Hunter Manufacturing Pte Ltd and Another v Soundtex Switchgear & Engineering Pte Ltd and Another Appeal No 1

• Jurisdiction: Singapore
• Judge: Chao Hick Tin JA
• Judgment Date: 23 December 1999
• Neutral Citation: [1999] SGCA 88
• Plaintiff Counsel: Tan Tee Jim SC and Corrine Tan (Allen & Gledhill),Jimmy Yim SC and Kelvin Tan (instructed) with Patrick Yap (KL Tan & Assocs)
• Date: 23 December 1999
• Year: 1999
• Subject Matter: Two-step approach to determining infringement,Infringement,ss 2(1), 2(1B) & 2(3) United Kingdom Registered Designs Act 1949 (as amended by the Copyright, Designs and Patents Act 1988),Ownership of design,Whether plaintiffs had locus standi to sue defendants,Registered designs,s 3 UK Designs (Protection) Act (Cap 339),Whether defences of acquiescence, waiver and estoppel made out,Whether defendants' design infringed registered design,s 7 UK Registered Designs Act 1949 (as amended by the Copyright, Designs and Patents Act 1988),s 2 United Kingdom Designs (Protection) Act (Cap 339),ss 1(1), 1(2), 1(4) & 6 Criteria for registration UK Registered Designs Act 1949 (as amended by the Copyright, Designs and Patents Act 1988),Author of design,Whether design valid,Designs,Registrable designs
• Docket Number: Civil Appeals Nos 80 and 82 of 1999
• Citation: [1999] SGCA 88
• Court: Court of Appeal (Singapore)
• Published date: 19 September 2003

(delivering the judgment of the court): These two appeals concern the validity of a registered design of Hunter Manufacturing Pte Ltd (`Hunter`) for an electrical meter box and the claim by Hunter that their registered design was infringed by a similar design of Soundtex Switchgear & Engineering Pte Ltd (`Soundtex`) also for an electrical meter box. Both the appeals were heard together and are now dealt with in this judgment.

Facts

It is convenient at this stage to set out the background facts, which are largely undisputed. Hunter are the registered proprietors of a design for an electrical meter box known as the `AMB box`, which is registered under the United Kingdom Registered Designs Act 1949 (as amended by the Copyright, Designs and Patents Act 1988) (`the UK Act`) as Registered Design No 2058167 (`the registered design`). The design was registered on 31 July 1996 and a notice of the registration was published in The Straits Times on 26 April 1997. Under the United Kingdom Design (Protection) Act (Cap 339) of Singapore the registered proprietor of any design registered in the United Kingdom under the Registered Designs Act 1949 or any Act amending or substituted for that Act, or any person deriving his right from such registered proprietor by assignment, transmission or other operation of law, shall enjoy in Singapore the like privileges and rights as though the certificate of registration in the United Kingdom had been issued with an extension to Singapore. ABB Industry Pte Ltd (`ABB`) are, and were at all material times, the exclusive distributors of the AMB box and had advertised, promoted and marketed it. They are also well-known in the industry as the manufacturers of various other electrical meter boxes. Soundtex are the manufacturers and suppliers of electrical switchboards and electrical meter boxes to contractors tendering for Housing and Development Board (`HDB`) electrical projects.

An electrical meter box of the type with which we are concerned is a casing mounted on the corridor walls of upgraded or new HDB flats. It is used to house the miniature circuit breaker (`MCB`), the main switch, called the isolator, and the kilowatt meter for each household. The MCB automatically trips the electricity supply when there is a short circuit; the isolator cuts off the electricity supply to a household (eg during an electrical installation); and the kilowatt meter records the quantity of electricity supplied to the household.

Proceedings below

Hunter and ABB complained that the design of one of the electrical meter boxes manufactured by Soundtex (`the Soundtex box`) infringed their rights in the registered design. Both of them jointly instituted proceedings in Suit 1489/97 against Soundtex claiming, inter alia (a) an injunction to restrain Soundtex from infringing the registered design; (b) an order for the delivery up or destruction of all infringing products and other articles and materials; and (c) an inquiry as to damages or an account of profits. In their joint statement of claim, Hunter and ABB (referred to jointly as `the plaintiffs`) also made a further claim of passing off, but this was abandoned shortly prior to the commencement of the trial.

In their defence and counterclaim (as subsequently amended), Soundtex admitted manufacturing the Soundtex box but denied that they had infringed the plaintiffs` rights in the registered design. In the alternative, they pleaded that the registered design was invalid for the reasons stated in the particulars of objection (served together with the defence and counterclaim) and the following grounds of invalidity were relied upon:

(a) the registered design did not comply with s 1 of the UK Act, in that it has

(i) features which do not appeal to and are not judged by the eye; and

(ii) features of shape and configuration which are dictated solely by the function the electrical meter box has to perform; and

(b) the registered design was not new at the date of registration for various reasons, of which the relevant ones, for our purpose, are the following:

(i) publication by the HDB in or around April 1994 and June 1996 of identical or similar electrical meter boxes;

(ii) publication by EM Services Pte Ltd (`EMS`), a subsidiary of the HDB, in or around November 1995 of identical or similar electrical meter boxes;

(iii) sale or exposure or offer for sale by Hunter to ABB in or around June 1996 of identical or similar electrical meter boxes.

On the first day of the trial, Soundtex applied for leave to amend their defence to include a plea that Hunter were not entitled to apply to be the registered proprietors of the registered design, and to include the defences of innocent infringement, acquiescence, waiver or estoppel. Soundtex also applied for leave to amend the particulars of objection to change the date at which ABB were alleged to have sold or offered to sell the electrical meter boxes. Leave was granted with the costs occasioned by the amendments being awarded to the plaintiffs.

The trial judge identified four issues for determination which were as follows:

(a) whether the plaintiffs had locus standi to sue Soundtex for infringement of their rights in the registered design;

(b) whether the plaintiffs` registered design was valid;

(c) if it was, whether Soundtex had infringed the plaintiffs` rights in the registered design; and

(d) if Soundtex had so infringed the plaintiffs` rights, whether any of the defences pleaded by Soundtex were available to them.

The plaintiffs` case was that Hunter were the proprietors of the registered design. One Ms Ang Ah May (`Ms Ang`) was an employee of Hunter, and it was her evidence that she was the principal designer of the AMB box. In her affidavit of evidence in chief, Ms Ang deposed that she had extensive experience as a designer of metal and plastic enclosures for a period of 20 years. Although she had no professional qualifications, she had hands-on experience. She joined Hunter as their manager in charge of design when they were incorporated on 25 April 1996, and as the design was finalised after the incorporation of Hunter, whilst she was in their employment, Hunter were the rightful proprietors of the registered design. Besides Ms Ang, the other persons involved were one Teo Boon Yeow (`Teo`), a vice-president of ABB, and one Chan Foo Wah (`Chan`), Ms Ang`s husband. Chan designed the technical aspects of the AMB box, whilst Teo was involved in liasing with the electrical departments of the HDB, Power Grid and Power Supply. Teo`s evidence was that the AMB box was an important product for ABB. He testified that he was only involved in the co-ordination of the design of the AMB box, ie he liased with the HDB and passed the feedback to Ms Ang, and that the discussions with Ms Ang took place from the beginning of the third quarter of 1995 to the end of 1995. His evidence was that only Ms Ang was the designer and not her husband who only assisted in producing the electrical meter box for the design.

According to Teo, ABB wanted a totally different electrical meter box from that then in use, namely, the SMB-III box. During his discussions with the HDB, he used cardboard mock-up models. There were no drawings. By the end of 1995, they had three different models of the electrical meter box: one was rectangular in shape, one was square and the third was a two-piece model which had a rectangular piece to house the MCB and the isolator, and a square piece to house the kilowatt meter. Teo received both positive and negative feedback on each of the three models. The SMB-III box was referred to in the course of these discussions. The representative from the HDB complained that it was too bulky and not user-friendly in installation, in that it was difficult to install where the HDB flat was a corner unit. Teo admitted that the AMB box was created to fit the new meters which were of a smaller size. Teo also held discussions with EMS, during which he gave them the design for the AMB box, and EMS then incorporated the design into their tender documents. Teo only found out about this in October 1996. He had no objection to the use of the drawings by either the HDB or EMS in their tender documents, although he agreed that the use of the drawings in the tender documents meant that any third party could use the designs as a basis for manufacture. He agreed that the HDB would not show any preference for any tenderer in the tendering process and would award the contract to any party which could comply with the contractual requirements.

Two witnesses gave evidence for Soundtex. The first was one Ang Choon Cheng, who is the general manager of Soundtex. He testified that in September 1996, EMS specified that two doors were required for the electrical meter box, one to allow access to the kilowatt meter and the other to the MCB and the isolator. Soundtex altered their design of the electrical meter box to meet these requirements accordingly, and the whole process took some seven months. Approval for the new design from the HDB was finally given in May 1997. Ang Choon Cheng denied that Soundtex copied the design of the AMB box. Instead, they followed the drawings in the EMS tender documents in arriving at the design for the Soundtex box, and Soundtex only came to know of the plaintiffs` registered design on 12 June 1997 when they received a letter of demand from the plaintiffs` solicitors. Neither ABB`s Product News brochure announcing the launch of the AMB box, nor the advertisement of the registered design placed in The Straits Times on 26 April 1997, was drawn to his attention.

The second witness was one Seiu Kam Chiong, a director of Tay Siew Kheng Plumbing & Electrical which purchased electrical meter boxes from a company, Sunlight Electrical Pte Ltd, as well as the SMB-III box from the plaintiffs. The trial judge found his evidence irrelevant on the issues before the court.

Decision below

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