Expanded Metal Manufacturing Pte Ltd and Another v Expanded Metal Co Ltd

• Jurisdiction: Singapore
• Judge: Chao Hick Tin J
• Judgment Date: 11 January 1995
• Neutral Citation: [1995] SGCA 6
• Docket Number: Civil Appeal No 63 of 1994
• Date: 11 January 1995
• Published date: 19 September 2003
• Year: 1995
• Plaintiff Counsel: Tan Tee Jim and Jason Chan (Allen & Gledhill)
• Citation: [1995] SGCA 6
• Defendant Counsel: Alvin Yeo, Patrick Ang and Edwin Lee (Wong Meng Meng & Pnrs)
• Court: Court of Appeal (Singapore)
• Subject Matter: Injunctions,Civil Procedure,Whether prior notice to affected party necessary,Whether court to draw adverse inference if privilege invoked,s 130(1) Copyright Act (Cap 63, 1988Ed),Balance of convenience,Judgments and orders,Adequacy of damages,Claim for copyright infringement,No evidence to infer propensity to destroy or dissipate evidence,No grave danger or real risk of destruction or dissipation of evidence,s 130(1) Copyright Act (Cap 63, 1988 Ed),Application to discharge interim injunction,Whether matters affecting strength of applicant's claim to copyright ownership material,Evidence,Injury to goodwill,Whether discovery affected defence or only assessment of damages,Need to ensure strict compliance with terms of order,Whether bona fide defence precluded reliance on privilege,Principles,Consequences of failure to ensure compliance,Discovery of documents,Whether claim to privilege substantiated,Anton piller orders,Privilege against self-incrimination,Copyright,Application to discharge,Disclosure of material facts,Non-disclosure of material facts,Ex parte application,Ex parte application for injunctions,Infringement

Cur Adv Vult

The facts

The respondents are a United Kingdom company carrying on business as manufacturers and suppliers of building products for construction purposes. The products they manufacture and supply include a form of expanded metal, which is manufactured by slitting and stretching sheet materials into a mesh formation. They use the trade name `Expamet`, and are the registered proprietor of the trade mark `Hy-Rib` in respect of expanded metal in Singapore. Their products were initially sold in Singapore through a Singapore company called Tech Industrial Pte Ltd, now known as Tech Industrial Development Pte Ltd (Tech). The second appellant and his wife, Lee Soi Niah, were at all material times the only shareholders and directors of Tech. In 1984, the respondents and Tech set up the first appellants as a joint venture company to manufacture and distribute the respondents` products in Singapore. The first appellants were then known as `Expamet Products (SEA) Ltd`, and the respondents and Tech each held 50% of the shares in the first appellants. However, after the incorporation of the first appellants, it was decided to put in abeyance the plan to manufacture industrial products. The distribution and sales of the respondents` building products continued and the distributorship reverted to Tech, after it was held for a period by the first appellants.

Subsequently, the second appellant and the respondents were unable to agree on the future of the first appellants. The second appellant then negotiated with the respondents and bought over the latter`s shares in the first appellants on 2 August 1990. Clause 5 of the sale and purchase agreement between the respondents and the second appellant provided as follows:

The [second appellant] warrants that the [first appellants] will not without the previous written consent of the [respondents] make use of the [respondents`] registered trademarks, namely:

(a) EXPAMET

(b) EXMET

(c) HY-RIB

Following the sale of the respondents` shares, the first appellants` name was changed to `Expanded Metal Manufacturing Pte Ltd`.

After the sale and purchase of the shares in the first appellants, Tech continued to be the respondents` sole distributor, and the first appellants continued to market the respondents` building products. However, in October 1991, the respondents and Tech agreed to terminate the distributorship agreement with effect from 30 April 1992. Thereafter, the respondents appointed Seals Engineering Pte Ltd to be their agent and sole distributor in Singapore. The respondents` building products sold in Singapore include Expamet Hyrib 2611, Expamet Metal Lath BB 263, Expamet Thin Coat Angle Bead 558, and Expamet Riblath 269.

In May 1992, the first appellants began selling expanded metal products imported from Taiwan under the name `EMCO`. They advertised and sold the following products, namely, EMCO Formwork Hyrib 2611, EMCO Metal Lath EML 263, EMCO Angle Bead AB 558 and EMCO Rib Lath RL 269.

In July 1992, the respondents learnt that the first appellants had placed an advertisement in the issue of The Straits Times on 2 May 1992 stating that they were the manufacturers of, inter alia, `EMCO Formwork Hy-Rib for construction joints.` The respondents thereupon wrote to the first appellants objecting to the use of `Hy-Rib` by the first appellants. However, there was no response from the first appellants and nothing further transpired. In December 1992, the respondents instructed HS Intellectual Property Services (HS), a firm of private investigators, to conduct investigations on the first appellants. On 11 February 1993, HS made trap purchases of the following items from the first appellants:

(i) 5 sheets of EMCO Formwork Hyrib 2611;

(ii) 20 sheets of EMCO Metal Lath EML 263;

(iii) 3 boxes of EMCO Angle Bead AB 558; and

(iv) 20 sheets of EMCO Rib Lath RL 269.

HS also obtained from the first appellants a copy each of the first appellants` brochures on `EMCO Expanded Metals for Building and Industrial Applications` and `EMCO Formwork Hyrib 2611 for Concreting` on 1 February 1993 and 11 February 1993 respectively. In March 1993, the respondents discovered that the first appellants had advertised their `EMCO Formwork Hyrib 2611` in a copy of the Construction Industry Development Board Catalogue 92/93, Vol 1.

On 7 April 1993, the respondents commenced this action against the first appellants. On 10 April 1993, they joined the second appellant as a party. The respondents` claims against the first appellants may be summarized as follows:

(i) the first appellants have infringed the respondents` trade mark `Hy-Rib` and have passed off their `EMCO Formwork Hyrib 2611` product as the respondents` `Expamet Hyrib 2611` product by using the respondents` `Hy-Rib` trade mark or a colourable imitation thereof;

(ii) the first appellants have, by using the name `Rib Lath` and product reference numbers similar to those for the corresponding products sold by the respondents, passed off their products as the corresponding products sold by the respondents; and

(iii) the first appellants have infringed the respondents` copyright in the diagrams and texts found in certain brochures advertising the respondents` products by reproducing, without licence from the respondents, substantial parts thereof in the first appellants` brochures on `EMCO Expanded Metals for Building and Industrial Applications` and `EMCO Formwork Hyrib 2611 for Concreting`.

The respondents` claim against the second appellant is for damages for breach of cl 5 of the sale and purchase agreement dated 2 August 1990.

On 12 April 1993 the respondents obtained ex parte a very comprehensive interim order against the first appellants and the terms of the order are, inter alia, as follows:

(i) an injunction restraining the first appellants from:

(a) disposing of or dealing with articles bearing the trade mark `Hy-Rib` other than the respondents` products,

(b) disposing of any documents relating to dealings in the said articles,

(c) infringing the respondents` trade mark `Hy-Rib`, and

(d) passing off their articles as being `Hy-Rib` products by use of the trade mark `Hy-Rib`;

(ii) an injunction restraining the first appellants from:

(a) disposing of or dealing with their brochures, in particular, those on the `EMCO Expanded Metals for Building and Industrial Applications` and `EMCO Formwork Hyrib 2611 for Concreting`, containing complete or substantial copies of the diagrams and texts as described in the order,

(b) disposing of any documents relating to dealings in those brochures, and

(c) informing anyone (other than for the purpose of seeking legal advice) of these proceedings or otherwise warning anyone that proceedings may be brought against them by the respondents;

(iii) an Anton Piller order requiring the first appellants to permit the representatives of the respondents to enter the first appellants` premises to search for and remove into the custody of the respondents` solicitors all articles and documents described in the order;

(iv) an order requiring the first appellants to disclose the whereabouts of certain alleged infringing articles and documents, identities of the suppliers of certain articles and documents, and the dates and quantities of supplies; and

(v) an order requiring the first appellants, by an authorized person, to make, swear and serve upon the respondents` solicitors an affidavit setting forth certain information and documents.

The respondents also at or about the same time applied for and obtained from the magistrates` court a search warrant for suspected offences under s 73 of the Trade Marks Act (Cap 332).

On 13 April 1993, the order was executed by two solicitors representing the respondents, an independent solicitor, two private investigators from HS, and three representatives of the respondents, making a total of eight persons. They arrived at the first appellants` premises at about 11am. The second appellant was in Kuala Lumpur at the time, and the solicitors executing the order dealt with one Jane Tan, an employee of the first appellants. Jane Tan contacted the second appellant. The second appellant agreed to the execution and instructed the first appellants` then solicitors to attend at the premises to witness the execution of the order. The second appellant was later informed of the presence of the respondents` representatives and he objected to their presence. They withdrew from the search for documents and confined themselves to searching for Hy-Rib articles. At 2.30pm, the second appellant gave instructions that the search be discontinued and that no documents were to be taken out of the premises. Thereupon, the respondents` solicitors produced the search warrant and proceeded to seize all the documents objected to by the first appellants. Among the documents seized under the search warrant were invoices and quotations for 1993 but not those for 1992.

On 26 April 1993, the first appellants` solicitors delivered to the respondents` solicitors 600 copies of `EMCO Formwork Hy-Rib 2611 for Concreting` brochure and 200 copies of `EMCO Expanded Metal for Building and Industrial Applications` brochure.

On 28 June 1993, the appellants applied to discharge or vary the interim order. The application was dismissed by Goh Joon Seng J, and against his decision this appeal has been brought.

Appeal

Before us, several arguments were mounted on behalf of the appellants. It was contended (i) that the respondents had not made a full and frank disclosure of material facts in obtaining the ex parte interim order; (ii) that the respondents had failed to give to the appellants prior notice of the application; (iii) that in executing the Anton Piller order the respondents did not comply with the terms thereof; (iv) that the Anton Piller order was not warranted in this instance, as there was no real risk of the...