Singapore company prevails in patent battle and solders on

The High Court of Singapore recently ruled on a suit involving patent infringement and revocation.

The plaintiff, ASM Assembly Automation Ltd ("ASM") commenced an action against Aurigin Technology Pte Ltd ("Aurigin") and 2 other defendants for the infringement of its registered patent for an apparatus and method for automatically placing an array of solder balls onto a substrate. The defendants counterclaimed on 2 main grounds; first, that ASM's patent was invalid for lack of novelty and inventiveness and second, that ASM had made groundless threats of infringement.

On the issue of novelty, while ASM's expert witness made certain unfavourable concessions in the course of cross-examination, Aurigin's expert witness explained how the patent was not new as each of the tendered prior art documents individually disclosed all the elements of the invention. His testimony on novelty was unreservedly accepted by the court, which then held that ASM's patent was not novel.

On the issue of inventiveness, ASM asserted that the patent was inventive as it was an improvement over the prior art. However, this assertion did not bear out during cross-examination. On the contrary, the court observed that the patent was "a disadvantageous modification of the closest prior art".

It was not surprising, therefore, that the court held that the patent was neither novel nor inventive, and Aurigin succeeded in revoking the patent. Accordingly, there could be no patent infringement and the threats made by Aurigin were found to be groundless.

As patent cases rarely make it to trial in Singapore, those that do are valuable stockpiles of instruction and guidance for future cases. Even though the court's judgment did not modify or expand on the law, having applied established common law principles laid down in Trek Technology (S) Pte Ltd v FE Global Electronics Pte Ltd (No. 2) [2005] 3 SLR 389 for novelty and Windsurfing International Inc v Tabur Marine [1985] RPC 59 as approved by the Court of Appeal in First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR 335 for inventiveness, the following lessons may still be learnt from this case :

1. Exercise care in the selection of expert witnesses; patent attorneys, no matter how qualified, may not necessarily be persons skilled in the art.

2. Ensure that witnesses are qualified and well-prepared to endure cross-examination by opposing counsel. In this case, the court had commented that ASM's expert witness was not familiar enough with the prior art. Cross-examination also demonstrated that the expert witness was ill-prepared, resulting in damage to ASM's case.

The decision is currently under appeal.

Citation : ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and Others [2009] SGHC 206

A Tale of 2 (and more) Valentinos

In a trade mark opposition heard before the High Court (upon appeal), it was ruled that the Class 18 marksand were not similar.

In comparing the marks aurally, visually and conceptually, the Judge was of the view that there was no similarity in all 3 aspects. In particular, he noted that several parties had registered trade marks which "constituted wholly or in part", the word "Valentino". As such, the Opponent (Valentino Globe B.V.) could not be said to have a monopoly over the word "Valentino", and could not establish similarity or a likelihood of confusion just by virtue of the Applicant's (Pacific Rim Industries Inc.) incorporation of the word "Valentino" into its "Emilio Valentino" mark.

On the ground of bad faith, the Opponent pointed out that one Mr. Emilio Valentino had applied to register a mark identical to the Applicant's, in Italy. As the Applicant did not adduce any credible evidence to show how it had derived the mark, the Opponent called upon the Court to make an adverse inference that the Applicant must have copied the mark from Emilio Valentino.

In response, the Court said the most damaging inference was that either the Applicant or Emilio Valentino had copied the mark from the other; no evidence had been put forward to show which party had prior use. Also, given that "Valentino" is a fairly common name for Class 18 goods, the Court said it would be slow to find that any copying had taken place. This was unlike the Team Lotus case cited by the Opponent where the trade marks consisted of complex designs. Further, the word "Lotus" "is an uncommon and very distinctive name for cars and/or related services, and this militates in favour of a finding that some copying had taken place".

As neither similarity nor bad faith had been made out, the appeal was dismissed in favour of the Applicant.

Citation : Valentino Globe BV v. Pacific Rim Industries Inc. [2009] SGHC 150

When is my mark not my mark?

Singtel, the biggest telco in Singapore, have been marketing and packaging their telecommunications and TV services under the mark mio since 2007. However, a Taiwanese party, Mitac, had registered a stylised version of the mark at the Singapore Registry earlier. Mio mean "my" in Italian. Mitac sued Singtel for infringement; the case is Mitac International Corporation v Singapore Telecommunications Ltd [2009] SGHC 137.

The Singapore High Court found that there was no infringement and held the following:

1. Mitac stylised mio was not identical to the Singtel mark notwithstanding that phonetically the marks are identical. In this regard, the court placed great weight on the fact that the Mitac mark was "highly stylised and distinctive." In the circumstances, it might be wise for proprietors of trademarks to register the block version of the mark rather than the mark as used otherwise they will face the same issues as Mitac did in this case. The problem, however, is where the block letter version cannot obtain registration for some reason or other.

2. If the court finds that the marks are identical, then there is no need to show a likelihood of confusion. However, where the court as in this case holds that the marks are not identical, then Mitac was weighed with the burden to show that there was a likelihood of confusion. In this regard and on the authority of the Polo case [2006] 2 SLR 690, an inquiry into the marketplace is relevant.

3. The court felt that there was no likelihood of confusion agreeing with the several reasons put forward by Singtel. The court went on to say that: "The marketing expenditure of and number of events [Mitac] participated in paled in comparison to [Singtel's], leading to the conclusion that it was unlikely that an average customer would think of [Mitac] at all when confronted with [Singtel's] trade marks."

4. If it is true that market power can affect the statutory rights afforded under the Trade Marks Act, then we are backing into the tort of passing off. In this case, the pervasiveness of Singtel in Singapore trumped Mitac's prior registration and weak marketing. One wonders what rights would be given to a mark which has not been used at all.

Citation : Mitac International Corp v Singapore Telecommunications Ltd and Another Action[2009] SGHC 137

David sues Goliath

Singapore's national broadcaster MediaCorp has been taken to court by an Internet start-up company RecordTV, for issuing groundless threats of legal action. In its defence, MediaCorp has filed a counterclaim for copyright infringement. Groundless threats are actionable under the Copyright Act, Trade Marks Act, Patents Act and Registered Designs Act.

As its name suggests, RecordTV's 2007-launched website allowed registered users to request recording of MediaCorp's free-to-air television programmes. In its opening statement in court, RecordTV said its service was merely an alternative to more traditional permitted means of recording television programmes at home, such as using a video cassette recorder or digital video recorder. The only difference was that RecordTV recordings were stored outside the user's premises. RecordTV has also contended that the recordings were made by its users, and not itself.

In reply, MediaCorp pointed to evidence gathered by its private investigators, which showed that unlike users of video cassette recorders, users of RecordTV's services had no control over functions such as recording and playback. Further, one of the private investigators had requested a 5-minute recording but received a 26-minute recording instead - this, MediaCorp suggested, was indicative that it was RecordTV and not the user that made the recordings.

Presided over by the Honourable Justice Andrew Ang, the 4-day hearing is slated to end today.

Interestingly, RecordTV stated that it bought the software from RecordTV USA. If this is the same RecordTV USA that the Los Angeles Federal court ruled against in 2001, then things do not look too optimistic for the start-up.

Former employee of education centre sued for breach of confidentiality

The Singapore franchisee of a teaching method created by late Professor Makoto Shichida and the Shichida Educational Institute, The Shichida Method, has taken one of its ex-employees to court for allegedly poaching its trainers and students.

David Ng was formerly the general manager and acting chief operations officer of The Shichida Method. After being dismissed in June 2007 for allegedly misappropriating a sum of S$160,000 in fees, Ng set up his own education centre. It is alleged that he proceeded to poach trainers and students from his former employer, and also tried to persuade the Japanese franchisor to appoint his company as the Singapore franchisee.

The suit was commenced in the High Court and is premised upon breach of confidential information. The evidence against Ng includes camera footage of Ng removing documents from his former employer’s office shorter after his dismissal, and of his trainers offering the former employer’s curriculum to his students’ parents.

In Ng’s defence, Senior Counsel Hri Kumar has argued that the suit is anti-competitive; an ex-employee should be allowed to use the skills and knowledge that he had acquired in the course of employment. He has further argued that Ng had not signed an employment contract and was therefore not subject to any obligation of confidentiality.

The Shichida Method’s former trainers have also been sued for breaching the secrecy clause in their contracts. Mr. Kumar has argued for the unenforceability of the clause as it does not stipulate what information is considered a trade secret.

This suit, which was heard on 4 May 2009, reminds employers that employees should be made to sign confidentiality agreements or have appropriate clauses included in their employment agreements. Confidential documents such as training manuals and customer lists should also be marked “confidential”. Security measures (e.g. password protection) should also be put in place to ensure that access to such information is restricted.

[Update (11/06/2009) : A source informs me that the matter has since been settled out of court.]