Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd v Fragrance Foodstuff Pte Ltd

• Jurisdiction: Singapore
• Judge: Chao Hick Tin JA
• Judgment Date: 01 November 2002
• Neutral Citation: [2002] SGCA 47
• Docket Number: Civil Appeal No 43 of 2002
• Date: 01 November 2002
• Year: 2002
• Published date: 19 September 2003
• Plaintiff Counsel: Wong Siew Hong (Infinitus Law Corporation)
• Citation: [2002] SGCA 47
• Defendant Counsel: Tan Tee Jim SC and Elaine Tan (Allen & Gledhill)
• Court: Court of Appeal (Singapore)
• Subject Matter: Whether questions of law difficult and require mature consideration,Whether question of law difficult and requires mature consideration,Infringement,Civil Procedure,Copyright,Whether factual matters raised triable issues,Summary judgment,Whether s 37 Copyright Act (Cap 63, 1999 Rev Ed) defence of fair dealing applicable,Whether to set aside summary judgment and grant defendants unconditional leave to defend claim,Whether s 27(6) Trade Marks Act (Cap 332, 1999 Rev Ed) defence of honest practices applicable to copyright infringement

Summary judgment – Whether to set aside summary judgment and grant defendants unconditional leave to defend the claim – Whether factual matters raised triable issues – Whether questions of law were difficult and required mature consideration

Copyright infringement

– Whether section 27(6) Trademarks Act defence of honest practices can apply to copyright infringement – Whether factual matters raised triable issues – Whether question of law was difficult and required mature consideration

Copyright infringement

– Whether there was a valid section 37 Copyright Act defence of fair dealing – Whether factual matters raised triable issues – Whether question of law was difficult and required mature consideration

FACTS

The appellants appealed against a summary judgment given by the High Court which adjudged that the appellants had infringed the copyright of the respondents in a certain artistic work when they published a notice containing the work and granted an injunction to restrain the appellants.

The appellants raised the defences of honest practices under section 27(6) of the Trademarks Act (‘s 26(6) TMA’) and fair dealing under section 37 of the Copyright Act (‘s 37 CRA’).

HELD, ALLOWING THE APPEAL:

For the first defence, if any party wished to read more into or attribute a motive to the notice which contained the copyright work, then the alleged infringer must be permitted to explain and to call his witnesses and be subject to cross-examination. It is not inconceivable that s 27(6) TMA could apply to the situation. Moreover, it could not be the intention of Parliament to authorise the doing of an act which would infringe a related right, so s 27(6) TMA could well apply to copyright infringement actions. The issues surrounding the applicability of this section are of some complexity and require more mature consideration (See [16] – [19]).

As for the second defence, s 37 CRA specifically provides for the defence of fair dealing to apply to an "artistic" work. One of the events relied upon by the appellants to show that there was confusion occurred a month before the alleged infringement act, so the question of whether the event was a current one was not clear cut. The questions of whether there was confusion and whether the event reported was current raised issues of fact and law which should not be determined summarily (See [25] – [26], [29]).

CASE REFERRED TO

RA & A Bailey & Co Ltd v Boccaccio Pty Ltd & Ors

6 IPR 279 (refd)

British Leyland Motor Corporation Ltd & Ors v Armstrong Patents Co Ltd & Ors

(1986) 6 IPR 102 (refd)

Hubbard v Vosper

[1972] 2 QB 84 (refd)

Pro Sieben Media AG v Carlton UK Television Ltd

[1998] FSR 43 (refd)

BBC v British Sky Broadcasting Ltd

[1991] 21 IPR 503 (refd)

Thompson v Marshall

(1880) 41 LTR 720 (flld)

European Asian Bank AG v Punjab and Sind Bank (No. 2)

[1983] 1 WLR 642 (flld)

Home and Overseas Insurance Co Ltd v Mentor Insurance Co (UK) Ltd (In Liquidation)

[1990] 1 WLR 153 (flld)

LEGISLATION REFERRED TO

Tradmarks Act (Cap 332), section 27(6)

Copyright Act (Cap. 63), section 37

[Delivered by Chao Hick Tin JA]

Judgment

GROUNDS OF DECISION

1 This was an appeal against a summary judgment given by the High Court which adjudged that the appellants, Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd (BCH), had infringed the copyright of the respondents, Fragrance Foodstuff Pte Ltd (Fragrance), in a certain artistic work and granted an injunction to restrain BCH. After hearing the parties on the appeal, we set aside the summary judgment and gave BCH unconditional leave to defend the claim. We now give our reasons.

The facts

2 BCH and Fragrance are both in the business of manufacturing and selling, among others, a type of sweet barbecue meat which is known here as "Bakwa". The business of BCH started earlier in 1930 while Fragrance were only incorporated in April 1990. BCH have been selling their products under a trade mark which consisted of the Chinese character "Xiang" written in a calligraphic form (hereinafter referred to as mark "X"). This mark appears on the left at Annex A.

3 Fragrance sell their products under a trade mark which also consists of the Chinese character "Xiang" but represented in a graphical/stylized manner in an oval frame, with a flicking tongue coming out of a mouth and licking lips and with the English word "FRAGRANCE" set out below that frame (hereinafter referred to as mark "Y"). This mark appears on the right side of Annex A.

4 Mark "Y" was created in late 1994 by one Chionh Cher Tin (Chionh) who was specially commissioned by Fragrance to produce such a mark (the work). On 5 February 2002, shortly before the institution of the present action, Chionh formally assigned his copyright in the work to Fragrance.

5 In July 1995, Fragrance registered the work as a trade mark under class 30 covering biscuits, cakes, pastry and confectionery. At the same time, they also applied to register the work as a trade mark under class 29 for dried minced pork, pork floss, chicken floss, snack foods, etc. However, this application is still pending because of opposition by BCH.

6 The event which gave rise to the action was an advertisement of a half-page dimension appearing over two days, on 2 and 3 February 2002, in the local English and Chinese newspapers which set out the two marks and stated that BCH and Fragrance are not related companies (the notice). The advertisement is shown at Annex A.

7 When the advertisements first appeared in the newspapers, the Lunar New Year (LNY) of 2002 was just ten days away, falling on 12 February 2002. It was common ground that during the period before the LNY, demand by the public for Bakwa was extremely high, as it was an essential delicacy for the festivities.

8 Concurrently with the publication of the advertisements, BCH also distributed to the public pamphlets containing the same notice. Furthermore, on 3 February 2002 the Lianhe Zaobao ran a news report on the notice where it was stated that BCH might continue to publish the notice to dispel confusion.

9 BCH explained that the move to issue the notice was prompted by the fact that there was evidence of confusion on the part of the public. BCH referred to two incidents to substantiate that. First, in 1998, Bloomdale (S) Pte Ltd, a gift and hamper company, mistakenly advertised in its LNY catalogue the pork and fish floss of Fragrance as those of BCH. On demand by BCH, Bloomdale had to apologise and make a correction. Secondly, in the February 2002 issue of Singapore Women’s Weekly where there was a write up on Fragrance, BCH’s telephone number was given as the telephone number of Fragrance. The publisher of the magazine apologised for the mistake stating that the intern who had done the write-up had checked the telephone number of Fragrance using the Chinese character "Xiang" not realizing that BCH used a similar logo. The intern wrongly assumed that BCH’s telephone number was that of Fragrance.

10 Following the publication of the notice, correspondence ensued between the parties’ solicitors, with Fragrance seeking an apology and asking for damages for the infringement of the copyright in the work. BCH’s solicitors replied explaining why the notice was published and rejected the claim of Fragrance. This led to the institution of the present action by Fragrance, both for copyright and trade mark infringements.

11 At the same time the suit was filed, Fragrance applied for an ex parte interim injunction against BCH in respect of both the alleged copyright and trade mark infringements. The application was adjourned to be heard inter-partes. In the meantime, after BCH entered appearance to the action, Fragrance applied for summary judgment against BCH in respect of the alleged copyright infringement. Both applications came before the judge-in-chambers who granted summary judgment in favour of Fragrance by the issue of an injunction restraining BCH from infringing Fragrance’s copyright in the work, with a caveat that until the trial of the action, Fragrance would not take any further steps or execution proceedings. In the light of BCH’s undertaking that they would not further publish the notice until trial, no order for an interim injunction was made by the court in respect of the alleged trade mark infringement.

Issues

12 It was not disputed that BCH did, without the consent of Fragrance, reproduce and publish Fragrance’s trade mark in the notice which BCH issued. By so publishing the trade mark of Fragrance, there was prima facie infringement of Fragrance’s copyright in the work. Before us, BCH raised two main defences, which were also raised in the court below.

(i) Section 27(6) of the Trademarks Act;

(ii) Section 37 of the Copyright Act

Section 27(6)

13 We shall deal with the two defences in turn. Section 27(6) of the Trade Marks Act provides:

Nothing in subsections (1) to (5) shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee, but any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause...