AuthorBurton ONG DPhil, BCL (Oxford), LLM (Harvard), LLB (National University of Singapore); Advocate and Solicitor (Singapore), Attorney and Counsellor-at-Law (New York State); Associate Professor, Faculty of Law, National University of Singapore.
Published date01 December 2012
Date01 December 2012
Citation(2012) 24 SAcLJ 1020

What are the Limits of Judicial Creativity?

Statutory interpretation lies at the core of the intellectual property regime, where courts are tasked with the critical function of making sense of, and giving effect to, the Parliamentary intent behind various pieces of specialised legislation. The words used in these statutory provisions frame the legal principles underlying the patent, trade mark and copyright systems, and how judges interpret these words can make a huge difference to the availability and scope of the exclusive rights created by each statute. While courts often purport to adopt a purposive approach towards statutory interpretation, keeping in line with their limited constitutional function, there is a very fine line between, on the one hand, legitimate acts of clarifying what the draftsman has legislatively provided for and, on the other hand, illegitimate acts of judicial lawmaking. In this article, three recent examples from the Singapore courts concerned with the three major intellectual property rights will be closely examined to illustrate this tension.


1 Statutory interpretation plays a fundamental role in the law of intellectual property (“IP”) because the legislative framework for each species of IP articulates the essential parameters for each legal construct.1 Each piece of legislation defines the subject matter that

qualifies for legal protection as well as the character and scope of the exclusive rights conferred upon those who are entitled to assert such rights. Judges hearing any IP dispute are thus, in essence, tasked with interpreting the language used in the relevant IP statute to determine what these written laws provide for and to decide how they should be applied to the case at hand. Given that the role of the courts in cases involving IP legislation is constitutionally limited to implementing the Parliamentary intention underlying the relevant statute, one might be tempted to regard this process of statutory interpretation as a relatively uncontroversial matter. However, the practical experience of the Singapore courts demonstrates otherwise.

2 When courts are engaged in statutory interpretation, the cardinal principle behind the entire exercise is that they should adopt a purposive approach that gives effect to the Parliamentary intention behind the legislation.2 The language found in any Act of Parliament has to be understood in light of the objectives that lawmakers had when the statute was enacted. In some circumstances, this may lead a court to depart from the literal meaning of the words used in a statutory provision, in favour of an interpretation that is regarded as more consistent with the policy considerations, or purpose, underlying the legislative framework. Such creativity may, however, be a cause for concern because there is a fine line between conventional modes of statutory interpretation, where the words of the statute are simply given a meaning that Parliament intended and situations that are tantamount to a rewriting of the statute in question.3 Where IP statutes are concerned, the gravity of this issue is magnified by the fact that personal property rights in intangibles are at stake, with a corresponding

premium placed on legal certainty that is eroded to some extent when the courts choose to venture beyond the words used in the legislation.

3 Using selected examples from the three major IP regimes – patents, trade marks and copyright – this article seeks to explore how, and why, the Singapore courts have adopted less-than-straightfoward interpretative approaches when trying to decipher the meaning of statutory language used in these pieces of legislation. To the extent that such instances of judicial creativity have effectively adopted interpretations of the relevant legislation that differ significantly from the plain and obvious meaning of the words used in the statute, the discussion below will seek to examine the legitimacy and desirability of these developments to Singapore's IP jurisprudence.

II. Purposive interpretation of statutory provisions in Singapore

4 Before examining the cases concerned with the three major IP statutes, it is useful to summarise the law on statutory interpretation in Singapore. Before 1993, various interpretative approaches devised by the common law were usually employed by the Singapore courts, including the plain meaning or literal approach (which focused on the “ordinary” meaning of actual words used in a statute) and the purposive approach (which focused on giving the words in the statute a meaning that was consonant with the perceived “purpose” of the statute).4 With the passing of the Interpretation (Amendment) Act 1993,5 the Interpretation Act was amended by Parliament to provide explicit instructions on how statutory language ought to be construed by the courts and when they may rely on extrinsic materials to aid in this process. Since then, section 9A(1) of the Interpretation Act6 has provided:

In the interpretation of a provision of a written law, an interpretation that would promote the purpose or object underlying the written law (whether that purpose or object is expressly stated in the written law or not) shall be preferred to an interpretation that would not promote that purpose or object.

5 In essence, when confronted with words found in a statutory provision that are capable of being interpreted in more than one way,

the courts are expected to select the meaning that would best fit the underlying purpose of the legislation. As other legal commentators have put it, while it empowered the judge to assign to the legal text an appropriate meaning, this does not extend so far as to permit him to create new text to correct an existing text.7 Subsequent decisions of the courts appear to have affirmed this approach. The Court of Appeal in Public Prosecutor v Manogaran s/o R Ramu held:8

The cardinal rule in statutory construction is to construe the statutory provision in question according to the intention expressed in the provision itself. If the words of the statute are themselves precise and unambiguous, then no more can be necessary than to expound those words in their ordinary and natural sense. [emphasis added]

6 The statement above suggests that adopting the purposive approach towards statutory interpretation requires finding expression of the statute's purpose within the language of the statutory provision itself, and if the words used in the statute are “precise and unambiguous” then their “ordinary and natural” meaning should be taken, presumptively at least, to correspond with what Parliament had intended when the statute was enacted. Subsequently, in Public Prosecutor v Low Kok Heng, while declaring that section 9A of the Interpretation Act9 mandated that “[a]ll written law (penal or otherwise) must be interpreted purposively”,10 V K Rajah JA observed that “it is crucial that statutory provisions are not construed, in the name of a purposive approach, in a manner that goes against all possible and reasonable interpretation of the express literal wording of the provision” [emphasis added].11

7 Within the specific realm of IP statutes, support for this understanding of the purposive approach towards statutory interpretation can be found in a landmark trade mark case of Nation Fittings (M) Sdn Bhd v Oystertec plc

(“Nation Fittings”) where, in relation to the Trade Marks Act, Andrew Phang J held:12

[A] purposive approach towards the statutory text does not ignore the literal meaning of the text by any means but, rather, complements it by ensuring that the purpose and intent of the statutory text itself is achieved and that any strained and, a fortiori, absurd result is avoided. I should reiterate that the court's interpretation should be consistent with, and should not either add to or take away from, or stretch unreasonably, the literal language of the statutory provision concerned. In other words, the literal statutory language constitutes the broad framework within which the purpose and intent of the provision concerned is achieved. It is imperative, to underscore the point just made, that this framework is not distorted as the ends do not justify the means. Where, for example, it is crystal clear that the statutory language utilised does not capture the true intention and meaning of the provision concerned, any reform cannot come from ‘legal gymnastics’ on the part of the court but, rather, must come from the Legislature itself. [emphases added]

III. Patents – The inventive step criterion and the “state of the art”

8 In First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd13 (“FCC”), an unsuccessful appeal was brought against a decision of the High Court in favour of a patent holder,14 which granted an injunction against the appellants enjoining them from engaging in acts of patent infringement. One of the issues raised before, and dismissed by, the Court of Appeal was concerned with the trial judge's determination of the patent's validity. The appellant had sought to invalidate the patent grant on the basis that the trial judge had erred in holding that the patent had “involved an inventive step”– one of the essential requirements of patent validity.15

9 In reaching its conclusion that the inventive step criteria for patentability was indeed satisfied in this case, the Court of Appeal had to interpret and apply section 15 of the Patents Act,16 which defines this legal concept thus:

An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 14(2) and without having regard to section 14(3).[17] [emphasis added]

10 Section 14(2) of the Patents Act18 defines the “state of the art” as a legal concept:

The state of the art in the case of an invention shall be taken to comprise all matter (whether a...

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