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

The Court of Appeal decides

Ravi, Sugu and Vicki appeared and successfully defended the registration of an important Chinese trademark in the Singapore Court of Appeal; the mark was first used in the fifties and spanned China’s transition from a centralised, government-controlled economy to the modern, market-driven economy of today. The mark is reproduced below and was registered in Singapore for cordyceps, a traditional Chinese herbal medicine.

In a 137-page judgment (which may be viewed here), the court of three judges made the following important rulings:

1. The contention that a registered mark does not actually function as a trade mark should not be considered in a revocation based on non-use as it is not relevant to the question of whether or not a mark has been used but pertains instead to the effect of the use of mark.

2. The mere fact that a mark is popular or even the only one in the market does not ipso facto render the mark generic and undeserving of protection.

3. In assessing whether a mark possesses the requisite capacity to distinguish so as to constitute a trade mark, one should look only at the inherent features of the mark, and not the use of it. In this connection, the Court of Appeal expressly adopted the Philips approach [1999] RPC 809 as opposed to the Bach approach [2000] RPC 513 which the lower court had followed.

4. The court adopted the modified Ajit Weekly [2006] RPL 25 combined test for bad faith i.e. not only must the actions of the registered proprietor fall short of the normally accepted standards of commercial behaviour, but the said proprietor knew of facts which would cause an ordinary, honest person to realise that such standards were being breached.

5. Fraud and/or misrepresentation in the registration of an assignment does not invalidate the original registration of the trade mark.

6. Once the grounds of invalidation or revocation are made out, the court does not have any residual discretion not to so invalidate or revoke.

7. A civil court should not exercise its discretion to grant a declaration of non-infringement where criminal proceedings for an offence under the Copyright Act have already been initiated.

The Court of Appeal also took the opportunity to comment on the fact that while the criminal prosecution of offences under the Trade Marks Act takes place in the Subordinate Courts, an attack on the registration by the accused person could only be initiated in separate proceedings in the High Court. This state of affairs under our laws is unsatisfactory as it resulted in a duplicity of proceedings. The court stated that in future such proceedings i.e. the criminal prosecution and the attack on the registration should be consolidated so that both matters could be heard expeditiously by the same judge.

Citation : Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another and Another Appeal [2009] SGCA 9