Vicplas Holdings Pte Ltd v Allfit International Market Pte Ltd and others

• Jurisdiction: Singapore
• Judge: Lai Siu Chiu J
• Judgment Date: 24 December 2010
• Neutral Citation: [2010] SGHC 370
• Plaintiff Counsel: Elaine Tan (Amica Law LLC)
• Docket Number: Suit No 204 of 2010 (Registrar’s Appeal No 276 of 2010)
• Date: 24 December 2010
• Hearing Date: 03 August 2010
• Subject Matter: Civil Procedure,Tort,Copyright
• Year: 2010
• Citation: [2010] SGHC 370
• Defendant Counsel: Jason Lim and Goh Kok Yeow (De Souza Lim & Goh LLP),Colin Phan (Infinitus Law Corporation)
• Court: High Court (Singapore)
• Published date: 13 January 2011

Lai Siu Chiu J:

This was an action brought by Vicplas Holdings Pte Ltd (“the plaintiff”) against Allfit International Marketing Pte Ltd (“the first defendant”), Loh Chin Leong Patrick (“the second defendant”) and Splendour Corporation Pte Ltd (“the third defendant”) for infringement of copyright, passing off and conspiracy.

The plaintiff is a Singapore company that manufactures, sells and distributes products such as uPVC pipes, pipe fittings and electrical conduits. The plaintiff also manufactures and sells (since 1988) solvent cement under the brand name Vicplas. Solvent cement is an adhesive used for binding uPVC pipes and/or pipe fittings. The Vicplas brand of solvent cement is sold in Singapore, Malaysia, Bangladesh and in the Middle East.

The first defendant is a Singapore company incorporated on 20 April 2005 and is a manufacturer of plastic pipes and tubes as well as of non-ferrous metal alloys. The second defendant is the managing-director and also a shareholder of the first defendant, together with his wife Judy Cheong. The third defendant is in the same business as the plaintiff and is considered a competitor by the latter. In fact, the plaintiff and the third defendant are the two principal companies in Singapore which manufacture and sell solvent cement and export to Bangladesh. The third defendant’s brand of solvent cement is “Falltex”.

In or about 2003, the plaintiff decided to manufacture and sell solvent cement under another brand name “P&S” (“the product”) through its Malaysian associate Rimplas Industries Bhd. It was the plaintiff’s case that the product was spawned from the plaintiff’s corporate vision of spreading the brand’s usage from Penang to Singapore; hence the words “P” for Penang and “S” for Singapore. The product has so far been marketed in Malaysia and Bangladesh; it is not sold in Singapore.

The plaintiff exported the product to its two Bangladeshi customers viz Mr Mahmood (“Mahmood”) of Al-Baraka Trading (“Al-Baraka”) and Mr Khurseed (“Khurseed”) of Emon Trading (“Emon”). One of Emon’s customers was Grameen Sanitary (“Grameen”). In or about August 2009, Khurseed stopped ordering the product from the plaintiff. Thereafter, Mahmood became the main distributing agent.

In or about December 2009, Mahmood received a complaint from one of his customers that the product was available in Bangladesh at a price lower than what Mahmood charged (hereinafter referred to as “the cheaper product”). When he checked the cheaper product, Mahmood noticed that the carton boxes contained the words “P&S Solvent Cement Made In Singapore”. The cans holding the cheaper product were similar to those used for the product save that the shade of orange was lighter.

Through his inquiries, Mahmood discovered that it was Khurseed’s customer Grameen who was selling the cheaper product. Upon further inquiries, it was discovered that the cheaper product was sold by the first defendant.

The plaintiff conducted their own investigations in Singapore (through private investigators) and discovered that cans labelled with the words “P&S” and/or packaged in a get-up similar to the plaintiff’s get-up for the product were found at the third defendant’s premises at 2 Fan Yoong Road (“the third defendant’s premises”).

On 13 March 2010, the plaintiff lodged a complaint under s 133(1) of the Criminal Procedure Code (Cap 68, 1980 Rev Ed), followed by a search order obtained on 16 March 2010 which was executed at the third defendant’s premises. 1,652 cartons of cans which looked identical or substantially identical to the cans used to contain the product were seized from the third defendant’s premises and warehouse. The 1,652 cartons contained 17,497 empty cans and 15,540 cans filled with solvent cement. The 17,496 empty cans that were seized were taken away and stored in a warehouse but the police officers carrying out the raid declined to seize the 15,540 filled cans for the reason that solvent cement is a flammable item and requires a licence for its storage.

On the same day, the plaintiff’s (then) solicitors wrote separate “cease and desist” letters to the first and third defendants. Neither responded by furnishing the undertakings required by the plaintiff’s solicitors. Instead, the first and third defendants instructed solicitors who wrote to the plaintiff’s solicitors on 17 March 2010 to ask for time to consider the matter. Subsequently, on 22 March 2010, the two defendants’ solicitors replied inter alia denying the plaintiff’s claim and asserting that the brand “P&S” did not belong to the plaintiff and it was first conceived by a company called Salaheen International for the Bangladeshi market.

The applications

The plaintiff filed this Suit on 26 March 2001 and on the same day obtained an ex parte injunction against all three defendants from passing-off or attempting to pass-off solvent cement that was not manufactured by the plaintiff as the plaintiff’s product. The application for an injunction was supported by an affidavit filed by the plaintiff’s operations manager Cheng Hsheng (“Hsheng”).

On 11 June 2010, the first and second defendants applied by Summons No. 2614 (“the O 14 application”) for the court to make a determination under O 14 r 12 of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) (“the Rules”) of the following question of law:-

Whether the plaintiff’s claims of copyright infringement of the Artistic Work (as defined in the statement of claim) comprised in the alleged get-up of the “P&S” brand of solvent cement are sustainable at law against the first and second defendants and if it is determined that the plaintiff’s aforesaid claim is unsustainable at law, the plaintiff’s said claim be dismissed and para 48 of the statement of claim and all references to the plaintiff’s said claim of copyright infringement of the Artistic Work against the first and second defendants in the statement of claim be struck out.

Separately, the third defendant applied on 14 June 2010 by way of Summons No. 2660 (“the second application”) for the following prayers under O 18 r 19 of the Rules: (i) That paras 28 to 33, 35 to 42, 44 to 46 and 55 of the statement of claim be struck out in as much as they related to “passing off”; (ii) That para 56 of the statement of claim be struck out in as much as it related to “damaging the plaintiff’s goodwill”; (iii) para 57 of the statement of claim be struck out on the basis that: (a) the said paragraphs disclose no reasonable cause of action; (b) the said paragraphs may prejudice, embarrass or delay the fair trial of the action; and/or (c) that the said paragraphs are otherwise an abuse of the process of the Court.

Both applications were heard and dismissed by the Assistant Registrar against which decision only the third defendant filed an appeal by way of Registrar’s Appeal No 276 of 2010 (“the Appeal”). This court heard and allowed the Appeal. As the plaintiff is dissatisfied with my decision and has filed a notice of appeal (in Civil Appeal No 154 of 2010) against the same, I now set out the reasons for my reversal of the order made by the Assistant Registrar.

At the hearing below, the main contention by counsel for the defendants was that no goodwill subsisted in the product in Singapore as it was only sold in Bangladesh. Counsel for the plaintiff on the other hand argued that notwithstanding that the product was not sold locally, there was still goodwill in Singapore because the product was exported from here to Bangladesh and the sale transaction was made in Singapore.

The facts

Before I go into the facts of the case it would be appropriate to look at the get-up that contained the parties’ products. The product’s can appears as follows:

The cheaper product found at the third defendant’s premises appeared in cans that looked as follows: It was remarkably similar to the get-up of the can for the product as can be seen from [16] save that the colour of the orange stripes was lighter.

It was the plaintiff’s case (as deposed to in Hsheng’s affidavit) that the “artistic work” comprised in the get-up of the product was created by the plaintiff’s executive director Cheng Liang (“Cheng”), a Singapore citizen, in or around 2003 by adapting and modifying the artistic work comprised in the get-up of the plaintiff’s Vicplas brand of solvent cement ([55]infra) which he had previously created in or about 1988.

The plaintiff asserted that by virtue of s 30(5) of the Copyright Act (Cap 63, 2006 Rev Ed) (“The Copyright Act”), the plaintiff owned the copyright in the artistic work comprised in the get-up for the product which it believed was still valid and subsisting.

The plaintiff described the get-up as being a cylindrical metal can white in colour with a border that consisted of two orange stripes of approximately 6mm in width at the top and at the bottom of the curved surface. The cap of the can in white in colour and has ridges.

In his affidavit. Hsheng added that the can in [18] contained the following literary work; On the front curved surface of the can:

P&S (in orange)

PVC Cement

CONFORM TO BS4346; PART 3 (in black)

SPECIALLY PREPARED FOR UPVC Pipes AND Fittings (in orange)

To the right of the literary work set out above, on the curved surface of the can, were 7 directions for usage including the following:

DIRECTIONS FOR USE

1 Cut pipe ends square. Clean mating surfaces of the pipe and fittings with printing fluid. 2 Pipe should go into fitting at least 1/3 to ¾ of the way without forcing… and ended with:

MADE IN SINGAPORE (in black)

The curved surface of the can also contained a caution which opening words were:

KEEP OUT OF THE REACH OF CHILDREN! (in orange)

which ended with a diamond shape and the words:

DANGER –EXTREMELY FLAMABLE (in orange)

Hsheng claimed the get-up of the can for the product was very distinctive and different...