JIM, - SG Academy of Law

230 SAL Annual Review 2000

INTELLECTUAL PROPERTY LAW

TAN TEE JIM, SC
LLB (Sing), LLM (Land), Advocate & Solicitor (Singapore)

NG-LOY WEE LOON
LLB (NUS), LLM (Land), Advocate & Solicitor (Singapore),
Associate Professor, Faculty of Law, National University of Singapore

Introduction

There has undoubtedly been a tendency in recent years to look to
intellectual property law for protection against competitors and
interlopers. This tendency stems from the increasing recognition,
particularly acute in the developed economies, that only intellectual
property rights can help to sustain the lead of those in the van of
innovation. Specifically, intellectual property rights have come to be
perceived as the harbingers of immense economic returns to those (Bill
Gates springs to mind) with the technical know-how, with creative
marketing schemes and, generally, with the ability to cater to the fickleness
of the marketplace. Another impetus for the tendency is that the rights
are being constantly undermined by extraordinary advances in the
technology of imitation and in countries where the social, aesthetic and
cultural values are not predicated on the moral and economic rights of
creators. In consequence, there has been a proliferation of national and
international intellectual property legislation (such as the Agreement on
Trade-Related Aspects of Intellectual Property Rights ('TRIPS
Agreement')) as well as a rush to the national patents and trade marks
registries - and to the courts.

So too it has been in Singapore in recent years. There is now a greater
awareness that intellectual assets should be protected in Singapore. This
is attributable not only to external influence but also to the government's
determination to attract investments and talent in the new technologies
in telecommunications, information and the life sciences. This was
emphasised by the Minister for Law and Foreign Affairs at an
International Federation of Phonographic Industry Asia/Pacific Regional
Council Meeting in May 1999:

'A strong IPR [intellectual property rights] protection regime is critical to
Singapore's efforts to attract and encourage the growth of value-added and
high content companies. Piracy losses pose a serious constraint on the
growth of value-added and high content industry, holding back high-value
job creation and adversely affecting investment decisions'

as well as in the Explanatory Statement to the Copyright Act (Cap 63,
1988 Ed):

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'It is necessary to enact an independent self-contained law on the subject
of copyright in the light of the growing public consciousness of the rights
and obligations of the authors and owners of intellectual property. New
developments in computer technology, lithophotography and video recording
and advanced means of communications like satellite broadcasting also call
for changes in the existing law. Adequate provision has to be made for
fulfillment of international obligations in the field of copyright which
Singapore might accept.'

In the event, Singapore signed the TRIPS Agreement, joined the World
Intellectual Property Organisation ('WIPO') and acceded to several
international intellectual property conventions such as the Berne
Convention, the Paris Convention for the Protection of Industrial
Property, the Patent Co-operation Treaty, the Budapest Treaty on the
International Recognition of the Deposit of Micro-organisms and the
Madrid Protocol.

These international conventions provided a fecund source for change in
our intellectual property law. In 1995, there was an overhaul of our patent
system which now allows an inventor to apply for patent protection in
Singapore if his invention is new, non-obvious and capable of industrial
application. The new Patents Act was revised a year later to delete a
provision which had excluded the patenting of certain matters such
discoveries, schemes, scientific theories and computer programs. In 1998,
the Trade Marks Act (Cap 332, 1999 Ed) was enacted 'to establish a new
law for trade marks'. The new Act extends protection to service marks
as well as well-known marks and abolishes the distinction between Part
A and Part B marks. It expressly states that parallel imports are legitimate
and prohibits any groundless threat of trade mark infringement
proceedings. In 1999, the Copyright Act (Cap 63, 1988 Ed) was extensively
amended to accommodate the new technologies. The amendments
prohibit, amongst others, reproduction of a copyright work 'on any
medium by electronic means', making a copy "which is transient or is
incidental to some other use of the work" and copying more than 10% of
the total number of bytes in the electronic version of a literary, dramatic
or musical work. The amendments also introduce a number of other
changes - in particular, the creation of border enforcement measures,
the conferment of a quasi-copyright on performers and the granting of
exemption to network service providers in certain circumstances. Last
year, the United Kingdom Designs (Protection) Act (Cap 339, 1985 Ed),
which had been in force since 1938, was repealed to make way for an
entirely new designs regime which is administered in Singapore.

The expansion last year of the role of the Intellectual Property Office of
Singapore ('IPOS'), now a statutory board, is another indication of the
importance placed upon intellectual property protection in Singapore. It
has changed from the traditional role of processing applications of patents
and trade marks to a central body for establishing and co-ordinating the
development of the legal and regulatory framework for intellectual

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property protection in Singapore. It now has a wider mission, which is
'to provide good support services for the promotion of intellectual
property protection which will in turn enhance trade and encourage
creative innovation in Singapore'. IPOS is set to play a pivotal role in
accelerating the growth of the knowledge economy in Singapore.

The courts have not been unaffected by the greater awareness of the
importance of intellectual property protection. The number of intellectual
property cases heard by the courts has been increasing steadily over the
years. Indeed, based on the Singapore Law Reports, there was a record
number of such cases heard last year. This review seeks to determine the
nature and extent of the protection that was granted in the cases last
year.

Copyright

Fundamental principles affirmed

It is a fundamental principle of copyright law that copyright does not
protect ideas, only the form in which they are expressed. In an early case
(Hollinrake v Trusswell (1894) 3 Ch 420), Lindley LJ said: 'Copyright,
however, does not extend to ideas, or schemes, or systems, or methods;
it is confined to their expression; and if their expression is not copied the
copyright is not infringed.'

Another fundamental principle is that copyright is not a monopoly, unlike
patents and registered designs. It is a negative right to prevent copying.
Thus, if two identical works were in fact produced independently of one
another, there is no infringement of copyright by one of the other.

These principles were recently re-affirmed by the High Court in the case
of Chua Puay Kiang v Singapore Telecommunications Limited [2000] 3
SLR 640. The plaintiff conceived the idea of using the telephone keyboard
to transmit alphabetical messages to printers. He expressed the idea in a
drawing of a telephone keyboard ('the drawing') as well as in a conversion
table ('the table') and developed a computer program for his Teletyper'
system which enabled computers to recognise signals generated by pressing
the buttons on the telephone keyboard and to convert the signals into
alphabets, as envisaged in the table. He demonstrated the system to the
defendants and gave copies of the drawing and the table to the defendants'
representatives. He did not hear further from the defendants after the
demonstration. Subsequently, he discovered that the defendants had
introduced and provided an API (alpha-numeric push-button input)
service to their paging subscribers. He sued the defendants for
infringement of copyright in the drawing, the table and the computer
program.

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The defendants denied any copyright infringement. In particular, they
denied copying the plaintiff's table and drawing and said that their coding
table for the API was independently created. They also contended that
even if there was copying, it was in respect of an idea. This was because,
in the plaintiff's table, the sequence of the keys and the arrangement of
the alphabet in their normal order over the numerals was the only logical
way of ordering them.

Rubin J dismissed the plaintiff's claim. He was satisfied that the
defendants' table was in fact independently created, even though the
defendants had sight of the plaintiffs table and there were some features
which were similar to those of the plaintiffs. He relied on the defendants'
internal memorandum which pre-dated the demonstration and which
showed that the defendants had the same idea. As regards the drawing,
he found that there were substantial differences in the get-up and features
and further opined that, at any rate, the plaintiff could not claim a
monopoly over the sequence of the numerals 1 to 9 as well as the
placement of the letters in groups of three on the telephone keyboard
which were ideas.

As to the computer program, the learned judge distinguished the decision
of the High Court of Australia in Autodesk Inc v Dyason [1992] 22 IPR
163 which concerned a hardware device called an 'AutoCAD lock' which
Autodesk supplied with its AutoCAD program. Without the lock, the
program could not run. The way this worked was that the program had a
sub-program (called 'Widget C') which sent a series of impulses to the
lock while the program was running. The program would cease to run if
it failed to receive a response from the lock to the impulses, which were
compared by Widget C with a table of 127 responses stored in memory
(called the 'look-up table'). This thus ensured that the purchase of the
program did not result in multiple use of the program. After studying
the AutoCAD lock, the respondents created an alternative device (called
'Auto Key lock') which performed the same function as the AutoCAD
lock. They were held to infringe the copyright in the AutoCAD program
because they had taken the look-up table which constituted a substantial
part of the Widget C program.

In contrast, in Chua Puay Kiang, the defendants were not concerned
with the plaintiff's computer program. No source code or object code of
the plaintiffs program was ever shown or disclosed to the defendants.
There was clearly no question of copying.

Copying

Often, however, copying has to be inferred. This can be done by showing
striking similarities between the two works, that the plaintiff's work was
the earlier in time and that the defendant has had the opportunity to

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access the plaintiff's work (see, eg, Francis, Day & Hunter Ltd v Bron
[1963] 1 Ch 587). The opportunity to access would indicate that the
defendant's work is based on or taken from the plaintiff's copyright work
- that is, a 'causal connection' between the two works. The causal
connection may be indirect, as in copying from a 3-dimensional version
of the plaintiff's copyright work rather than directly from the plaintiff's
work (see, eg, King Features Syndicate Inc v O and M Kleeman Ltd [1941]
AC 417).

In Radcoflex Australia Pty Ltd & anor v James Lim Hwa Chin & anor
(Suit 1598/1999, unreported judgment dated 27.5.2000), the plaintiffs sued
their ex-employee and his company for infringement of copyright in
certain drawings of the plaintiffs' machine. The defendants denied copying
the machine, saying that they had no access to the drawings and that
their machine was not a substantial reproduction of the drawings.

Lee Seiu Kin JC found that there was indeed no access to the plaintiffs'
drawings. There was no evidence that the documents were kept in the
plaintiffs' premises to which the first defendant (the ex-employee) could
have access during employment. The learned judge also ruled that the
defendant's machine was not a copy of the plaintiffs' drawings. This was
because the machine was not based on the drawings but on the plaintiffs'
machine which the first defendant saw or would have seen. However, the
plaintiffs' machine was substantially different from their copyright
drawings; the drawings were not the ones used by the plaintiffs to
construct their machine! There was thus no causal connection between
the defendant's machine and the plaintiffs' drawings. In this respect, the
learned judge said (at para 66):

'If a 3-dimensional object was not made based on a drawing, a second
3-dimensional object which was copied directly from the first cannot be an
indirect copy of the drawing notwithstanding any similarity between the
second object and the drawing. It would be a travesty of logic if it were
otherwise.'

Authorship

The Radcoflex case also provides a salutary reminder that the burden of
proving authorship of a document over which copyright is claimed cannot
be taken lightly. In the Copyright Act, it is expressly stated that copyright
shall subsist in a work (whether published or unpublished) if the author
was a 'qualified person' at the time the work was made or first published.
'Qualified person' means a citizen or resident of Singapore or a member
country of the Berne Convention or the World Trade Organisation. In
the case, the defendants contended that, in respect of a number of the
crucial documents, there was no evidence that the alleged authors were
qualified persons at the time the documents were created. This was
because there was no disclosure at all of their citizenship status and
unclear evidence as to their residency at the time of the creation of the

Intellectual Property Law 235

works. The contention was accepted by Lee JC who said (at para 30)
that 'the burden of proving authorship of a document over which copyright
is claimed rests on the plaintiffs and it cannot be said that they have
discharged this burden by proving that Robinson could be its author'
(original emphasis).

Authorship was also an issue in Alteco Chemical Pte Ltd v Chong Yean
Wah t/a Yamayo Stationery Manufacturer [2000] 1 SLR 119. The plaintiffs
manufactured and sold super glue in small tubes. The tubes were mounted
on a display card with perforations to form 12 individual sections. The
plaintiffs claimed copyright in the get-up of the pack of tubes and the
display card. They sued the defendants for infringing the copyright in the
get-up. The defendants denied infringement and challenged the plaintiffs'
copyright ownership in the get-up. They claimed that another company
had used a similar get-up before the plaintiffs first used theirs. Although
the challenge was only raised in the defendants' closing submission,
GPSelvam J allowed the challenge to be ventilated, given that the
plaintiffs had led some evidence on the copyright ownership of the get-
up. Their evidence was that it was a Koichiro Nogami who conceived the
idea of selling glue using a display card exhibiting a pack of 12 tubes in
a spread out display. He then conveyed the idea to the plaintiffs' parent
company (Alpha-Techno) in Japan, and both worked closely with a design
agency (Fujita Sangyo) which came up with the design of the subject get-
up. The defendants argued that in the circumstances, Fujita Sangyo was
the author and the copyright owner of the get-up.

The learned judge disagreed. In doing so, he made a number of points
on copyright ownership and authorship which bear comment.

First, he said (at 127) that '[f]or openers, s 30 of the Copyright Act does
not apply to copyrights created outside Singapore because the provision
cannot have extraterritorial operation' and went on to state that he had
to decide the issue of copyright ownership of the get-up on the basis of
Singapore law.

It is, with respect, irrelevant that s 30 (which identifies the owner of
copyright in various situations) has no extraterritorial operation. The
learned judge should have considered s 27 which states that an artistic
work has copyright protection if, amongst others, it was first published in
Singapore or the author of the work was a 'qualified person' at the time
when the work was first published. The term 'qualified person' refers to
a Singapore citizen or resident. In the case of a work first published
outside Singapore or whose author is not a Singapore citizen or resident,
the Copyright (International Protection) Regulations (1990 Ed) provide
(at reg 3(1 )(a)) that the Act shall apply in relation to a literary work first
published in a country that constitutes or forms part of the territory of a
country specified in the schedule 'in like manner as those provisions [of
the Copyright Act] shall apply in relation to artistic ... works first

236 SAL Annual Review 2000

published in Singapore'. Regulations 3(3) and 3(4) further state that the
provisions of the Act relating to artistic works shall apply in relation to
persons who, at the material time, are citizens or nationals or are resident
in a country specified in the schedule in like manner as those provisions
of the Copyright Act shall apply in relation to persons who, at a material
time, are citizens or nationals of or are resident in Singapore. The
countries specified in the schedule to the Act include Japan. Thus, whilst
it is true that s 30 has no extraterritorial operation, it is nevertheless
applicable in respect of artistic works first published in scheduled countries
or created by citizens, nationals or residents of those countries. This is
because the Act treats such works as if they were first published in
Singapore or created by Singapore citizens, nationals or residents. In the
case, the get-up was first used, and hence first published, in Japan and
was evidently made by Japanese citizens and residents. As such, the Act
was applicable to it. It should therefore have been on this basis that the
learned judge decided the copyright ownership of the get-up under s 30.

The learned judge also failed to make the distinction between authorship
and copyright ownership in s 30. After noting that the word 'author' was
not defined in the section, he observed (at 127) that the word:

'became part of the glossary of copyright law at the primitive stage of
copyright law when copyright was recognised only in writing. At that time
it meant a writer of books albeit it was later extended to a maker or
originator of artistic work who was an individual. It was intended to protect
the interest of the writer if he legitimately laid claim to copyright, but times
have changed. So has the temper of the law. This is an age where artwork
is often the result of teamwork and computer graphics. Often, and
particularly in cases where an agency is commissioned to do a get-up or
advertisement, the author has absolutely no interest in the get-up or
advertisement. Given that scenario, it is often difficult, if not impossible,
for an individual 'author' to make a claim to copyright or identify him.
This is conspicuously so when a corporate or unincorporated body
undertakes to materialise an idea into an artistic work or computer graphics.'

After examining the facts, he recommended a 'modern' meaning to the
word 'author' - 'having regard to the purpose of copyright law, the term
'author' should be widely interpreted to include the only person whose
interest it was intended to protect'. He opined that the only person whose
interest was to be protected in the case was Alpha-Techno.

With respect, there is no inadequacy or unfairness in the law. The present
framework of copyright law is adequate to protect a person such as Alpha-
Techno. It can obtain copyright ownership in a number of ways from the
author. In the first place, although s 30(1) of the Copyright Act vests
copyright initially in the author of the work (because he is the person
who has used skill and labour in giving expression to the ideas in the
work), the law has not been adverse to giving protection to his joint
author or authors and their joint work if he is part of a team. Section

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7(1) states that a 'work of joint authorship' means a work that has been
produced by the collaboration of two or more authors and in which the
contribution of each author is not separate from the contribution of the
other author or the contributions of other authors. Each author must
therefore contribute significant skill and labour to the collective expression
of the ideas in the work. Further, where the author is commissioned to
do a work, copyright in the work belongs to the person who commissions
him if the work is a photograph, a painting or drawing of a portrait or an
engraving. For other works, the provisions in Part X of the Act (to which
s 30 is subject) are available to the person to protect his interest by
obtaining an assignment of copyright from the author. The assignment
must be in writing signed by or on behalf of the assignor. No specific
form of words is required. The work to be assigned can be a present or
future work. Where the work is made in breach of some fiduciary duty,
the court can imply a constructive trust against the author.

This was what the learned judge did in the case. The defendants had
submitted that Fujita Sangyo was the author because it designed the get-
up. The judge said that Fujita Sangyo was engaged by Alpha-Techno
and it would be preposterous for Fujita Sangyo to claim copyright in the
get-up in the circumstances. He added that common law would imply an
intention in the agreement between the parties that Alpha-Techno would
be the copyright owner and equity would imply a constructive trust against
Fujita Sangyo. It is respectfully submitted that this is a more defensible
approach. There is no need for a 'modern' meaning to the word "author'
and no necessity to change the framework of copyright law in this regard.

Internet threat

However, there does exist a threat to the framework and it comes from
an unexpected source, namely, the Internet which really took root in the
mid-1990s and is now a fountain of tricky issues. Many learned
commentators have even doubted the relevance of copyright in this
Internet age in which 'our [intellectual] property can be infinitely
reproduced and instantaneously distributed all over the planet without
cost, without our knowledge, without its even leaving our possession'
(Barlow, 'The E c o n o m y of Ideas', in Wired, March 1994; see
www.wired.com). The principle of protecting expression of ideas rather
than ideas seems antiquated in an era where ideas can dart around the
Net at the speed of thought (as glowing pixels or transmitted sounds)
and need not be cribbed within any material form (eg a book). There
have in consequence been suggestions to deploy other resources of law.

It will be recalled that the ancient common law action of trespass to land
was created to protect private property by vindicating the owner's interest
in exclusive possession of the land. John Locke justified the protection
on the 'fruits of one's labour' doctrine. Specifically, the protection is

238 SAL Annual Review 2000

premised on the doctrine that everyone has a property right in his own
body and labour and all the resources of the world are given to humanity
in common. Hence, when anyone mixes his own labour with the common
resources and his labour contributes to the rise of a property interest in
the resources, he has the right to that interest or part thereof.

So also with Internet web sites. It can be said that without the labour
and skill to create the site, there would be no 'sites' at all. Someone has
to process the natural resources of copper, petroleum, silicon and so on
to produce wires, plastics and computer chips. Moreover, many of the
words used to describe the Internet have a basis in real property. The
word 'site' is one, as are such expressions as 'home' pages and 'visiting'
web sites. It is thus tempting to conclude that the law of trespass can be
invoked to protect the moral and economic rights of creators.

In the United States, the court in Ticketmaster Corp v Tickets.com Inc
(judgment dated 27 March 2000, unreported; see http://www/gigalaw.com/
library/ticketmaster-tickets-2000-03-27.html) held that the law of trespass
could not apply to web sites. This was because the protection of copyright
works such as web sites was eminently within the provenance of the US
Copyright Act of 1976 which is an Act 'to promote the progress of science
and useful arts'. Being a federal statute, this Act 'preempted' or
superseded state law and judicial doctrine. The court nevertheless added
that 'it is hard to see how entering a publicly available web site could be
called a trespass, since all are invited to enter'.

In Singapore, a work cannot be copyrighted except under our Copyright
Act (Cap 63, 1999 Ed) (see s 4). Does this mean that it cannot at all be
protected under any other area of law (such as trespass)? In Pacific Internet
Ltd v Catcha.com Pte Ltd [2000] 3 SLR 26, the court did not think the
answer to this issue was so clearly in the affirmative that the plaintiffs'
cause of action could be struck out. The plaintiffs sued the defendants
for linking their web sites to the inner pages of the plaintiffs' web sites.
They relied, amongst others, on the tort of trespass, asserting that the
various parts of their web sites (such as the contents in the web pages
and the artistic works in the designs comprised in the web sites) were
either personal property or property akin to real property and there was
unauthorised access to those parts. The defendants applied to strike out
the plaintiffs' claim based on trespass on the ground that the law of
trespass did not cover intellectual property.

The application was disallowed by Lai Kew Chai J who was of the view
that the parties' submissions pointed to serious policy considerations which
could only be adequately considered after a full trial.

It will therefore be interesting to see whether the court, after a full trial,
will extend the ancient tort of trespass to cyberspace. As it stands at
present, the tort exists only against real and corporeal property (such as
land and goods) and arises where there is a wrongful interference with

Intellectual Property Law 239

immediate possession to such property. Thus, one could not sue for
trespass against incorporeal property (such as an easement and right of
way). The court will therefore have to grapple with the question whether
a web site is indeed a real and corporeal property and whether an
unauthorised access to a web site would indeed interfere with the
immediate possession (if any) of the owners and users of the site. Also,
if a web site does not expressly state the purposes for which it can or
cannot be accessed (as is very often the case), can there be wrongful
interference when the access is for purposes of deep linking? It is manifest
that any extension of this ancient tort will result in serious repercussions
relating to the future growth of the Internet.

Trade Marks and Passing off

Descriptive/distinctive mark

The purpose of a trade mark is to distinguish the goods or services of
one trader from those of another. The mark is capable of so distinguishing
if it is inherently or factually distinctive. Many an invented word (eg
'KODAK') has been readily found to be inherently distinctive and thus
protectable. Others (such as a descriptive word, eg 'Electric') are much
less well-suited to the role. Their descriptiveness tends to make them not
truly distinctive of any particular goods or services. Between these two
ends of the scale lies a huge penumbra of marks whose distinctiveness
often depends simply on the extent of descriptiveness of the marks and
on whether others could have a legitimate interest in using them.

Our old Trade Marks Act (Cap 332, 1992 Ed) (which was repealed in
January 1999 but continues to apply for infringements committed before
the date) provided a measure of guidance. In s 10, it was expressly
provided that to be protected, a word must have no direct reference to
the character or quality of the goods or services in respect of which
registration is sought. The purpose of this provision was to prevent any
trader from obtaining a monopoly over the use of a word having reference
to the character or q u a l i t y of the goods or services. In Eastman
Photographic Materials Co Ltd v Comptroller-General of Patents, Designs
and Trade Marks (1898) AC 571 at 580, Lord Herschell explained thus:

"The vocabulary of the English language is common property: it belongs
alike to all; no one ought to be permitted to prevent the other members of
the community from using for purposes of description a word which has
reference to the character or quality of goods."

The word 'direct' was subsequently inserted in the provision 'to check
the tendency which had been disclosed in certain decisions to find a
sufficient reference to the character or quality of goods in expressions
from which it could only be spelled out' (per Dixon CJ in Mark Foy's
Ltd v Davies Coop & Co Ltd (1956) 95 CLR 100 at 195).

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The difficulty, however, is to decide how 'direct' must the reference must
be, for every attractive trade mark would in some sense have a reference
to the character or quality of the goods or services in question. This was
precisely the issue addressed by the Court of Appeal in Rainforest Coffee
Products Pte Ltd v Rainforest Cafe, Inc [2000] 2 SLR 549. The respondents
operated a chain of restaurants under the name 'Rainforest Cafe' from
October 1994. The restaurants have a rainforest theme, featuring elaborate
jungle props, animation and sound effects. In October 1995, they filed a
trade mark application under the old Trade Marks Act for the name in
respect of 'restaurant and nightclub services', giving evidence of plans to
open a restaurant in Singapore. The application was granted in April
1998.

The appellants were incorporated in November 1996 and soon opened
their outlet selling salads, sandwiches, soups and desserts together with a
variety of speciality coffees and teas. The respondents objected to the
use of the word 'Rainforest' on the appellants' corporate name and
products and successfully sued for an injunction, delivery-up and damages.

On appeal, the appellants challenged the trial judge's finding that the
word 'Rainforest' had no direct reference to the character or quality of
the restaurant services provided by the respondents. They submitted that
the words 'Rainforest' and 'Cafe' were ordinary dictionary words, neither
novel nor fanciful. The phrase 'Rainforest Cafe' was an ordinary
collocation of words, descriptive in nature, conveying the meaning of a
food establishment where a rainforest setting or theme was created, and
the public would so understand it.

Lai Kew Chai J (writing for the court) disagreed. After defining the issue
to be whether the direct reference was to restaurant services generally or
to restaurant services with a certain theme, he said that the former
reference was to be preferred, 'not least because it would be overly
unrealistic and unduly technical to descend into different categories of
definitions of 'restaurant services' - where should the line be drawn?'
The word 'Rainforest' clearly did not express anything which would
describe the type of services provided. Vague impressions did not translate
to a 'direct reference to the character or quality' of the restaurant services;
the requisite nexus between the word and the type of service was absent.
The learned judge added that the word at the most conjured up images
of trees and greenery; it was novel and generated anticipation as to the
kind of services which would be provided.

With respect, there was no necessity to draw any line. The question should
simply have been whether the mark has a direct reference to the character
or quality of the services in respect of which the respondents sought
registration (z'e, 'restaurant and nightclub services'), not the services, theme
or images that were actually proffered by the respondents. The Registrar
of Trade Marks is not expected to surmise the various situations in which

Intellectual Property Law 241

a mark will upon registration be used or to stipulate the circumstances in
which it may be used in order that it does not trespass upon the rights of
other traders to use the mark. That is the province of the tort of passing
off which, interestingly, was abandoned by the respondents at the
beginning of the trial. In answer to the question, the word 'Rainforest'
clearly has no direct reference to the character or quality of the restaurant
and nightclub services for which registration was sought (and obtained)
by the respondents. It is not at all descriptive of restaurant or nightclub
services nor of the character or quality of the services. It does not
inherently refer to restaurant or nightclub services. It does not of itself
describe services of any character.

Under the new Trade Marks Act (Cap 332, 1999 Ed), a mark is not
registrable if it is 'devoid of any distinctive character'. The Act further
provides (at s 7(l)(c)) that a mark which consists exclusively of a sign or
indication which may serve in trade to designate, amongst others, the
kind, quality or other characteristics of goods or services is not registrable.
Thus, a word such as 'Coffeemix' would remain unregistrable under the
new Act.

The word 'distinctive' is not defined in the new Act. However, there has
been no difficulty in the United Kingdom discerning the requirements of
the word in the context of its equivalent Act. In the case of British Sugar
pic v James Robertson & Sons Ltd [1996] RFC 281, Jacobs J said that
the phrase 'devoid of any distinctive character' suggested consideration
of the sign on its own, assuming no use. Ts it the sort of word (or other
sign) which cannot do the job of distinguishing without first educating
the public that it is a trade mark?' This question was considered last
year by our court in the case of Sime Darby Edible Products Ltd v Ngo
Chew Hong Edible Oil Pte Ltd [2000] 4 SLR 360 where the applicants
tried to invalidate the respondents' registration of the mark 'ROYAL
SPOON' for edible oils and fats on the ground that the words 'royal' and
'spoon' were both descriptive, one being laudatory and the other being
highly descriptive of a common utensil. The learned judicial commissioner
(Lim Teong Qwee JC), however, noted that the mark comprised the two
words used in combination and took the view that it was a wholly
inappropriate phrase for edible oils and fats. In other words, considering
the mark 'ROYAL SPOON' on its own and assuming no use, the mark
could do the job of distinguishing the applicants' goods in the marketplace.

The considerable difficulty of establishing that a descriptive mark is or
has become distinctive of a trader's goods, services or business is amply
illustrated in three passing off cases decided last year. In Lifestyle 1.99
Pte Ltd v S$1.99 Pte Ltd [2000] 2 SLR 766, the plaintiffs were the owners
of a chain of retail shops operating under the name and style 'ONE.99
Shop'. All the goods sold in the shops were priced at $1.99. The shops
received immense publicity in the media, as the public was attracted by
the concept of buying miscellaneous goods at relatively cheap, fixed price

242 SAL Annual Review 2000

in upmarket locations. The plaintiffs also spent relatively large amounts
of money on advertising. In the event, they managed to achieve high
sales turnover within the first 11 months of business.

The defendants were the retail arm of Rubber Band Enterprises Pte Ltd
which was a major player in the toy industry. The defendants were
incorporated to continue with Rubber Band's successful business of selling
toy and gift products at $1.99. They used the name 'Lifestyle 1.99' for
their shops. The plaintiffs sued them for using this name.

One of the issues was whether the plaintiffs had, at the date when the
defendants were incorporated, acquired sufficient goodwill in their
business in association with the use of the name 'ONE.99'. The trial judge
found that the name was a fanciful one and, given the wide publicity and
high sales turnover, had acquired goodwill when the defendants began
operating. He felt that the use of the word 'Lifestyle' by the defendants
made no difference to his finding that the public would be misled as the
appeal of the plaintiffs' name lay in the expression 'One Point Nine Nine'
which the defendants had adopted.

The Court of Appeal disagreed. Chao Hick Tin JA examined at some
length the law on distinctive and descriptive marks and concluded that a
distinctive mark is one which denoted the plaintiffs' goods to the exclusion
of other traders. On the other hand, a mark which was prima facie
descriptive would only be protected if it could be shown to have acquired
a secondary meaning (namely, it had become distinctive of the plaintiffs'
business). The learned judge held that the name 'ONE.99' was clearly
descriptive of the plaintiffs' business of selling goods at $1.99. He said
that once the public realised that the goods sold at the plaintiffs' outlets
were all fixed at $1.99, it did not require much imagination to appreciate
that the name 'ONE.99' was intended to inform all consumers that the
goods sold at their shops were so priced.

The same issue arose in respect of the word 'Coffeemix' in Super
Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd [2000] 3 SLR 145.
Here, there was evidence that the public had understood the word to
indicate or describe a product consisting of coffee, sugar and creamer
which, upon mixing with hot water, produced an instant coffee drink.
Accordingly, the Court of Appeal ordered that the word in the plaintiffs'
registration of their trade mark 'SUPER COFFEEMIX' be disclaimed.
The Court further held that, in relation to passing off, the plaintiffs failed
to overcome the high evidential burden of showing that the word
'Coffeemix', which is descriptive in nature, had become distinctive of their
products. It cited Wadlow on The Law of Passing Off (2nd Ed, 1995) at
para 6.02 in support:

'Matter such as a name, mark or get-up is said to be distinctive if it denotes
the goods of the plaintiff to the exclusion of other traders. It is the
significance which the relevant public attaches to the supposed mark which

Intellectual Property Law 243

is all important. Matter which is not relied on by the public in this way is
not in law distinctive, irrespective of how novel, striking or different it may
be."

The third passing off case is Nippon Paint (Singapore) Company Pie Ltd
v ICl Paints (Singapore) Pte Ltd [2001] 1 SLR 1 decided in October last
year. The plaintiffs had been successfully selling their various '3 in 1'
multi-purpose paint products for over 4 years before the defendants began
selling their products called 'Supreme 3 in 1'. The principal issues were
whether '3 in T was a descriptive term for the multi-purpose paint
products and, if so, whether it had acquired a secondary meaning by the
time the defendants began selling their offending products.

Amarjeet Singh JC held that the '3 in 1' mark in itself and without the
addition of a manufacturer's corporate name or other unique or distinct
name was not really in any form a mark that could identify meaningfully
a product. It was generic and would be descriptive of the attributes of a
product. As such, it could not have goodwill attached to it. As regards
the issue of secondary meaning, the learned judge reviewed the evidence
and concluded that the plaintiffs failed to prove on the balance of
probability that the mark had acquired a meaning which denoted
exclusively their products. This was despite seven surveys conducted on
the plaintiffs' behalf. The court felt that the formulation of the questions
in the surveys left much to be desired and that they did not establish
that the public associated '3 in 1' with the plaintiffs' products exclusively.

Accordingly, the starting point for deciding whether a mark is distinctive
is the understanding that the trader has built up with the public in
Singapore. If the public understanding is that it denotes the goods or
services of the trader to the exclusion of others, the mark is likely to be
considered to be distinctive. If, however, the mark has some other
connotation to the public, he faces the special evidential difficulty of
establishing that the public does understand the mark to indicate that
the goods or services come from him. The difficulty is greater if the mark
is inherently highly descriptive (such as 'Coffeemix' and "3 in 1') or if the
descriptive mark is used in relation to a new or invented product. As
Lord Shand said in Cellular Clothing Co Ltd v Maxton & Murray [1899]
AC 325 at 340:

'[WJhere a man produces or invents, if you please, a new article and attaches
a descriptive name to it ... and secures for himself either a legal monopoly
or a monopoly in fact of the sale of that article for a certain time, the
evidence of persons who come forward and say that the name in question
suggests to their minds and is associated by them with the plaintiff's goods
alone is of a very slender character.'

This approach has now been extended in Singapore to a new or inventive
concept or method of selling goods and services, as shown in the Lifestyle
1.99 Pte Ltd case.

244 SAL Annual Review 2000

Limited scope of protection

Even if the trader succeeds in establishing that his descriptive mark has
acquired some degree of distinctiveness, he will find that the mark will
not enjoy the scope of protection which is reserved for a distinctive mark.
This is because there is a rule of law that where a mark is descriptive,
minor differences will suffice to distinguish the defendant's goods or
services. This rule was enunciated by the House of Lords in Office
Cleaning Services Ltd v Westminster Window & General Cleaners Ltd
(1946) 63 RFC 39 where both parties carried on the business of office
cleaners and where it was held that the defendants' mark 'Westminster
Office Cleaning Association' was sufficiently different from the plaintiffs'
'Office Cleaning Service'. Lord Simmonds who delivered the leading
judgment for the House of Lords said (at 43):

'It comes in the end, I think, to no more than this, that where a trader
adopts words in common use for his trade name, some risk of confusion is
inevitable. But that risk must be run unless the first user is allowed unfairly
to monopolise the words. The court will accept comparatively small
differences as sufficient to avert confusion.'

The rule is now well entrenched in Singapore. In the Lifestyle 1.99 Pte
Ltd case, the Court of Appeal was of the view that the additional word
'Lifestyle' should suffice to differentiate the defendants' business from
the plaintiffs'. This, coupled with the fact that the colour scheme of the
outlets and the logos were different, led the court to rule that there could
not be any reasonable probability of deception. In the Super Coffeemix
case, the plaintiffs' products were known as 'SUPER COFFEEMIX' and
the defendants' were known as TNDOCAFE Coffeemix'. The Court of
Appeal said that the difference was sufficient to distinguish. The court
further noted that the packaging of the two products was different, both
in terms of design and colour scheme, and doubted that the public in
Singapore would be confused. Amarjeet Singh JC also based his decision
in the Nippon Paint case on a relatively minor differentiation. He said
that the parties' customers (mostly building contractors) were habitual
users of paints and would be able to notice the difference between the
plaintiffs' 'Nippon Paint 3 in 1' and the defendants' 'Supreme 3 in 1', as
well as the differences in the get-up or livery of the products. He added
that the real selling points of the products were the corporate names of
the parties.

Designs

Until 13 November 2000, designs registered in the UK were protected in
Singapore as if the certificate of registration had been issued with an
extension to Singapore: see the United Kingdom Designs (Protection)
Act (Cap 339, 1985 Ed). This 'piggy-back' system of protection meant
that the provisions of the UK Registered Designs Act 1949 (as amended)
('the UK Act') were the law of Singapore then. Naturally, our courts in

Intellectual Property Law 245

applying this law - to determine if the registration is valid or if there is
infringement - had by and large followed English authorities.

Hunter Manufacturing Pte Ltd & Anor v Soundtex Switchgear &
Engineering Pte Ltd and another appeal (No 1) [2000] 1 SLR 401, threw
up no surprises in that it adopted well-established principles laid down in
English cases. Nevertheless, it is an important decision because it is the
first Court of Appeal case to clarify the scope of the registration criteria
('eye appeal', the functionality exception and novelty), as well as the
approach that should be taken on the issue of infringement.

Before reviewing the Hunter decision, a word should be said about the
position since 13 November 2000. On that date, the Registered Designs
Act 2000 (Act 25 of 2000) came into force, repealing the United Kingdom
Design (Protection) Act and setting up a system of registration of designs
which is administered within Singapore. While the new regime is modelled
after its English predecessor, there are material differences, particularly
in the registration criteria. Now, to be registrable:

(1) The design must be a feature of shape, configuration, pattern
or ornament applied to an article by any industrial process,
excluding -

(a) a method or principle of construction;

(b) features of shape or configuration which -

(i) are dictated solely by the function which the article has to
perform (the 'functionality' exception);

(ii) are dependent upon the appearance of another article of
which the article is intended to form an integral part (the
"must-match' exception'); or

(iii) enable the article to be connected to, or placed in, around
or against, another article so that either may perform its
function ("the must-fit' exception).

(2) It must be novel. Novelty is destroyed if, inter alia, there is prior
publication of the design in Singapore or elsewhere.

(3) The publication and use of the design must not be contrary to public
order or morality.

(4) The design must not be a computer program or a lay-out design.

The following differences should be noted. First, it is no longer a
requirement that the design must have "eye appeal' (see s 1(3) of the UK
Act. For further discussion of this, see 'Eye Appeal' below). Second,
the 'must-fit' exception is not found in the UK Act, but such an
exception exists in the regime governing unregistered designs: see
s 213(3)(b)(i) in the UK Copyright, Designs & Patents Act 1988. Third,

246 SAL Annual Review 2000

the current world-wide test of novelty is to be contrasted with the old
position where novelty is destroyed if there is prior publication in the
UK or in Singapore (see Ang Lay See & Ors v Solite fmpex Pte Ltd
[1998] 2 SLR 365).

Eye appeal

Designs must 'appeal to and are judged by the eye': see s 1(3) of the UK
Act. The first time this requirement came up before our courts was in
Essen System Builders (S) Pte Ltd & Anor v Essential Roofing Systems
Pte Ltd & 2 Ors (Suit 63/1995, unreported judgment dated 31.10.1997).
When assessing whether the design of a roof tile had eye appeal, Lai Siu
Chiu JC (as she then was) asked, 'What is so striking about D3 [the
registered design] which catches the eye ...?' (at para 68). Anyone familiar
with design law would recognise that the learned judicial commissioner
was applying the tests laid down by the House of Lords in Amp
Incorporated v Utilux [1972] RFC 103. There, the House of Lords had to
decide whether the design of an electrical terminal used in washing
machines had 'eye appeal'. It was held that the relevant eye was the
customer of the article, and a design had 'eye appeal' if it had features
which had 'a special, peculiar, distinctive, significant or striking
appearance, - something which catches the eye', or had 'some perceptible
appearance of an individual character'.

The House of Lords, in reaching the conclusion that the design of the
electrical terminal had no eye appeal, placed some importance on the
fact that the electrical terminal was a component to be installed inside
the washing machine and would not be seen by the purchaser of the
terminal. Just how critical was this fact to the conclusion? This question
arose in Hunter Manufacturing Pte Ltd & Anor v Soundtex Switchgear &
Engineering Pte Ltd and another appeal (No 1) [2000] 1 SLR 401. The
registered design in question was for an electrical meter box which was
mounted on the corridor walls of Housing Development Board ('HDB')
flats and housed the miniature circuit breaker, the main switch and the
kilowatt meter for each household. The validity of this registered design
was challenged by the defendants when they were sued for infringement.
On the issue of eye appeal, the trial judge found that eye appeal was a
factor in the design of the electrical meter box, when there could be
many such units installed on walls along the HDB corridors. He appeared
to be influenced by the fact that, unlike the terminal in Amp Incorporated
v Utilux, the electrical meter box was 'exposed' (see para 32 of Suit
1489/1997, unreported judgment dated 28.4.1999). The defendants
appealed against this finding, arguing that the trial judge was wrong to
have found eye appeal simply because the features in the design could
be seen. The Court of Appeal was thus asked to give guidelines on the
proper test to be applied when determining eye appeal. The Court of
Appeal agreed that visual features were fundamental to the registered

Intellectual Property Law 247

design system, which was concerned with and limited to the protection
of 'aesthetic as opposed to functional designs or ideas and inventions' (at
415). However, visibility per se was not sufficient. After citing extensively
from the House of Lords' speeches in Amp Incorporated v Utilux, the
Court of Appeal pronounced (at 417):

'Thus, the test of eye appeal is not simply that of a mere visual appreciation,
which takes into account of the thing seen without any particular reaction
being generated thereby. To have eye appeal the design must have
individuality of appearance; it must be "calculated to attract the attention
of the beholder" and therefore it must be in some ways "special, peculiar,
distinctive, significant or striking". It must not be merely visible but also
be noticeable and "have some perceptible appearance of an individual
character".'

One point needs clarification. The Court of Appeal was in no way
elevating the test for eye appeal to that of aesthetic or artistic appeal.
Lord Morris of Borth-y-Gest in Amp Incorporated v Utilux had expressly
rejected this equation when he said that the eye appeal requirement did
not mean that 'the "appeal" or attraction must be to an aesthetic or
artistic sense' (at 112). This part of his Lordship's was cited with approval
by the Court of Appeal. Therefore, the Court of Appeal's references to
'aesthetic' designs and 'particular reaction being generated' must be taken
in that context.

On the design of the electrical meter box, the Court of Appeal found
that it had eye appeal; it was not merely visible, it had an individuality of
appearance and was calculated to attract the attention of the beholder
and influence the choice or selection by the customer. The last factor -
that the design was one calculated to influence the choice of the customer
- is probably the most important. In this sense, the test of eye appeal is
a subjective one. where the intention of the designer plays a crucial role.
In Amp Incorporated v Utilux, the chief engineer who was part of the
team designing the electrical terminal had testified that all the team had
set out to do was to produce 'the terminal that would do the job' (at
112). This admission was fatal to the assertion of eye appeal. In fact, the
subjective intention of the designer is so critical that, if functionality was
the only consideration in the mind of the designer, but fortuitously the
resulting design appeals to the customer, it would nevertheless not satisfy
the requirement of eye appeal: Interlego AG v Tyco Industries Inc and
Ors [1989] 1 AC 217.

Functionality exception

A design which is 'dictated solely by the function which the article has to
perform' is excluded from registration: see s l ( l ) ( b ) ( i ) of the UK Act. In
determining whether a design falls into this exception, the question to
ask is: are the features in the design 'attributable to or caused or prompted
by' the function which the article in that design is to perform? (per

248 SAL Annual Review 2000

Lord Pearson in Amp Incorporated v Utilux [1972] RFC 103 at 124).
This test was endorsed by Lim Tiong Qwee JC in Sebel Furniture Ltd v
Tiong Hin Engineering Pte Ltd [1999] 2 SLR 662, a case involving the
design of a chair.

It is also well-established that this exception does not apply only where
the designer has no option, because of the function that the article has to
perform, other than to make it in a particular shape: Amp Incorporated
v Utilux, followed in Interlego AG v Tyco Industries Inc and Ors [1989]
1 AC 217, and in Sebel Furniture Ltd v Tiong Hin Engineering Pte Ltd
(supra). Thus, a court assessing whether a design falls within this exception
should take care not to put any weight on the fact that there are other
shapes which could perform the same function. This was the mistake made
by the trial judge in the Hunter Manufacturing case. In his conclusion
that the shape of the electrical meter box was not dictated solely by the
function which the meter box had to perform, one of the reasons cited
by him was that '[t]here can be any number of designs that can perform
the same functions' (at para 33 of the unreported judgment dated
28.4.1999). This provided grounds for an appeal. The Court of Appeal,
while agreeing with the trial judge's conclusion, issued a reminder that it
did not necessarily follow that because alternatives to the registered design
existed, the registered design was not dictated solely by the function which
the electrical meter box had to perform.

One other useful reminder given by the Court of Appeal was to make a
distinction between the design and the article to which the design is
applied. In the case, the Court understood the defendants' attack on the
validity of the registered design to be centred around the argument that
the meter box was 'purely of a utilitarian nature' (at 414). The Court
pointed out that it was the registered design as applied to the meter box,
and not the meter box itself, to which the court should have regard when
deciding whether the registered design had eye appeal and was not
dictated solely by the function which the article had to perform.

Novelty

To be new, the design or one substantially similar to it must not have
been published in the United Kingdom before the date of the application:
see s 1(4) of the UK Act, for the full definition of novelty. But certain
disclosures do not put the design into the public domain: s 6 of the UK
Act.

In the Hunter Manufacturing case, there was an earlier model of electrical
meter boxes used for HDB flats before the registered design was
conceived and registered. The issue arose as to whether this earlier model
destroyed the novelty of the registered design. It was never challenged
that this earlier model, which was published in Singapore but not in the
United Kingdom, could not constitute prior art within s 1(4) of the UK

Intellectual Property Law 249

Act. This is because the Court of Appeal has already in Ang Lay See &
Ors v Solite Impex Pte Ltd [1998] 2 SLR 365 held that the grounds upon
which our courts declare a UK registration invalid include prior
publication of the design in Singapore.

The dispute on novelty in the Hunter Manufacturing case involved mainly
a comparison between the two designs to see if they differ 'in immaterial
details or in features which are variants commonly used in the trade'.
The trial judge found sufficient differences between them to render the
registered design novel, which finding of fact was upheld by the Court of
Appeal. (This is essentially a question of fact, but there are some legal
principles to be observed. They are similar to those applicable when
d e t e r m i n i n g i n f r i n g e m e n t , and w i l l be dealt with infra u n d e r
'Infringement''.)

Apart from relying on the prior art to defeat the registration, the
defendants cited two instances of prior publication of the registered design:
(a) the registered proprietor's sale of the electrical meter box bearing
the registered design ('the AMB box') to its distributor in Singapore;
and (b) submission of the AMB box to the Productivity and Standards
Board for testing.

On (a), the issue was whether the sale of the AMB box to the distributor
was excused by s 6(1 )(a) of the UK Act, that is, as a disclosure of the
design made by the proprietor to any other person in such circumstances
that would make it contrary to good faith for that other person to use or
publish the design. It seems clear from the language of this provision
that it is targeted at disclosures made in confidence, that is, disclosures
of information which is not public knowledge imparted in circumstances
importing an obligation of confidence: see Coco v AN Clark (Engineers)
Ltd [1969] RFC 41, the locus classicus on the law of confidence. Therefore,
two elements should be present before the disclosure can fall within this
provision. Firstly, the design must not be in the public domain. Secondly,
the disclosure of the design was made in circumstances importing an
obligation of confidence. It would seem that these two elements were in
the mind of the Court of Appeal in the Hunter Manufacturing case, when
it pointed out that the registered design had not been 'thrown upon the
public knowledge' or 'become a matter of public knowledge' so as to
amount to a public disclosure (at 426-427), and that the communications
between the parties in this case 'imported an obligation of confidence'
(at 426). The latter finding is an example of the readiness of courts to
impose an obligation of confidentiality where information of business or
commercial value is given with some business object in mind: see Coco v
AN Clark (Engineers) Ltd (supra, at 48).

On (b), the Court of Appeal also held that there was a confidential
relationship established when the AMB box was submitted to the relevant
government authority for testing, and therefore this limited disclosure to

250 SAL Annual Review 2000

the Productivity and Standards Board for a specific purpose did not
constitute prior publication of the design. The provision relied upon
appears to be s 6(l)(a). The other relevant provision would be s 6(3)
excusing 'communication of the design by the proprietor thereof to a
government department ... to consider the merits of the design'.

A uthorship/proprietorship

Proprietorship in a design is vested in the author of the design: see ss 2(1)
and 2(3) of the UK Act. This rule is displaced in some cases, such as
where the author is an employee and the design is created in the course
of his employment; in such a case, the employer is the original proprietor
of the design: see s 2(1B) of the UK Act.

The 'author' is defined as the person who created it: see s 2(3) of the
UK Act. But what is the meaning of 'create'? Does it relate only to the
act of putting the lines down on paper? Or does it encompass something
else, such as giving instructions as to how the lines should appear? This
was the question posed by the trial judge in the Hunter Manufacturing
case (at para 26 of the unreported judgment dated 28.4.1999). The design
of the electrical meter box for use in HDB flats was designed by the
plaintiffs' employee. She was provided with feedback from a third party
who liaised with HDB to ascertain their requirements. This third party
did not lay claim on the authorship of the design, but the defendants
contended that the third party was the true author of the design. The
defendants' challenge was made on the basis of evidence, in particular,
the fact that the plaintiffs' employee was vague and hesitant when she
was asked for details about the conception of the design. However, the
trial judge found that the plaintiffs' employee was credible when she
claimed to be the author of the design. This finding was upheld by the
Court of Appeal, who added that in any event, it did not lie in the mouth
of a defendant to assert that another party was the proprietor of the
design when that party not only disclaimed any involvement in the
creation of the design but affirmatively asserted that the plaintiff was the
author. This principle first appeared in Real Electronics Industries
Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd (T Vimalanathan, Third
Party) [1996] 1 SLR 336, a case on copyright.

Had the challenge been on the law, the courts would have had the
opportunity to deal with those interesting questions relating to the scope
of the term 'create' or 'design'. But the Court of Appeal did refer to the
following passage from Laddie, Prescott & Vitoria, The Modern Law of
Copyright and Designs (2nd Ed, 1995) (para 33.3):

'The author is the person who conceives the particular features which were
incorporated in the design. Although, no doubt, he may work through the
medium of an amanuensis, he must have chosen the shapes, lines, textures
and colours, if any, of that which is sought to be registered. But a person

Intellectual Property Law 251

who gives general instructions to another for the creation of a design is not
the author ...'

It would also be relevant to refer to copyright cases. A local copyright
case in which the concept of authorship was considered is Alteco Chemical
Pte Ltd v Chong Yean Wah t/u Yamayo Stationery Manufacturer [2000] 1
SLR 119. There, the modern meaning given to 'authorship' is tantamount
to equating it with the act of making the arrangement and paying for the
creation of the work. This definition of authorship confuses the concept
of authorship with that of ownership. (This case is also discussed under
the Section on "Copyright' supra at pp 235-237.) More useful guidelines
on authorship may be found in English cases: see, for example, Cala
Homes v Alfred McAlpine Homes East Ltd [1995] FSR 818, where
architectural drawings were drawn by a draughtsman following very
detailed instructions of X, the court decided that X was a joint author
even though he did not 'push the pen'; Ray v Classic FM pic [1998] FSR
622, where it was emphasised that an author was the person who assumed
'a direct responsibility for what actually appears on the paper'.

Infringement

The monopoly conferred on the registered proprietor of a registered
design is an exclusive right to make or commercially exploit an article in
respect of which the design is registered and to which that design or one
not substantially different from it has been applied: see s 7 of the UK
Act.

The principles which have been applied by our courts when making the
comparison between the registered design and the design applied to the
defendant's article are as follows:

(1) The eye to judge the differences and similarities is the eye of the
customer or potential customer: Risis Pte Ltd v Polar Gems Pte Ltd
& Ors [1995] 1 SLR 88: Sebel Furniture Ltd v Tiong Hin Engineering
Pte Ltd [1999] 2 SLR 662.

(2) The court must bear in mind the doctrine of 'imperfect recollection'
(except in cases where the customer is a specialist in the industry):
Sebel Furniture Ltd (supra); Essen System Builders (S) Pte Ltd &
Anor v Essential Roofing Systems Pte Ltd & 2 Ors (Suit 63/1995,
unreported judgment dated 31.10.1997).

(3) It is the general impression of the articles as a whole which is
important: Risis Pte Ltd (supra): Sebel Furniture Ltd (supra).

(4) Where the design is a common article, there is no infringement if
there exist minor differences between the two designs: Risis Pte Ltd
v Polar Gems Pte Ltd & Ors (supra); Essen System Builders (supra).

252 SAL Annual Review 2000

(5) Where there is a 'striking feature' in the registered design, and this
feature is absent from the defendant's design or has been altered
such that it is not recognised, it is impossible to say that one is an
imitation of the other: Sebel Furniture Ltd (supra).

In the Hunter Manufacturing case, the approach used by the trial judge
was this: where the design is of limited novelty in that only limited features
thereof are new, then equally small differences between the registered
design and the defendant's design would be sufficient to avoid
infringement. The Court of Appeal doubted that this was the correct
approach, preferring the following suggested in Laddie, Prescott & Vitoria,
The Modern Law of Copyright and Designs (2nd Ed, 1995) (para 35.15):

'(1) Assess what are the essential or significant features of the registered
design having regard to such matters as the statement of novelty,
relevant prior art and functional exclusions; and then,

(2) Compare the registered design with the alleged infringement to assess
whether visually the latter has incorporated all the design features
which, as a result of step (1), are considered essential parts of the
registration.'

The Court of Appeal elaborated that in step (2), the comparison exercise
conducted must have regard to the design as a whole; there will be no
infringement, if the alleged infringement is substantially different from
the registered design looked at as a whole. Further, attention should be
focused on those features which have eye appeal, and features of shape
or configuration which are dictated solely by the function and methods
or principles of construction are excluded, as required by s 7(6) of the
UK Act.

The Court of Appeal found that the general effect of the two designs
was substantially the same, concluded that there was infringement, and
reversed the finding of the trial judge. One reason was that the
'outstanding' feature in the registered design - the modular design of the
electrical meter box - was present in both the plaintiffs' and the
defendants' boxes. To this extent, the test adopted by the Court of Appeal
appears to be a refined version of the 'striking feature' test (see principle
No (5) above). The Court also took into account the fact that the shapes
and sizes of the two boxes were the same, commenting that '[sjize as a
concept is encompassed in the definition of shape and configuration' (at
432). This remark should not be taken out of context; where the two
designs differ only in size, that is, one design is a bigger version of the
other, that in itself cannot avoid infringement.

Patents

Considering that we saw only four patent cases between 1995 (when our
Patents Act (Cap 221, 1995 Ed), hereafter 'Patents Act 1994', came into
force) and 1999, 2000 was a bumper year with a harvest of three cases,
with two from the Court of Appeal.

Intellectual Property Law 253

Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2000] 3 SLR 717 and
Genelabs Diagnostics Pte Ltd v Institut Pasteur & Anor [2001] 1 SLR 121
contain the first pronouncements from our highest appellate court on the
fundamentals of patent law: novelty, inventive step, utility, sufficiency of
disclosure, and infringement. The third case of the year, Flexon (Pte) Ltd
v Bean Innovations Pte Ltd & Anor [2001] 1 SLR 24 examines the scope
of the action for 'groundless threats'.

Invention vs discovery

The Patents (Amendment) Act 1995 (Act 40 of 1995) deleted s 13(2) of
the main Act. This was the provision which excluded the patenting of
certain matters as such, including discoveries, scientific theories, and
computer programs.

A question may arise as to the implication arising from the deletion of
this provision, in particular, whether it is intended to allow patenting of
the previously excluded matters. As far as discoveries are concerned, they
remain unpatentable subject-matter. This declaration came from the Court
of Appeal in Merck & Co Inc v Pharmaforte Singapore Pte Ltd (supra).
The patent in suit comprised, inter alia, a purer form of a known
compound, statin. There was a myriad of purification processes which
could be used to purify statin. On the question whether there was an
inventive step, the patentee argued that it was not known at the priority
date that statin contained impurities, and therefore it would not have
been obvious to the skilled addressee to use the known processes to purify
statin. (For more details, see 'Inventive Step' infra.) In the view of the
Court of Appeal, what the patentee had achieved was a discovery, and
that did not amount to an invention (at 743).

Novelty

Novelty in an invention requires that it has not been made available to
the public as at the priority date: see s 14 of the Patents Act 1995.
Together, Merck and Genelabs Diagnostics Pte Ltd v Institut Pasteur &
Anor [2001] 1 SLR 121 established two fundamental principles governing
novelty.

First, there is a rule against 'mosaicing' the prior art in the assessment of
novelty: Von Heydon v Nenstadt (1880) 50 LJ Ch 126. Therefore, as a
general rule, prior art documents should not be read collectively but
individually, to determine what information each contained. An exception
to this rule appears to be the case where a later document referred to in
an earlier document or where a series of papers, which formed a series
of disclosures, referred to each other: Sharpe & Dohine Inc v Boots Pure
Drug Co Ltd (1927) 44 RFC 367. In this regard, the Court of Appeal in
Genelabs contributed its views on the extent to which one is justified to
refer to the earlier document (at 130):

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'Would one therefore be justified to read the entire earlier document with
the later document as if they were one or does one confine such reading to
only that part or those parts of the earlier document which are referred to
in the later document? As a matter of logic, it seems to us that only that
part or those parts of the earlier document which are referred to in the
later document should be so read. To go beyond that would be to read
into the later document information which played no part in the thesis
advanced therein. That would be inconsistent with the general principle
that in determining the meaning of a document, regard may be had only to
what is stated in the document itself.'

Second, when determining whether an invention covered by the patent
has been anticipated by each disclosure in the prior art, the question to
ask is: does following the teachings in that disclosure inevitably lead to
the invention? If the answer is 'yes', the invention is not novel. The form
of this inquiry hails from General Tire & Rubber Co v Firestone Tyre &
Rubber Co Ltd & Ors [1972] RFC 457, and Merrell Dow Pharmaceuticals
Inc & Ors v HN Norton & Co Ltd [1996] RFC 76. The Court of Appeal
in Genelabs elaborated on this formula (at 129):

'The prior disclosure must not only identify the subject matter of the claim
in the later patent, it must do so in a way that enables the skilled man to
make or obtain it, a kind of enabling disclosure.'

An 'enabling disclosure' is a requirement in patent law that the
specification of the patent must disclose the invention clearly and
completely for it to be performed by a person skilled in the art (for
further details on 'enabling disclosure', see 'Sufficiency of Disclosure',
infra). If the skilled person carries out experiments based on the disclosure
in the prior art to see if it results in the invention, it is important that he
follows the directions closely; otherwise, even if these experiments were
to lead to the invention covered by the patent, they could not be relied
upon to show that the teachings in the prior art would inevitably have
the consequence of producing the invention. This was what happened in
Merck. The results of the experiments conducted by the defendants' expert
were discounted because he had modified the experimental environment.

The 'would-it-inevitably-lead-to-invention' question is the overriding
formula for determining novelty. But various other inquiries may exist
within this formula. In Merck, the patent related to a purer form of statin,
a known compound with a known use, namely, as an anti-
hypercholesteremic agent. It was argued that a purer form of a known
compound was per se not novel, and that it was novel only if it had a
further advantage over the known compound. The Court of Appeal, while
rejecting both arguments, indicated that they should be subsumed under
the investigations whether the invention had been anticipated by prior
art (that is, within the 'would-it-inevitably-lead-to-invention' inquiry) or
whether it involved an inventive step.

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To answer the 'would-prior-art-inevitably-lead-to-invention' question, it
is important to identify the crux of the invention. In Genelabs, the patent
in suit covered inter alia HIV-2, a retrovirus capable of causing AIDS in
man. As at the priority date, only one group of retrovirus was known to
cause AIDS in man, ie HIV-1. The challenge to the novelty of HIV-2
was based on 4 prior publications. Three of them reported the isolation
of a virus (SIV) in monkeys with an AIDS-like syndrome. The fourth
was a study of certain Senegalese people who were infected with a virus
that was closely related to SIV but who showed no signs of AIDS.
Subsequent studies showed that SIV was in substance the same virus as
HIV-2. The Court of Appeal identified the crux of the invention as being
the discovery that another virus SIV could infect humans with AIDS.
The focus of the inquiry then shifted to the question: did any of the four
prior documents show that SIV had the capacity to infect humans with
AIDS? The answer to this question was 'no', and that led to the conclusion
that the prior documents would not inevitably lead to the discovery of
HIV-2.

Inventive step

When determining the issue of inventive step, the approach is that laid
down in Windsurfing International v Tabnr Marine (Great Britain) [1985]
RFC 59: Merck (at 731): and Genelabs (at 136). This approach entails
four steps:

(1) Identify the inventive concept embodied in the patent in suit.

(2) Assume the mantle of the normally skilled but unimaginative
addressee in the art at the priority date and impute to him what
was. at that date, common general knowledge in the art in question.

(3) Identify what, if any. differences exist between the prior art and the
alleged invention.

(4) Ask whether, viewed without knowledge of the alleged invention (ie
without hindsight), those differences constitute steps which would
have been obvious to the skilled man or whether they require any
degree of invention.

In Merck, the dispute centred upon the conclusion reached in step (4).
The patent in suit comprised a purer form of a known compound. There
was a myriad of standard purification processes known at the priority
date. The trial judge found that, having regard to these known purification
processes, the invention was obvious. In reaching this conclusion, the trial
judge applied the 'well-worth trying' test (ie the invention is obvious if
the skilled person would have felt that the invention was well worth trying,
to solve a problem or achieve a beneficial result: John-Manville's Patent
[1967] RFC 479) and the 'lying on the road' test (ie the invention is
obvious if the prior art was 'lying on the road' and there for the research

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worker to use: Genentech Inc's Patent [1989] RFC 147). The Court of
Appeal upheld this conclusion.

In Genelabs, the dispute centred upon the application of step (2), in
particular the knowledge which the skilled addressee has, having regard
to the prior art. The prior art relied on comprised the same four
documents used to attack the novelty of the invention. It was argued
that a skilled addressee would gather from these documents the knowledge
that there was another virus SIV which infect humans with AIDS, and
that if the assessment in step (4) had been made with this piece of
information in mind, the skilled addressee would have found the isolation
of the SIV/HIV-2 virus obvious. The premise of this argument was false;
the Court of Appeal repeated its earlier finding made on the issue of
novelty, that the prior documents disclosed that SIV infected monkeys
but did not go further to indicate that SIV was pathogenic to humans. It
follows that the argument must fail. The Court of Appeal specifically
warned against the use of hindsight or 'ex post facto rationalisation based
on new discovery made after the publication of the four documents' (at
136) in this inquiry.

Utility

Under the UK Patents Act 1949, inutility was an express ground for
revocation of a patent: see s 32(l)(g). The scope of this ground was
explained in the Report of the Banks Committee to Examine the Patent
System and Patent Law (Cmnd. 4407): that a patent was invalidated if it
had a claim which covered a mechanism or a process which was useless
for the purposes indicated by the patentee, ie which did not produce the
result or one of the results claimed, expressly or impliedly, in the
specification. The Report of the Banks Committee went on to observe
that this ground could 'bear harshly in those cases where a claim of a
patent can be interpreted to cover something that lacks utility as well as
things that certainly possess it' (see para 376 of the Report). When the
UK Patents Act 1949 was repealed and replaced by the 1977 Act, inutility
was left out of the new Act. There is a view that inutility is no longer a
ground of revocation, and that what used to be covered by inutility is
now dealt with within the current requirement for 'complete and clear
disclosure' (see ss 14(3) and 72(1 )(c) of the 1977 Act) and/or that for
'industrial applicability': see Cornish, Intellectual Property (4lh Ed, 1999)
at paras 5-53 and 5-94. (For more discussion of 'utility' in the context of
industrial applicability, see 'Industrial Applicability', infra.)

In Singapore, the Court of Appeal has taken the opposite stand on this
matter in Merck. The discussion on utility arose in the context of novelty.
The trial judge concluded that the purer form of statin, a known
compound, was not novel because it lacked utility in the sense that it did
not have any improved performance or therapeutic advantage as
compared to the existing statin as an anti-hypercholesteremic agent. On

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appeal, it was argued that in view of the absence of s 32(1 )(g) in the UK
Patents Act 1977 (and in our Patents Act 1994), utility was not a
prerequisite to acquiring a patent. The Court of Appeal disagreed, noting
that the patent legislation before 1949 did not contain such a provision
as s 32(1 )(g) but that had never precluded the courts from considering
the question of utility in determining patentability. Reference was made
to Badische Anilin and Soda Fabrik v Levinstein [1887] 4 RPC 449 where
the Lord Chancellor thought that it was 'obvious' that an invention must
be useful, even though the word was not found in the Patent Act 1883.
In other words, utility was a common law concept. This common law
concept was indeed given statutory recognition in the UK Patents Act
1949 but, as noted above, the Banks Committee had some reservations
about it.

The Court of Appeal applied the meaning attributed to 'utility' at common
law: 'whether by [the directions in the complete specification] the effects
which the patentee professed to produce could be produced' (per
Lindley LJ in Lane Fox v Kensington & Knightsbridge Electric Lighting
Co Ltd [1892] 3 Ch 431). In this case, there was nothing to suggest that
the patent could not produce the purer form of statin, and therefore any
objection based on inutility must fail.

Industrial applicability

The term 'utility' in English/Singapore patent law relates to the workability
of the invention (see above on 'Utility'). In the US, the requirement of
'utility' set out in 35 USC §101 (1988) has a different meaning: an
invention is 'useful' if it confers to society some "specific benefit in
currently available form' and use in experimental research or some
potential future use will not suffice: Brenner v Mason 383 US 519 (1966).
There is a view that this American notion of 'utility' - that the invention
must have a known use at the time of the patent application - also exists
in the UK, but within the requirement of industrial applicability. The
authority often cited for this proposition is Chiron Corporation v Murex
Diagnostics Ltd [1996] RPC 535 where the English Court of Appeal held
that the claims in the patent for Hepatitis C virus relating to the
polypeptides which did not have any known use or purpose (as opposed
to those polypeptides which would encode the Hepatitis C virus) were
invalid for lack of industrial application.

In Singapore, the definition of 'industrial applicability' is the same as
that in the UK: an invention shall be taken to be capable of industrial
application if 'it can be made or used in any kind of industry, including
agriculture' (see s 16(1) of our Patents Act 1994; section 4(1) of the UK
Patents Act 1977). Whether we also have the doctrine of utility as laid
down in the Chiron case is unclear. In Merck, this was not an issue before
the Court of Appeal, but it was raised at the trial before Lai Kew Chai J.
The learned judge did not find it necessary to receive or apply the doctrine

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of utility into the law on industrial application, having invalidated the
claims in the patent for a purer form of statin for lack of novelty and
inventive step. However, he did in the course of his judgment make this
remark (at para 46 of Suit 413/1999, unreported judgment dated
22.12.1999):

'It would be in my view controversial to resurrect the doctrine of utility as
bearing upon whether an invention is capable of industrial application, under
the law of Singapore. We should not have to read beyond the plain words
of section 16(1) of the Act ...'

The plain words of s 16(1) refer to the capability of the invention to be
made or used in any industry.

The 'doctrine of utility' in patent law acquires particular significance in
the patenting of gene sequences or parts thereof. With the completion of
the Human Genome Project this year, there might be temptation to file
applications to patent the gene fragments before unravelling their use or
function (if any). In the US, this would prove to be difficult. In the early
1990s, when the National Institutes of Health (NIH) filed applications in
the US to patent gene fragments with no known function, the US Patent
Office had issued a preliminary rejection of these claims citing the ground,
inter alia, that these claims lacked patentable utility. Further, on 5 January
2001, the US Patent Office, after much consultation with academic and
industry, issued new guidelines which raise the bar posed by this 'utility'
criterion.

Sufficiency of disclosure

A patent may be revoked if the specification does not disclose the
invention clearly and completely for it to be performed by a person skilled
in the art: s 80(l)(c) of our Patents Act 1994.

Guidelines as to how this 'clear and complete disclosure' can be satisfied
are given in Genelabs. The claim in the patent in suit covered a sequence
of amino acids or part thereof which raised a specific immunological
reaction with the antibodies against a HIV-2 retrovirus. The part of this
sequence which raised this specific reaction was the 18mer sequence, but
this was not disclosed in the claim. The appellants argued that such failure
of disclosure invalidated the claim under s 80(l)(c). The Court of Appeal
cited with approval the following passage in Mentor Corporation & Anor
v Hollister Inc [1993] RFC 7 (at 10):

'The question for decision in this case is whether the specification discloses
the invention clearly enough and completely enough for it to be performed
by a person skilled in the art. This obviously is a question of degree.
Disclosure of an invention does not have to be complete in very detail, so
that anyone, whether skilled or not, can perform it. Since the specification
is addressed to the skilled man, it is sufficient if the addressee can

Intellectual Property Law 259

understand the invention as described, and can then perform it. In
performing the invention the skilled man does not have to be told what is
self-evident, or what is part of the common general knowledge, that is to
say, what is known to persons versed in the art ...'

In this case, the appellants' contention of insufficient disclosure was
dismissed because their own expert witness in his testimony agreed that
once the sequence of amino acids was disclosed, as it had been done in
the claim, the common general knowledge existing at the priority date
would allow the skilled addressee to determine that the part of the
disclosed sequence which raised the specific immunological reaction with
the antibodies against a HIV-2 retrovirus was the 18mer sequence.

Infringement

Two issues can arise in the determination of infringement. First, whether
there is an infringing act prohibited by s 66 of the Patents Act 1994.
Second, whether there is an infringement of the patent monopoly, a
question which involves a construction of the claim of the specification
of the patent, as interpreted by the description and any drawings contained
in that specification: see s 113(1) of the Patents Act 1994.

The ambit of s 66 was considered by the High Court in Genelabs (Suit
1762/1998, unreported judgment dated 31.3.2000). The second defendants
were the exclusive distributors in Malaysia of the first defendants'
infringing test kits. In the trap purchase, the second defendants had acted
as a conduit between the first defendants and a buyer in Malaysia,
transporting the infringing test kits from Singapore to Malaysia. Section
66(1 )(a) provides that a person infringes a patent for the invention if he
does any of the following acts in Singapore in relation to the invention
without the consent of the proprietor of the patent:

'(a) where the invention is a product, he makes, disposes of, offers to
dispose of, uses or imports the product or keeps whether for disposal
or otherwise:

(b) ...'

Tay Yong Kwang JC held that 'disposal' would include sale but the word
had a wider meaning in this section, including disposing of the infringing
products qua conduit. Such a role was different from that of a mere
warehouseman or carrier, and hence Kalman v PCL Packaging (UK)
Ltd [1982] FSR 406 (which held that British Airways was not liable for
warehousing or carrying the goods into the UK) did not assist the second
defendants. The learned judicial commissioner was satisfied that the
second defendants had 'in Singapore, disposed of or offered to dispose
of or, at the very least, had kept the infringing kits for disposal or
otherwise within the meaning of s 66(1 )(a) of the Patents Act' (at para
222). This conclusion was not challenged on appeal.

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What is more interesting in the judgment is Tay JC's views on an
argument advanced by the second defendants arising from the application
of the principle of territoriality. It is this principle that explains the need
for the infringing act to be committed in Singapore; this is expressly
provided for in s 66(1). Thus, for example, the disposal of the infringing
product must take place in Singapore. Similarly, the offer to dispose of
the infringing product must be made in Singapore. On the latter, the
second defendants argued that there was a further restriction: it must be
an offer made in Singapore to dispose of the product in Singapore. This
proposition finds support in Kalman v PCL Packaging (UK) Ltd (above),
where Falconer J said (at 417-418):

'In section 60(1 )(a) [of the UK Patents Act 1977, which is identical to the
Singapore provision], ... of the enumerated acts which if performed in the
United Kingdom would be infringing, the one immediately preceding the
words 'offers to "dispose of" is the one I have just considered, "disposes
of". To be an infringement, that immediately preceding act "disposes of"
must be an act within the United Kingdom. In my view, the legislature was
intending in the expression "offers to dispose of" to prohibit offering in
the United Kingdom to do the immediately preceding prohibited act, that
is, disposing of the product in the United Kingdom.'

The second defendants' argument was that the disposal of the test kits
took place in Malaysia, and hence, their offer to dispose of the goods
was not one to dispose of them in Singapore. The premise of this
argument - that the disposal of the test kits took place in Malaysia - is
questionable. The fact that the contract stated that the test kits would be
delivered to Malaysia does not mean that the disposal did not take place
in Singapore. If that was the case, a sale concluded in Singapore to sell
infringing products where the products would be exported out of
Singapore by the purchaser would not qualify as a disposal of the goods
in Singapore.

Tay JC rejected the second defendants' argument for a different reason.
In his view, the restriction imposed by Falconer J could not be supported
by a proper reading of s 66(l)(a), since it required juxtaposing another
'in Singapore' at the end of each of the verbs therein, and it would make
little sense where some verbs are concerned to say 'in Singapore, he uses
or imports the product in Singapore'. If it is an infringing act so long as
the offer to dispose is made in Singapore, acts which are caught would
include an offer made in Singapore to sell infringing products which would
be manufactured in Thailand and sent directly to Indonesia for resale or
use there. Such a conclusion entails a very liberal application of the
principle of territoriality.

Construction of patent claims has been considered in the following High
Court decisions: V-Pile Technology (Luxembourg) SA & Ors v Peck
Brothers Construction Pte Ltd [2000] 3 SLR 358; Merck & Co Inc v
Pharmaforte Singapore Pte Ltd (Suit 413/1999, unreported judgment dated

Intellectual Property Law 261

22.12.1999); Flexon (Pte) Ltd v Bean Innovations Pte Ltd & Anor [2001]
1 SLR 24. All these cases adopted the 'purposive approach' laid down in
the leading English authorities, Catnic Components Ltd v Hill & Smith
Ltd [1982] RFC 183, and Improver Corporation v Remington Consumer
Pte Ltd [1990] FSR 181.

The 'purposive approach' has now received the endorsement of the Court
of Appeal in Genelabs. This approach as restated by Hoffman J (as he
then was) in Improver (above) is as follows:

'The language should he given a "purposive" and not necessarily a literal
construction. If the issue was whether a feature embodied in an alleged
infringement which fell outside the primary, literal or a contextual meaning
of a descriptive word or phrase in the claim ("a variant") was nevertheless
within its language as properly interpreted, the court should ask itself the
following three questions:

(1) Does the variant have a material effect upon the way the invention
works? If yes, the variant is outside the claim. If no -

(2) Would this (ie the variant had no material effect) have been obvious
at the date of publication of the patent to a reader skilled in the art.
If no, the variant is outside the claim. If yes -

(3) Would the readers skilled in the art nevertheless have understood from
the language of the claim that the patentee intended that strict
compliance with the primary meaning was an essential requirement of
the invention. If yes. the variant is outside the claim.

On the other hand, a negative answer to the last question would lead to
the conclusion that the patentee was intending the word or phrase to have
not a literal but a figurative meaning (the figure being a form of synecdoche
or metonymy) denoting a class of things which included the variant and
the literal meaning, the latter being perhaps the most perfect, best-known
or striking example of the class."

The Court of Appeal emphasised that the question of infringement was
a question of fact. In Genelabs, the alleged infringing test kits contained
the same 18mer sequence which raised the specific immunological reaction
detailed in the patent claim, but it also had five extra amino acids extra
(23mer) which were not found in the claim. The trial judge had found
that the 23mer was no more than a sticking and stablising agent for the
all-important 18mer on the nitrocellulose strip (see finding of Tay JC in
para 211 of his judgment). In other words, it was an immaterial variant.
The Court of Appeal found no sufficient basis to interfere with the trial
judge's conclusion of infringement.

Groundless threats

Section 77 of the Patents Act 1994 gives a right to bring an action for
•groundless threats' - that is, threats of infringement proceedings which
are unjustified either because the patent is invalid and/or the acts in

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respect of which proceedings were threatened did not constitute an
infringement. This provision is derived from s 70 of the UK Patents Act
1977.

To constitute a threat under s 77, the document (which is said to contain
the threat) must be looked through the eyes of a reasonable and normal
recipient for the purpose of determining if there can be a reasonable
argument that it will be understood as a threat of patent proceedings:
Flexon (Pie) Ltd v Bean Innovations Pte Ltd & Anor [2001] 1 SLR 24,
following English decisions on s 70 of the UK Patents Act 1977.

In Flexon, the patentee's lawyers had sent a letter to the manufacturer
of a mailbox system which allegedly infringed the patent in suit,
threatening to commence legal proceedings unless the manufacturer
immediately ceased 'making prototypes of, manufacturing, supplying,
delivering, installing, selling and/or offering to sell the said mailbox
system'. It was not disputed that this letter contained threats, for the
purposes of s 77. What was in issue was the correct interpretation of
s 77(4) which provides that: 'Proceedings may not be brought under this
section for a threat to bring proceedings for an infringement alleged to
consist of making and importing a product for disposal or of using a
process'.

Clearly, a threat made to the manufacturer or importer of the product or
user of the process in respect of making or importing the product or
using the process, falls within this exception. But the patentee in Flexon
wanted the High Court to adopt a wider reading of s 77(4), arguing that
this subsection applies whenever the threat is made to manufacturers and
importers of the patented product and users of the patented process,
regardless of the type of infringing act complained of. The High Court
held that this was not the natural meaning of the subsection, preferring
to follow some English cases (Cavity Trays Limited v RMC Panel Products
Limited [1996] RFC 361, Brain v Ingledew Brown Bennison [1997] FSR
511) which held that threats relating to promotion, marketing and sale
were actionable, even if made to the primary infringers.

Transitional provisions

The Patents Act 1994 came into force on 23 February 1995. Prior to that,
patent protection was acquired in Singapore by re-registering patents
registered in the UK: see Registration of United Kingdom Patents Act
(Cap 271, 1985 Ed). The position of those UK patents which had been
re-registered in Singapore immediately before 23 February 1995 is dealt
with in s 116(3): they are treated as if they were patents granted under
the Patents Act, subject to any modification as may be prescribed. An
express modification is made in s 116(3) itself: the term of protection of
such 'old' patents shall date from the date of the patent in the UK and
they remain in force only so long as they have not been revoked in the

Intellectual Property Law 263

UK.

However, whether a particular provision in the Patents Act 1994 applies
to an 'old' patent is ultimately a question of statutory interpretation:
Genelabs. The patent in suit was re-registered in Singapore in 1993,
therefore coming within the purview of s 116(3). One of the plaintiffs
was suing in its capacity as exclusive licensee (see s 74). The exclusive
licence agreement was signed in 1986, but was registered in Singapore
only in 1999, shortly before the commencement of the trial of the action.
An issue arose as to the effect of this late registration. Under the old
law, the exclusive licensee would not have been prejudiced by such late
registration; there was only a penalty for non-registration, namely,
inadmissibility of the document in court as evidence of title as licensee:
see s 11(2) of the Registration of United Kingdom Patents Act. Under
the Patents Act 1994, s 75 requires the licence agreement to be registered
within 6 months of the date of the document (or where it is 'not practical'
to do so within this period, to register it 'as soon as practicable
thereafter'), failing which no award of damages or order for an account
of profits in respect of any infringement occurring before the registration
of the transaction will be made. It was very clear in the mind of the
Court of Appeal that s 75 did not apply in this case, since it was impossible
for the exclusive licensee to comply with s 75, the 6-month period having
expired before s 75 came into force on 23 February 1995. Acknowledging
that the situation was less clear in cases where the 6-month period had
not expired on the operative date, the Court of Appeal resolved the
matter by going 'back to basics', and applying the established rule of
construction that 'the legislature must not be deemed to have intended
to affect existing rights unless by express provision' (at 145). In this case,
s 116(3) did not qualify as such express provision. The Court of Appeal
concluded that s 75 had no retrospective effect on transactions which
occurred before its operative date.