Bean Innovations Pte Ltd and Another v Flexon (Pte) Ltd

• Jurisdiction: Singapore
• Judge: Chao Hick Tin JA
• Judgment Date: 26 May 2001
• Neutral Citation: [2001] SGCA 42
• Citation: [2001] SGCA 42
• Date: 26 May 2001
• Published date: 19 September 2003
• Plaintiff Counsel: Wong Siew Hong and Ivy Tan (Infinitus Law Corporation)
• Docket Number: Civil Appeal No 78 of 2000
• Defendant Counsel: Jupiter Kong and Paul Teo (Drew & Napier)
• Court: Court of Appeal (Singapore)
• Year: 2001

JUDGMENT:

Cur Vult Adv

The facts

1. This appeal concerns a Singapore Patent No. 52288 for a device described as a mail box assembly with lockable delivery flaps. The patent was first registered in the United Kingdom as No GB 2 289 500. It was subsequently registered in Singapore and the certificate of registration was issued on 16 November 1998. The mailbox assembly was designed by the second appellant, Tan Mui Teck (Mr Tan). He is therefore the proprietor of the patent, and the first appellant, Bean Innovations Pte Ltd (Bean Innovations), in which Mr Tan is the managing director, is the exclusive licensee of the patent in Singapore. The mailbox assembly as designed by Mr Tan has a device of central locking system for individual mailboxes, which serves to prevent junk mails from being delivered into the individual mailboxes. For convenience, we shall refer to Mr Tans patent as the appellants patent, and the device or invention designed by him as the appellants device or invention.

2. The appellants device or invention has the following main features. Each of the mail box in the assembly has a delivery flap, called the postmans trap door, through which the mails are delivered, and a collection door for collecting the mails. The top edge of each postmans trap door is pivotally connected to a bar and the lower outer edge abuts against a portion of a stopper, called the trap door stopper. This assembly of mailboxes has a device of a central locking system for individual mailboxes, and the device operates in this way. In the interior of the mailboxes, there is a matrix of orthogonal bars comprising: (i) a universal biasing bar at the top running along the width of the assembly; (ii) a pair of vertical supporting bars, one on each side, connected to both ends of the biasing bar at the top; and (iii) a plurality of horizontal bars, called the anti-junk mail bars, which are positioned behind the postmans trap doors extending between the two vertical support bars and connected to them. Thus, all the bars within this matrix are connected. This matrix of bars is movable vertically. When the matrix is lowered, the horizontal anti-junk mail bars block the postmans trap doors, thus preventing them from being opened, and when the matrix is raised the anti-junk mail bars in turn are raised, thus allowing the postmans trap doors to be opened and mails to be delivered into the mailboxes. This movement of the matrix is operated by a master lock located at the upper front panel of the mailbox assembly but just below the biasing bar so that when the lock is turned or unlocked, it raises the matrix of bars within the mailbox assembly, and when it is locked, it lowers the matrix. Such device serves to prevent junk mails from being delivered into the individual mailboxes.

3. The respondents, Flexon Pte Ltd (Flexon), were incorporated in 1975, and have since been involved in the manufacture of fabricated metal products. They have designed a mail box assembly, which also has a device of central locking system for individual mailboxes, and they call it Master Door Letter Box with Aperture Central Locking. We shall refer to this invention of Flexon as the Flexon device or invention.

4. The Flexon invention has the following main features. It is an assembly of mailboxes and each mailbox has a delivery flap through which the mails are delivered, and a collection door immediately below the flap. The lower edge of the flap abuts against the upper edge of the collection door, which acts as a stopper for the flap. The mailbox central locking system operates in this way. In the interior of the mailboxes are the stopper screws at one side which are located immediately behind the flaps but do not extend across the flaps. They are screwed onto a vertical bar at the side The vertical side bar is connected to a lever at the top and this lever raises and lowers the side bar vertically. When the side bar is lowered, the stopper screws are in turn lowered and block the flaps, thus preventing them from being opened. When the side bar is raised, the stopper screws in turn are raised, thus allowing the flaps to be opened. The movement of the side bar vertically is operated by a master lock located at the upper front panel but slotted into the lever inside. When the lock is in a locked position, it lowers the vertical bar which in turn lowers the stopper screws to a position just behind the flap thus preventing the flaps from being opened. When the master lock is turned and unlocked, the lever raises the side bar, which in turn raises the stopper screws, thus allowing the flaps to be opened and mails to be delivered. This device is also designed to prevent junk mails from being delivered into the mailboxes.

5. Admittedly, there is a demand for mailbox assemblies with a central locking system for individual mailboxes. Such mailboxes have postmans doors which are closed and can be opened manually by using a central locking key when the mail is delivered. After delivery, the mailboxes are centrally locked by a device which keep the postmans doors closed, thus preventing junk mails from being inserted into the postmans slots in the mailboxes. Such mailboxes are now commonly seen in condominiums and Housing Development Board (HDB) housing estates. The market for such a product appears to be huge.

6. In September 1999 or thereabouts, Mr Tan discovered that Flexon had supplied and installed their mailboxes with lockable delivery flaps in a couple of HDB housing estates. Following such discovery, on 28 September 1999, Bean Innovations, through their solicitors, sent a letter to Flexon, claiming that they were the exclusive licensees of the Singapore patent and that Flexon had infringed their patent, and demanding, inter alia, that Flexon immediately cease to manufacture and supply such mailboxes which infringed their patent, and threatening to take legal action against Flexon, should their demands be not complied with.

7. In response, Flexon through their solicitors on 15 October 1999 wrote to the solicitors for Bean Innovations, denying any infringement and demanding that the latter retract and withdraw their allegations. There was a further exchange of correspondence between the two firms of solicitors. Following legal advice, Flexon instituted legal proceedings against Bean Innovations and Mr Tan (jointly referred to as the appellants) under s 77 of the Patents Act, seeking a declaration to the effect that the appellants threats of proceedings for infringement were unjustifiable, an injunction against further threats, and damages. In their statement of claim Flexon admitted to having made prototypes of, manufactured, supplied and sold mailboxes with lockable delivery flaps to a certain construction company and certain HDB housing estates, but they denied that their mailboxes infringed the patent. In the alternative, they pleaded that they were not aware of the existence of the patent and had no reasonable grounds for supposing its existence, and invoked the defence under s 69(1) Patents Act. The appellants in their defence disputed the validity of Flexons claim and pleaded that Flexon were not entitled to bring proceedings against the appellants on the ground that the alleged threats, if any, fell within the scope of s 77(4) of the Patents Act. The appellants counter-claimed against Flexon damages for infringement of the patent and an injunction.

8. The case was tried before Rubin J, and at the conclusion he held that the threats made by the appellants were actionable under s 77(1) and (2) of the Patents Act, and that Flexon were the aggrieved party and were entitled to bring the action. He further held that there was no infringement by Flexon of the patent, and in consequence he allowed the Flexons claim and dismissed the appellants counterclaim. Against his decision, the appellants now appeal.

The appeal

9. We turn to the first issue relating to the threats made by the appellants through their solicitors. The relevant provision, which gives Flexon the right to bring this action, is s 77 of the Patents Act which, so far as material, provides as follows:

(1) Where a person (whether or not the proprietor of, or entitled to any right in a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4), bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3).

(2) In any such proceedings, the respondent shall, if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them, be entitled to the relief claimed unless:

(a) the appellant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent; and

(b) the patent alleged to be infringed is not shown by the respondent to be invalid in a relevant respect.

(3) The said relief is:

(a) a declaration to the effect that the threats are unjustifiable;

(b) an injunction against the continuance of the threats; and

(c) damages in respect of any loss which the respondent has sustained by the threats.

(4) Proceedings may not be brought under this section for a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.

10. It does not appear to us that there is any dispute that the appellants, or at least Bean Innovations, by their solicitors letters to Flexon threatened Flexon with legal proceedings, and that these letters were a threat falling within s 77(1) of the Patents Act. During the course of proceedings, counsel for the appellants conceded that the threats of infringement proceedings were made out. It is therefore unnecessary to dwell...