Intellectual Property Law

Citation(2005) 6 SAL Ann Rev 334
Date01 December 2005
Published date01 December 2005
Introduction

16.1 There was a bumper crop of intellectual property (‘IP’) cases in the year under review. Of these cases, the authors have decided to review six cases concerning trade marks and passing off, and one case each relating to copyright, registered designs, patents and breach of confidence. Many of these cases touched on a number of knotty points (such as whether there should be trade mark use of a sign for purposes of infringement and what principle is to be adopted when applying the purposive approach to construing a patent claim) and are likely to be influential in establishing our own model of IP law. They have also made the reviewers” task particularly challenging, which necessitated a division of workload. Consequently, the trade marks and passing off cases were reviewed by Tan Tee Jim SC whilst Ng-Loy Wee Loon reviewed the cases falling within the other species of IP law.

16.2 Of the ten cases reviewed, four of them were decided by the late Lai Kew Chai J, a judge who over the years had made significant contributions to the development of our IP law. Indeed, his last decision was in Polo/Lauren Co LP v Shop In Department Store Pte Ltd[2005] 4 SLR 816 which is reviewed below. He will be missed by many in the IP law circle in Singapore.

Trade marks
Shape marks

16.3 Under the old law, it was difficult to register the three-dimensional shape of a product as a trade mark. In s 2 of the repealed Trade Marks Act (Cap 332, 1992 Rev Ed), the word ‘mark’ was then defined as including ‘a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof’, and the term ‘trade mark’ meant:

… a mark used or proposed to be used in relation to goods … for the purpose of indicating or so as to indicate, a connection in the course of trade between the goods … and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person …

16.4 In Re Coca-Cola Co[1986] 1 WLR 695, the applicants unsuccessfully applied to register the shape of their bottle as a trade mark in respect of non-alcoholic beverages. The shape was described as consisting of, inter alia, ‘the distinctive shape and appearance applied to a bottle when used as a container for the goods … as shown in the accompanying representation’. The House of Lords held that the word ‘mark’ both in its normal meaning and in its statutory definition was apt only to describe something which distinguishes goods rather than the goods themselves. Lord Templeman said that ‘a bottle is a container not a mark’ and that the application was another attempt to expand the boundaries of IP and to convert a protective law into a source of monopoly. He added (at 698) that the possibility of being able to register a container as a trade mark raised:

… the spectre of a total and perpetual monopoly in containers and articles achieved by means of the Act of 1938. … In my opinion, the Act of 1938 was not intended to confer on the manufacturer of a container or on the manufacturer of an article a statutory monopoly on the ground that the manufacturer has in the eyes of the public established a connection between the shape of the container or article and the manufacturer. A rival manufacturer must be free to sell any container or article of similar shape provided the container or article is labelled or packaged in a manner which avoids confusion as to the origin of the goods in the container or the origin of the article.

16.5 This view is now no longer valid in Singapore, as the definition of a ‘sign’ under our Trade Marks Act (Cap 332, 2005 Rev Ed) (‘TMA’) expressly includes ‘shape’ and ‘aspect of packaging’. This represents one of the most significant changes to our new trade mark law.

16.6 The result is that a shape is now in principle registrable as a trade mark, and the test for determining whether it is registrable or not is the same as that for any other sign. Specifically, the shape must serve as a badge of origin and must not be descriptive of the goods in respect of which the application for registration is made (see, eg, Yakult Honsha KK”s Trade Mark Application[2001] RPC 39). This is determined by reference to the goods in respect of which registration is sought as well as the perception of the relevant average consumers of the goods (see, eg, Linde AG v Deutsches Patent-und-Markenamt[2003] RPC 45 at [41]).

16.7 In Nation Fittings (M) Sdn Bhd v Oystertec Plc[2006] 1 SLR 712 (‘Nation Fittings’), the plaintiff unsuccessfully tried to invoke the new law in respect of its trade marks which were registered under the old law. The marks consisted of two-dimensional representations of an aspect of pipe fittings, as shown below:

16.8 The issue that was phrased was whether para 2(1) of the Third Schedule to the TMA operated to render or ‘convert’ these marks (registered under the old law) into three-dimensional marks under the TMA, without the need to make a separate application for registration under the Act. The issue was important because if the paragraph did not so render or ‘convert’ the marks, it would seem that the marks were not considered registered under the TMA (in the absence of a separate application) and the plaintiff therefore had no rights under the Act in respect of the marks.

16.9 Paragraph 2(1) of the Third Schedule to the TMA states that:

Any existing registered mark, whether registered in Part A or B of the register kept under the repealed Act, is a registered trade mark for the purposes of this Act.

16.10 The term ‘existing registered mark’ is defined in the Third Schedule as a trade mark registered immediately before 15 January 1999. This suggests, as the plaintiff argued, that trade marks registered under the old law would automatically also become registered trade marks under and for the purposes of the new law.

16.11 Andrew Phang Boon Leong J (as he then was), however, did not agree with the suggestion. He preferred to construe the paragraph from the perspective of its purpose, the purpose being to ensure continuity and predictability. He also said that the paragraph should be construed as to avoid the concomitant chaos that would ensue from the conclusion or

assumption that existing trade marks registered under the old law lapsed as a result of the introduction of the new law. So construed, he held that a more reasonable interpretation of para 2(1) of the Third Schedule was that it continued to provide protection under the new law for marks registered under the old law only in respect of ‘the form they were originally registered’. Hence (at [28]):

[T]rade marks already registered under the old law as two-dimensional marks would be treated as continuing as registered (two-dimensional) trade marks under the TMA without the need for the additional, and practically otiose, step of registration under the TMA.

16.12 He added that any other interpretation would result in the existing marks obtaining additional rights. Such rights could not be acquired ipso facto, but only by filing a fresh application for registration under the new Act, as the plaintiff had done.

16.13 This decision is to be contrasted with the position in the UK. In Philips Electronics NV v Remington Consumer Products Ltd[1999] RPC 809 (‘Philips’), the UK Court of Appeal had regard to Sched 3 to the UK Trade Marks Act 1994 (c 26) (‘the UK 1994 Act’) and said that a trade mark registered under the old law had effect as if registered under the UK 1994 Act so that its validity was to be considered under the UK 1994 Act. The relevant paragraph of Sched 3 (namely, para 2(1)) reads as follows:

Existing registered marks (whether registered in Part A or B of the register kept under the 1938 Act) shall be transferred on the commencement of this Act to the register kept under this Act and have effect, subject to the provisions of this Schedule, as if registered under this Act.

16.14 It is evident that this paragraph has essentially the same purport as our para 2(1) — that is, a trade mark registered under the old law shall continue to be protected under the new law. There is no qualification to the continual protection.

16.15 In a later Philips case (namely, Koninklijke Philips NV v Remington Consumer Products Ltd[2005] FSR 17 (‘Philips 2005’), Rimer J said (at [13]) that:

One of the significant changes introduced by the [EU] Directive and the [UK 1994] Act was the extension of trade mark protection to the shape of goods, or to three-dimensional marks. The 452 mark is a two-dimensional drawing and was in fact registered in 1993, before the [UK 1994] Act came into force. It is, however, common ground that, if its registration was valid, it should be treated as also covering a three-dimensional shape.

16.16 There therefore appears to be a general understanding in the UK that a trade mark registered under the old law continues to receive the same protection under the new law, so that registration of a two-dimensional mark under the old law is to be considered as covering a three-dimensional shape under the new law. This means that the validity of the registration of the three-dimensional shape is to be adjudged according to the new law. This was precisely what the court in Philips 2005 did. The facts of that case are briefly these.

16.17 The plaintiff was the registered proprietor as of 20 April 1993 (that is, prior to the enactment of the UK 1994 Act) of the following two-dimensional mark for an electric shaver:

16.18 The plaintiff sued the defendant for infringing the registered mark by selling rotary shavers with heads identical with or confusingly similar to the mark. The defendant not only denied infringement but counterclaimed for revocation on the ground that the mark was not registrable pursuant to s 3(2)(b) of the UK 1994 Act (equivalent to our s 7(3)(b)) because it consisted exclusively of the shape of the...

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