Sebel Furniture Ltd v Tiong Hin Engineering Pte Ltd

• Jurisdiction: Singapore
• Judgment Date: 22 October 1998
• Date: 22 October 1998
• Docket Number: Suit No 2062 of 1996
• Court: High Court (Singapore)

Sebel Furniture Ltd

Plaintiff

and

Tiong Hin Engineering Pte Ltd

Defendant

[1998] SGHC 350

Lim Teong Qwee JC

Suit No 2062 of 1996

High Court

Designs—Registered designs—Infringement of exclusive right in registered design—Proprietor of UK-registered design—Whether visual appearance of alleged infringing design substantially different from registered design—Whether evidence of infringement exists—Sections 1 (1) and 7 Registered Designs Act 1949 (c 88) (UK)—Designs—Registered designs—Infringement—Invalidating UK registration—Whether design new in UK or Singapore—Whether exclusive privileges and rights in the UK-registered design have been extended to Singapore—Section 4 United Kingdom Designs (Protection) Act (Cap 339, 1985 Rev Ed)—Copyright—Infringement—Non-experts’ defence—Section 69 Copyright Act (Cap 63, 1988 Rev Ed)

The plaintiff, Sebel Furniture Ltd (“Sebel?), sold a range of chairs under the trade mark “Program?. In May 1994 Sebel was registered in the UK as the proprietor of a design of a chair called “Wide Program? chair. Sebel’s unupholstered side chair (“Original Program? chair) was sold in Singapore in 1987. The defendant Tiong Hin Engineering Pte Ltd (“Tiong Hin?) sold chairs in Singapore and its range included an unupholstered side chair sold under the trade mark “Dover?. Sales of Sebel’s “Original Program? chair declined with competition from the “Dover? chairs which were sold at a substantially lower price. Sebel sought an injunction against Tiong Hin for (a) infringement of its exclusive right in the design of the “Wide Program? chair; and (b) infringement of its copyright in the drawings of the seat shell of the “Original Program? chair and of its mould. Tiong Hin denied Sebel’s claims. It argued that (a) its “Dover? chair was substantially different from the “Wide Program? chair; and (b) that the UK registration was invalid and counterclaimed for a declaration that the exclusive privileges and rights in the registered design had not been extended to Singapore.

Held, dismissing claim and counterclaim:

(1) The design appealed to the eye and it had to be judged solely by the customer’s eye. The front and side view designs of the defendant’s “Dover? chair were substantially different from the UK-registered design. The plaintiff’s exclusive right in the UK-registered design of the “Wide Program? chair had not been infringed by the sale of “Dover? chairs: at [16], [20], [21] and [23].

(2) The plaintiff’s UK registration might be cancelled on the ground that the design was not at the date of registration new. The design was not new if it had been published in the UK and in Singapore. On the facts, the UK-registered design had not been published in Singapore. Since the defendant failed to show any ground upon which the UK registration might be cancelled, it was not entitled to a declaration that the design was invalid or that exclusive privileges and rights had not been extended to Singapore: at [32] and [37].

(3) There was no evidence that the defendant who developed the design for the “Dover? chair had any access to the plaintiff’s drawings of the “Original Program? chair nor was there anyone it had any dealings with who knew that the drawings or copies of them existed. The evidence did not point to copying and no inference of copying could be drawn. The defendant had developed the design of the “Dover? chair without having had access to the plaintiff’s drawings of the “Original Program? chair and without copying it. Neither the “Dover? chair nor its seat shell was a three-dimensional form of the artistic work in the drawings. The defendant had not infringed the plaintiff’s copyright in the seat shell of the “Original Program? chair and its drawings: at [43] and [70].

[Observation: For the purposes of design right infringement, in considering whether or not there is a substantial difference between the registered design and the alleged infringement, the “imperfect recollection? concept should be borne in mind. At the same time, the court should bear in mind that that a customer’s recollection may be related to or influenced by functional features which are excluded by design copyright. Comparing the chairs produced by both parties in this case, there were three “striking features? of the UK-registered design which distinguished it from the design of the “Dover? chair: at [25] and [28].

The defence under s 69 of the Copyright Act (Cap 63, 1988 Rev Ed) should have been pleaded. The question was whether to persons who were such non-experts the seat shell of the “Dover? chair would not appear to be a reproduction of Sebel’s drawings. If the occasion had arisen, it would have been adjudged that the seat shell of the “Dover? chair would not appear to persons who were not experts in relation to seat shells of that kind to be a reproduction of Sebel’s drawings of the seat shell of the “Original Program? chair: at [74].]

Ang Lay See v Solite Impex Pte Ltd [1998] 1 SLR (R) 421; [1998] 2 SLR 365 (folld)

Benchairs Ltd v Chair Centre Ltd [1974] RPC 429 (refd)

British Leyland Motor Corp v Armstrong Patents Co [1986] AC 577; [1986] RPC 279 (folld)

Dorling v Honnor [1964] RPC 160 (refd)

Dunlop Rubber Co v Golf Ball Developments (1931) 48 RPC 268 (folld)

Ibcos Computers v Barclays Mercantile Highland Finance [1994] FSR 275 (refd)

Interlego AG v Tyco Industries Inc [1988] RPC 343 (folld)

LB (Plastics) v Swish Products [1979] RPC 551 (refd)

Sommer Allibert (UK) v Flair Plastics [1987] RPC 599 (folld)

Valor Heating Co v Main Gas Appliances [1973] RPC 871 (folld)

Amp Incorporated v Utilux Pty Ltd [1972] RPC 103

Copyright Act (Cap 63, 1988 Rev Ed) s 69 (consd);ss 7, 15 (3), 26 (1), 27, 30 (6), 31 (1), 69

United Kingdom Designs (Protection) Act (Cap 339, 1985 Rev Ed) s 4 (consd);s 2

Copyright Act 1956 (c 74) (UK) s 9 (8)

Registered Designs Act 1949 (c 88) (UK) ss 1, 7 (consd);ss 11, 25

M Ravindran and Joseph Liow (Ravindran Associates) for the plaintiff

Patrick Yap and Eddie Koh (Yik Koh Teo & Partners) for the defendant.

Lim Teong Qwee JC

1 The plaintiff is an Australian company. It makes chairs and other furniture including a range of chairs under the trade mark “Program?. These chairs are sold in Australia, Singapore and elsewhere. The “Program? range of chairs include an unupholstered “side chair? (ie a chair without arms) without “linking? (ie without the capability of being linked one to another through a feature at the side of the chair). In October 1990, the design of the “Program? chair was registered in Australia with effect from March 1984. In May 1994, Sebel was also registered in the United Kingdom as the proprietor of a design of a chair which it calls the “Wide Program? chair. It has not made any “Wide Program? chair but a prototype chair more or less in the registered design was produced in court. In this judgment, I shall refer to Sebel’s design registered in the United Kingdom as the UK-registered design, Sebel’s unupholstered side chair as the “Original Program? chair and a chair in the UK-registered design as the “Wide Program? chair.

2 The defendant is a Singapore company. It also makes chairs and other furniture. Its chairs are sold in Singapore under the trade mark “Daglo?. The “Daglo? chairs also include an unupholstered side chair without linking. Tiong Hin sells these chairs under the trade mark “Dover?.

3 The “Original Program? chairs were first sold in Australia in about mid-1986 and in Singapore in 1987. The “Dover? chairs were first sold in 1995. Both chairs incorporate a plastic seat shell made from an injection mould but apart from this both have a common feature. The backrest is flexible and it bends at some point above the base of the seat shell. In the four financial years to 30 June 1996 8,096, 9,004, 19,001 and 63,888 “Original Program? chairs were sold in Singapore. In the next year, 40,638 were sold and in the eight months to 28 February 1998 20,622 were sold. Sebel says that the decline in sales is the effect of the competition from the “Dover? chairs which are sold at a substantially lower price.

4 In this action commenced by writ issued in October 1996 Sebel claims an injunction and other reliefs for infringement of its exclusive right in the design of the “Wide Program? chair and infringement of its copyright in the drawings of the seat shell of the “Original Program? chair and of the mould for it. A claim for passing off was withdrawn at the commencement of the trial.

5 Tiong Hin says that the “Dover? chair is substantially different from the “Wide Program? chair and denies any infringement of Sebel’s right in the UK-registered design. It also says that the registration is and has at all material times been invalid and counterclaims a declaration to that effect and an order that the exclusive privileges and rights in the registered design have not been acquired in or extended to Singapore. Tiong Hin denies any infringement of Sebel’s copyright in the drawings of the “Original Program? chair or of its mould.

6 At the conclusion of the trial I dismissed both the claim and the counterclaim. In delivering judgment I intimated that I would give my grounds in writing. These are my written grounds of judgment.

UK-registered Design

Claim

7 Section 2 of the United Kingdom Designs (Protection) Act (Cap 339) (“Singapore Act?) provides:

Subject to the provisions of this Act, 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 … 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.

Subsections (1) and (2) of s 7 of the Registered Designs Act 1949 (“UK Act?) provide:

1. (1) The registration of a design under this Act gives the registered proprietor the exclusive right —

   1. (a) to...