel s drawings and that an inference can and ought to be drawn that the drawings had been copied 43 There is no evidence that Tiong Hin had access to the drawings or that anyone of its officers or anyone it had any dealings with even knew that the drawings or copies of them existed Counsel referred to LB Plastics Ltd v Swish Products Ltd 1979 RPC 611 where Lord Salmon said at p 633 There was of course no direct evidence from any witness that he had seen the defendants employees copying the plaintiffs drawings directly or indirectly but evidence such as that is hardly to be expected and indeed can rarely have been heard of in a case of infringement of copyright The inference drawn by the learned judge was drawn from what I regard as overwhelming circumstantial evidence from which in my view no other inference could properly have been drawn The evidence that is before me is that Mr Goh the managing director of Tiong Hin had seen a chair like the Original Program chair in 1992 and 1993 in Singapore and had not known any other chair then which had a flexi back ie a flexible or pivotable backrest 44 In Swish the plaintiff LB Plastics designed and manufactured a plastic knock down drawer system known as the Sheerglide Much of its business was done with furniture makers who purchased Sheerglide drawers in component form for the purpose of fitting into carcases of their own manufacture One such customer was Grovewood Products Ltd a company linked to the defendant by common share ownership The court found that from the start the defendant had specimens of the Sheerglide drawers and at a later stage copies of quite a number of the plaintiff s drawings and the prime object of the defendant was to produce a very similar type of drawer There was even a memorandum from the development manager of the defendant to its technical director under the heading Patents and Registered Designs on KD Drawers and Fittings with Particular Reference to LB Plastics which contained this statement I also raised once again the possibility of minor changes to the LB design which could possibly get around any patents and registered designs which they or any others may have on the LB principle 45 There was as observed by Lord Salmon overwhelming circumstantial evidence There was much more circumstantial evidence than I have pointed out above See the judgment of Whitford J at first instance from p 574 for a fuller statement and analysis of the evidence The evidence before me is not anything approaching that but counsel for Sebel invited me to consider what he submitted was the circumstantial evidence from which I should infer copying 46 It was submitted that Mr Goh had the opportunity to copy As I have observed earlier Mr Goh had seen a chair like the Original Program chair and had not known any other chair that had a pivotable backrest I think what he had seen must have been the Original Program chair That was in Singapore in 1992 and 1993 47 Mr Goh said in his first affidavit that since 1991 he had noticed the potential for flexi back chairs as he calls them He said he came to know that in Italy they were making such chairs as far back as 1988 In June 1991 Tiong Hin received an inquiry from its Hong Kong office about an invitation to tender for the supply of 180 moulded plastic shell chairs with built in tilting on backrest The accompanying specification had an illustration showing a chair with a central opening in the backrest to create two supports at the outer edges In late November 1993 he was in China and Taiwan In China he saw similar flexi back chairs on display at a trade fair and in Taiwan he came across such chairs which were being marketed The relevant pages of the catalogues for Italy China and Taiwan are agreed documents and they all show chairs with a central opening in the backrest which define two supports at the outer edges of the backrest I should mention that Sebel did have dealings with the publisher of the Taiwan catalogue but terminated the relationship because as Mr Hyde said the Taiwan party had fabricated an imitation of the Original Program chair but action could not be taken as Sebel s copyright was not recognised in Taiwan 48 I return to Mr Goh s evidence He said in his affidavit that Tiong Hin then took the decision to adopt the concept of chairs with a built in mechanism for tilting and to produce their own design range of plastic flexi back chairs He visited a toolmaker in Taiwan who had designed and made moulds for Tiong Hin the past ten years Under cross examination he said he brought with him five or six seat shells of Tiong Hin s Daglo 812 plastic moulded chair One such chair was produced as exh D 3 The Daglo 812 seat shell like that of the Dover chair is moulded as one unit with the seat swept upward to form the backrest but there is no opening in the backrest of the Daglo 812 49 Under cross examination Mr Goh said Q Why brought D 3 seat shell A Wanted Mr Lee of Wen Chin Mould Making Industries to modify D 3 to make flexi back seat shell Q Easier to bring flexi back chair to show Mr Lee what you wanted A Not necessary I wanted to modify our own product Q Easier To bring flexi back chair to show him A Yes Witness requests question to be repeated Yes but I could not get hold of one Q If able to get hold of one you would have got it A Yes I might but I would not use that as sample I would still modify our own product Q Why not go out and buy one Original Program chair A No Could not get one from the market He also said Q Seen design for this shape elsewhere March 1994 A Saw pictures of chairs of such shape in Taiwan From some magazines Also chairs of this shape in exhibition in China Also saw chairs this shape in Singapore Q Which chairs in Singapore A Like P 2 Note Exhibit P 2 is an Original Program chair Q You could remember this chair when in Taiwan A Yes Q In fact you discussed this chair with Mr Lee in Taiwan A No I drew sketch and showed him Q What you sketched A Sketch of shape of chairs I saw of similar shape in Taiwan China and also Singapore Also told him chairs of this shape in Italy Q You actually drew sketch in Taiwan Similar to shape of P 2 A Quite close Q Any difference chairs you saw in magazines in Taiwan and P 2 A Similar No doubt it would have been easier to bring a flexi back chair to show the toolmaker as Mr Ravindran submitted but that as will be seen would not be either necessary or practical 50 Mr Goh said later in cross examination that he and the toolmaker Mr Lee carried out experiments which involved cutting a hole in the backrest of the seat shell of the Daglo 812 He said Witness demonstrates Hole cut in backrest Experimented by sitting and rocking Adopted design in D 4 Note Exhibit D 4 is a Daglo 812 chair with an opening cut in the backrest produced as an illustration Decided to adopt this design because curve would support my back when I sit down Upper lip of smile supports my back when I lean back I found backrest angled backwards too much so that when I leaned back and it tilted it was not very comfortable I decided to straighten backrest Also I found height too low I decided to increase height as well Backrest too curved I also decided to flatten it with only slight curve With new design whole backrest will support my back I added two screws to secure seat to legs on underside to make it more stable As I added two screws I added three lines of ribs When I experimented I found two bending sides not strong enough I decided to add two supports behind backrest to strengthen those parts Initially only two blocks were added without holes Later through experiments I found supports without holes flexibility restricted Decided to have holes in supports Even with holes I was not satisfied with flexibility I decided to add cut lines across supports I also decided to add lines to supports in front of backrest Purpose of lines to increase strength Also to camouflage loss of colour arising out of tilting over long period of time Colour might not fade but this is done only as preventive measure in case it happens Lines added will give someone feeling whole backrest flexible Return of top edge of backrest made longer for easier handling From D 4 arrived at design in D 1 Width of backrest also increased Mr Goh was not asked and he did not say why he wanted to modify Tiong Hin s existing product but it is plain to see the obvious advantages since strength and flexibility of the backrest and the supports were important factors to be considered and he would know the strength and flexibility of the plastic used in the Daglo 812 51 All that Mr Goh needed to show the toolmaker was a seat shell with a backrest which had a central opening to create two supports at the outer edges It might have been easier if he had with him a chair like the Original Program chair to show the toolmaker but it is not necessary and there can be little purpose in doing that if he was going to cut an opening in the backrest to experiment with The opening would have had to be cut differently to achieve the support for the back from the upper lip of the smile Mr Goh drew a sketch to show Mr Lee A seat shell having a backrest with an opening at some point above the base of the seat shell is not difficult to sketch The shape was similar or quite close to that of the backrest of the Original Program chair It was similar to that of chairs Mr Goh had seen in Taiwan China and Singapore He also told Mr Lee about chairs of this shape in Italy Obviously by shape he meant chairs with an opening in the backrest to allow the backrest to pivot He had seen the potential for such chairs That potential was what he set out to exploit He wanted to make a flexi back chair 52 Mr Ravindran also referred to what he said were stark similarities I am unable to see such similarities Both seat shells are moulded in one piece and both have a central opening in the backrest The supports for the upper backrest have horizontal lines across the front And there the similarities end But if a customer or a user were to look at the two chairs it would not be these broad similarities which would strike him or appeal to his eye but rather the differences 53 I think it is convenient to begin with Mr Payne s evidence first as regards the differences Under cross examination he said Q D 1 P 2 Difference A Appearance Shape of smile D 1 has 9 stripes on each side in flex area Flexing device different Rear view in particular Arrangement of legs different Q D 1 Has higher back A Witness views both chairs together Yes Q D 1 P 2 P 2 wider Front profile A Would say D 1 looks slightly wider Q Side Left profile Legs Different A Said different Q Clearly seen D 1 sits on base of legs but in P 2 legs go into P 2 A Agree Q Tilting mechanism of P 2 more conspicuous than in D 1 A Would say D 1 more conspicuous More lines Q Back profile Difference that strikes you A Tilting area and leg arrangement Q Inverted plan view Difference that strikes you A Rib configuration due to different leg configuration Q Another difference in P 2 slots for legs but not in D 1 A Agree Q Holes for screws to secure seat to legs in D 1 A Yes Six holes 54 The shape of the smile is completely different I have described the opening in the Dover chair In the Original Program chair it is much wider and is gently curved upwards at the sides There are only five stripes on each of the supports See figures 2 and 3 The flexing device is different In the Original Program chair a plastic mould is fitted into the back of the support This backing mould defines the horizontal axis about which the upper backrest pivots In the Dover chair a plastic mould is also fitted onto the back of the support but this mould has a number of holes in it and horizontal lines or troughs across it resulting in the upper backrest responding differently The moulds in the two chairs look as different as they are different See figures 8 and 9 They are in the location which Mr Payne referred to as the tilting area The arrangement of the legs is different In view of these differences it is altogether not surprising that Mr Payne said that the appearance was different and that was the first thing he said when he was asked about the difference between the two chairs 55 The back of the Dover chair is higher Its top edge is about 15mm higher than that of the Original Program chair measured from the base of the seat shell Mr Payne was absolutely right when he said that it was the Dover chair and not the Original Program chair that looked wider The Dover chair is wider It is 425mm at the base of the seat shell and the edges of the backrest taper in straight lines very nearly to the top edge at which point the backrest is 395mm wide It is almost rectangular The base of the backrest of the Original Program chair is slightly narrower at 400mm The outer edges then taper in straight lines to about the top edge of the supports for the upper backrest at which point the backrest is 394mm wide From that point up the edges of the backrest taper not in straight lines but in a gentle inward curve towards the top edge rounding off at the shoulders At that point the backrest is only 356mm wide 56 The legs are different In the Original Program chair the legs fit into sockets moulded as part of the seat shell I have referred to the arrangement of the legs when pointing out the difference between the Wide Program chair and the Dover chair Like the Wide Program chair the Original Program chair has an equally forward appearance when viewed from the side See figure 6 The difference is that the legs of the Original Program chair are centrally located while in the Wide Program chair they are more forward of the seat shell 57 Mr Payne correctly pointed out in his second affidavit that the socket arrangement for the legs enabled the Original Program chairs to stack closer together than the Dover chairs The consequence is that Dover chairs stack to a greater height than the same number of Original Program chairs This represents a significant advantage of the Original Program chair over the Dover chair in terms of storage and shipment including transportation by road vehicles 58 The Daglo 812 chair has the same arrangement for the legs as the Dover chair The seat shell is secured to a platform on the four legs Mr Goh did not deal with this matter in his affidavit and he was not cross examined on it If Tiong Hin copied the Original Program chair then it must have known about the socket arrangement for the legs but nevertheless it deliberately deprived itself of this advantage Not incorporating the socket arrangement for the legs might be an error in copying as Mr Payne suggested in his affidavit but if the Dover chair was developed from the Daglo 812 as Mr Goh said by experimenting with it and without copying then he and those he worked with in Taiwan might not have appreciated the advantage and the potential saving in cost of manufacture The same arrangement for the legs appeared to have been just carried over into the Dover chair I shall refer to this again later 59 Mr Ravindran submitted that there was motivation in Tiong Hin having a chair with a flexible backrest I have referred to the evidence and it seems clear that from about 1991 Mr Goh saw a potential for such a chair and later Tiong Hin set out to exploit that potential The Hong Kong inquiry was in 1991 A prototype of the Dover chair was available in April 1994 On 29 June 1994 Tiong Hin submitted a tender to supply chairs to Temasek Polytechnic I agree that Tiong Hin was motivated by the potential that Mr Goh saw for a chair with a flexible backrest 60 Mr Ravindran submitted that Tiong Hin s account of the development of the Dover chair was incredible He said that Sebel with a research and development team spent some 5 000 man hours between 1982 and 1986 to design the Original Program chair but according to Mr Goh he took much less time and had less people working on it That may well be so but there are no substantial similarities between the two chairs They are different and they appear different and there is no occasion for Tiong Hin to have to explain how it came up with its own design See Swish at p 621 per Lord Wilberforce and see also Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd 1994 FSR 275 at pp 296 297 per Jacob J Nevertheless I shall consider this part of the evidence 61 Mr Payne said in his second affidavit Between 1982 and 1984 when the Original Program chairs were designed the Research and Development Department consisted of eight persons We

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  • Risis Pte Ltd v Polar Gems Pte Ltd and Others[1995] 1 SLR 88; [1994] SGHC 184
    of similarity between the plaintiffs products and the defendants products Second there is little or no significant similarity between the plaintiffs product and the registered design or P 22 Third there is little or no significant similarity between the defendants products and the registered design or P 22 Fourth there is a significant similarity between the registered design and P 22 Finally following from the above there is a significantly greater degree of similarity between the plaintiffs and defendants products on the one side than there is between either the plaintiffs products or the defendants products and either the registered design or P 22 The relevant indicators of similarity and differences are the shape of the petals the spacing between the petals the size of the petals in relation to the object as a whole the positioning of the top side petals and the bottom side petals and finally the general shape and appearance and what I would call the visual feel of the object as a whole By top side petals I mean the pair of petals on either side of the object just below the petal at the top By bottom side petals I mean the pair on either side of the object below the top side petals Plaintiffs vs defendants products 11 I start with a comparison between the plaintiffs and defendants products on the one hand and the registered design and P 22 on the other In the first place in both the plaintiffs and defendants products the top petal and the two upper side petals are clearly separated so by and large are the two top side petals from the bottom two This separation is not evident in the registered design except to a limited degree on one side and evident in P 22 only between the top and the two top side petals Secondly both the plaintiffs products and the defendants products are slightly but perceptibly elongated while the registered design and P 22 are more rounded Thirdly in both the plaintiffs and defendants products the lower two side petals are set a little back from the top two so that the top petals slightly but noticeably overhang the bottom two giving rise to the overlapping feature which was referred to in evidence In the registered design that is not evident In P 22 there is overlapping but it is in reverse the top side petals overhang on the rear rather than the front side of the lower side petals Fourthly the petals in both the plaintiffs products and defendants products are smaller relative to the whole object and are not as full and rounded as those in the registered design and P 22 Finally and this is perhaps a little more subjective because of the slightly elongated as opposed to rounded shape and the greater space between the petals and because of the smaller petals the plaintiffs and defendants products have a lighter or more spacious feel about them and are not so ponderous as the registered design or P 22 12 I should now say something about the comparison between P 22 and the registered design Some of the points have already been obliquely referred to above P 22 v registered design 13 As I said it is not easy to make comparisons between a three dimensional object like P 22 and a two dimensional representation such as the rear view of the registered design However to the extent it is possible to do so the following similarities may be noted Firstly both have a generally rounded shape in contrast to the slightly more elongated shape of the plaintiffs and defendants products Secondly the petals are similarly shaped in P 22 and the registered design the two top side petals have a generally rounded shape in both and the two lower side petals have a slightly elongated shape in both The top petal in each is not as rounded as the top side petals The top petal in one bears some resemblance with the top petal of the other particularly when contrasted with the top side petals Thirdly in contrast to either the defendants products or the plaintiffs products there is less space between the petals in both P 22 and the registered design than between those in both the plaintiffs and the defendants products 14 There are differences that should be pointed out Firstly there is considerably more spacing between the top petal and the top side petals in P 22 than there is in the design Secondly there is an overlapping of the bottom two side petals over part of the top side petals a feature which is not evident to any extent in the registered design Thirdly the shape of what is referred to as the lip of the orchid ie the piece that hangs down from the centre between the two bottom petals is somewhat different it is more pointed in the design than in P 22 P 22 v registered design Mr Tan s evidence 15 Mr Tan purported to give evidence of the differences between P 22 and the registered design He said omitting counsel s questions A If you look at orchids they all have five petals one lip What differ are the details of the petals and the lip The shape of the registered design is longish The top two petals overlap the bottom two The indentations of the lower lip and the triangle shape are very much representative of the Vanda Joaquim They are also the main features distinguishing it from the Setsco sample I maintain that the lip is totally different Even the overall shape one is roundish and one is longish 16 It seems to me on a review of the evidence the exhibits and the registered design that when Mr Tan was referring to the registered design in the evidence set out above he was probably referring to the plaintiffs products which he claimed to have been manufactured to the

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