Ang Lay See and Others v Solite Impex Pte Ltd

CourtCourt of Appeal (Singapore)
JudgeKarthigesu JA
Judgment Date06 February 1998
Neutral Citation[1998] SGCA 8
Citation[1998] SGCA 8
Defendant CounselToh Kok Seng and Mark Lim (Lee & Lee)
Plaintiff CounselJimmy Yim and Kelvin Tan (Drew & Napier)
Published date19 September 2003
Docket NumberCivil Appeal No 131 of 1997
Date06 February 1998
Subject MatterPatents and Inventions,Construction of statute,Intention of Parliament,Whether s 4 plain and unambiguous,Design is registered under United Kingdom Designs Act 1949,Whether local court to act as UK court or to include the appropriate local equivalents of grounds giving rise to the cancellation of registrations in the UK,Whether Parliament intends registration and subsequent protection in Singapore, through a UK registration, of designs commonplace in Singapore,Whether Act is passed to exclude from protection designs not novel in Singapore prior to UK registration,ss 1(4)& 11 Registered Designs Act 1949,What power does High Court have under s 4 of United Kingdom Designs (Protection) Act in Singapore,Statutory Interpretation,Purpose of United Kingdom Designs (Protection) Act (Cap 339),s 4 United Kingdom Designs (Protection) Act (Cap 339),Ownership


(delivering the grounds of judgment of the court): This appeal concerned the United Kingdom Registered Designs Act 1949 (the UK Act) and the United Kingdom Designs (Protection) Act (Cap 339) (the local Act). We allowed the appeal and now give our reasons for doing so.

2. The facts

At present, a design may not be registered in Singapore. A proprietor must register his design in the United Kingdom (the UK). Once registered, the proprietor enjoys a 25-year monopoly in the registered design, and, pursuant to the local Act, he is automatically accorded, for same period, the exclusive rights and privileges in the registered design in Singapore. Under s 4 of the local Act, nevertheless, the High Court may, on any of the grounds upon which a registration may be cancelled in the UK, deny him exclusive rights in the design in Singapore.

3.The respondents were and still are the registered proprietors of Registered Design No 2043962 (the design) in respect of frames and corner pieces under the UK Act. On 18 November 1995, they commenced an action against the appellants for the infringement of their registered design. On the same day, they obtained an Anton Pillar order and an interlocutory injunction against the appellants. The appellants applied for the discharge of the two orders but were unsuccessful. In their statement of claim filed on 11 December 1995, the respondents prayed for an injunction, delivery up of all infringing products, an inquiry into damages, payment of all sums found due and costs. By way of counterclaim filed on 31 January 1996, the appellants sought, inter alia, a declaration under s 4 of the local Act that the respondents had not acquired exclusive privileges and rights in the design in Singapore. In the appellants` particulars of objection filed on the same day, the appellants` main grounds of objection were that, first, the design was not novel in Singapore; and secondly, that the design differed from other designs published in Singapore before the date of its UK registration only in immaterial details or in features which were variants commonly used in the trade.

4.During the course of the trial in the court below, certain facts previously in issue were agreed upon by both parties. The appellants admitted that their corner piece was not substantially different from the respondents` registered design. The respondents, for their part, admitted that their design had been published in Singapore and applied to corner pieces prior to 19 December 1994, the date of the application for registration in the UK. Parties also agreed on the reliefs. In the event the respondents were to succeed, it was agreed that the respondents would be granted the injunction as sought, delivery up as claimed, damages agreed at $5,000 and costs at two-thirds of the taxed costs. The appellants` counterclaim was to be dismissed with two-thirds of the taxed costs awarded to the respondents. If the appellants were to succeed, the respondents` claim would be dismissed with costs, the appellants would be granted the declaration prayed for, damages to be assessed, interest thereon and costs.

5.The learned judge was therefore concerned only with the following two questions: (i). Whether the prior publication of the corner pieces in Singapore is sufficient ground for the High Court to declare under s 4 of the local Act that exclusive privileges and rights in the registered design have not been acquired in Singapore; and

(ii). Whether the photographic evidence shows that the registered design differs from designs published in Singapore only in immaterial details or features which are variants commonly used in the trade and accordingly, whether this is sufficient ground for the High Court to declare under s 4 of the local Act that exclusive privileges and rights in the registered design have not been acquired in Singapore.

6.The learned judge answered both questions in the negative. On the appeal, the appellants and respondents agreed that a ruling on the first issue would obviate the necessity of arguing the second issue, and accordingly, only the first issue was canvassed before us.

7. The relevant statutory context

It would be appropriate, at this juncture, to set out the three statutory provisions which were fundamental to the issue at hand.

8.Section 4 of the local Act provides:

The High Court shall have the power upon the application of any person who alleges that his interests have been prejudicially affected to declare that exclusive privileges and rights in a design have not been acquired in Singapore under the provisions of this Act upon any of the grounds upon which the United Kingdom registration might be cancelled under the law for the time being in force in the United Kingdom.

9.In respect of the grounds for cancellation mentioned in s 4 of the local Act, s 11(2) of the UK Act provides:

At anytime after a design has been registered, any person interested may apply to the Registrar for the cancellation of the registration of the design on the ground that the design was not, at the date of the registration thereof, new or on any other ground on which the Registrar could have refused to register the design and the Registrar may make such order on the application as he thinks fit.

10.The s 11(2) requirement that the design be `new` is amplified by s 1(4) of the UK Act, which provides:

A design shall not be regarded as new for the purposes of this Act if it is the same design -

(a) registered in respect of the same or any other article in pursuance of a prior application, or

(b) published in the United Kingdom in respect of the same or any other article before the date of the application,

or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade.

11. The decision of the learned judge in the court below

In deciding that prior use in Singapore was not a valid ground for the exercise of the High Court`s power under s 4 of the local Act, the learned judge premised his judgment on the words of s 1(4) of the UK Act, which only specify prior publication in the UK, and the UK Interpretation Act 1978, which does not include Singapore within its definition of the `United Kingdom`. He concluded from this that `the wording of s 4 of our Act and s 1(4) of the UK Act, as amended is clear and unambiguous.`

12.At the same time, the learned judge referred to other legislation to show that `the meaning of clear words has not been displaced`. This was because the Registration of United Kingdom Patents Act (Cap 271), now repealed, contained a clause similar to s 4 of the local Act, but it also went on to provide that such grounds `shall be deemed to include the manufacture, use or sale of the invention in Singapore `. This type of clause, which the learned judge termed an `express deeming provision`, is also present in the design legislation of Nigeria and Hong Kong. In addition, he found support in the case of Mem Co Inc v Cussons (International) Ltd [1974] RPC 7 in which Sedgwick J considered the Bermuda Patents, Designs and Trade Marks Act. This Act contained a `deeming provision` which specifically mentioned that the use of the trade mark in Bermuda prior to its registration in the UK was valid as a ground for the cancellation of a trade mark in Bermuda. The learned judge read the case thus: `The learned judge was of the view that but for the deeming provision in the subsection all matters affecting the validity of the mark had to be judged according to the position in UK under UK law.`

13.In the course of his judgment, the learned judge opined that, in all probability, the purpose behind the local Act was merely to confer upon British manufacturers who registered their designs in the United Kingdom the convenience of design protection in the British colonies and dependencies without re-registration.

14.In coming to his decision, the learned judge admitted that the situation was `unsatisfactory` but he felt that he was `reluctantly constrained by the plain words of ss 1(4) of the UK 1949 Act, as amended`.

15. The appeal

On the appeal before us, the appellants advanced five arguments: first, that there is no single plain and literal interpretation of s 4 of the local Act; secondly, that a tracing of the legislative history of design legislation in Singapore shows a legislative intent to include prior publication in Singapore as a ground upon which the High Court could declare that exclusive rights and privileges were not acquired in Singapore; thirdly, that the interpretation taken by the learned judge would lead to bizarre results; fourthly, a purposive interpretation should be preferred and that if necessary, the court should imply the phrase mutatis mutandis to s 4 of the local Act after the word `grounds` in the fifth line; and finally, pursuant to the provisions of the Constitution and the Republic of Singapore Independence Act 1965, all laws existing at that date ought to be interpreted with such necessary modifications and changes in recognition of Singapore`s independent status.

16. Whether the statutory provisions are ambiguous

Our first task was to consider the natural and ordinary meaning of s 4 of the local Act, and ss 11 and 1(4) of the UK Act. Upon a careful consideration of the three statutory provisions, we were unable, with respect, to agree with the learned judge that the import of these provisions are `plain and unambiguous`. As mentioned above, s 4 of the local Act specifies that a registration may be ignored on `any...

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