Judgment

 [Please note that this case has not been edited in accordance with the current Singapore Law Reports house style.]

                                                                                                                                                             Judgment reserved.

L P Thean JA (delivering the judgment of the court):

1       These two appeals concern the validity of a registered design of Hunter Manufacturing Pte Ltd (“Hunter”) for an electrical meter box and the claim by Hunter that their registered design was infringed by a similar design of Soundtex Switchgear & Engineering Pte Ltd (“Soundtex”) also for an electrical meter box. Both the appeals were heard together and are now dealt with in this judgment.

Facts

2       It is convenient at this stage to set out the background facts, which are largely undisputed. Hunter are the registered proprietors of a design for an electrical meter box known as the “AMB box”, which is registered under the United Kingdom Registered Designs Act 1949 (as amended by the Copyright, Designs and Patents Act 1988) (“the UK Act”) as Registered Design No 2058167 (“the registered design”). The design was registered on 31 July 1996 and a notice of the registration was published in The Straits Times on 26 April 1997. Under the United Kingdom Design (Protection) Act (Cap 339) of Singapore 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, or any person deriving his right from such registered proprietor by assignment, transmission or other operation of law, 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. ABB Industry Pte Ltd (“ABB”) are, and were at all material times, the exclusive distributors of the AMB box and had advertised, promoted and marketed it. They are also well-known in the industry as the manufacturers of various other electrical meter boxes. Soundtex are the manufacturers and suppliers of electrical switchboards and electrical meter boxes to contractors tendering for Housing and Development Board (“HDB”) electrical projects.

3       An electrical meter box of the type with which we are concerned is a casing mounted on the corridor walls of upgraded or new HDB flats. It is used to house the miniature circuit breaker (“MCB”), the main switch, called the isolator, and the kilowatt meter for each household. The MCB automatically trips the electricity supply when there is a short circuit; the isolator cuts off the electricity supply to a household (eg during an electrical installation); and the kilowatt meter records the quantity of electricity supplied to the household.

Proceedings below

4       Hunter and ABB complained that the design of one of the electrical meter boxes manufactured by Soundtex (“the Soundtex box”) infringed their rights in the registered design. Both of them jointly instituted proceedings in Suit 1489/97 against Soundtex claiming, inter alia (a) an injunction to restrain Soundtex from infringing the registered design; (b) an order for the delivery up or destruction of all infringing products and other articles and materials; and (c) an inquiry as to damages or an account of profits. In their joint statement of claim, Hunter and ABB (referred to jointly as “the plaintiffs”) also made a further claim of passing off, but this was abandoned shortly prior to the commencement of the trial.

5       In their defence and counterclaim (as subsequently amended), Soundtex admitted manufacturing the Soundtex box but denied that they had infringed the plaintiffs’ rights in the registered design. In the alternative, they pleaded that the registered design was invalid for the reasons stated in the particulars of objection (served together with the defence and counterclaim) and the following grounds of invalidity were relied upon:

(a)    the registered design did not comply with s 1 of the UK Act, in that it has

(i)         features which do not appeal to and are not judged by the eye; and

(ii)         features of shape and configuration which are dictated solely by the function the electrical meter box has to perform; and

(b)    the registered design was not new at the date of registration for various reasons, of which the relevant ones, for our purpose, are the following:

(i)         publication by the HDB in or around April 1994 and June 1996 of identical or similar electrical meter boxes;

(ii)         publication by EM Services Pte Ltd (‘EMS’), a subsidiary of the HDB, in or around November 1995 of identical or similar electrical meter boxes;

(iii)         sale or exposure or offer for sale by Hunter to ABB in or around June 1996 of identical or similar electrical meter boxes.

6       On the first day of the trial, Soundtex applied for leave to amend their defence to include a plea that Hunter were not entitled to apply to be the registered proprietors of the registered design, and to include the defences of innocent infringement, acquiescence, waiver or estoppel. Soundtex also applied for leave to amend the particulars of objection to change the date at which ABB were alleged to have sold or offered to sell the electrical meter boxes. Leave was granted with the costs occasioned by the amendments being awarded to the plaintiffs.

7       The trial judge identified four issues for determination which were as follows:

(a)         whether the plaintiffs had locus standi to sue Soundtex for infringement of their rights in the registered design;

(b)         whether the plaintiffs’ registered design was valid;

(c)          if it was, whether Soundtex had infringed the plaintiffs’ rights in the registered design; and

(d)          if Soundtex had so infringed the plaintiffs’ rights, whether any of the defences pleaded by Soundtex were available to them.

8       The plaintiffs’ case was that Hunter were the proprietors of the registered design. One Ms Ang Ah May (“Ms Ang”) was an employee of Hunter, and it was her evidence that she was the principal designer of the AMB box. In her affidavit of evidence-in-chief, Ms Ang deposed that she had extensive experience as a designer of metal and plastic enclosures for a period of 20 years. Although she had no professional qualifications, she had hands-on experience. She joined Hunter as their manager in charge of design when they were incorporated on 25 April 1996, and as the design was finalised after the incorporation of Hunter, whilst she was in their employment, Hunter were the rightful proprietors of the registered design. Besides Ms Ang, the other persons involved were one Teo Boon Yeow (“Teo”), a vice-president of ABB, and one Chan Foo Wah (“Chan”), Ms Ang’s husband. Chan designed the technical aspects of the AMB box, whilst Teo was involved in liasing with the electrical departments of the HDB, Power Grid and Power Supply. Teo’s evidence was that the AMB box was an important product for ABB. He testified that he was only involved in the co-ordination of the design of the AMB box, ie he liased with the HDB and passed the feedback to Ms Ang, and that the discussions with Ms Ang took place from the beginning of the third quarter of 1995 to the end of 1995. His evidence was that only Ms Ang was the designer and not her husband who only assisted in producing the electrical meter box for the design.

9       According to Teo, ABB wanted a totally different electrical meter box from that then in use, namely, the SMB-III box. During his discussions with the HDB, he used cardboard mock-up models. There were no drawings. By the end of 1995, they had three different models of the electrical meter box: one was rectangular in shape, one was square and the third was a two-piece model which had a rectangular piece to house the MCB and the isolator, and a square piece to house the kilowatt meter. Teo received both positive and negative feedback on each of the three models. The SMB-III box was referred to in the course of these discussions. The representative from the HDB complained that it was too bulky and not user-friendly in installation, in that it was difficult to install where the HDB flat was a corner unit. Teo admitted that the AMB box was created to fit the new meters which were of a smaller size. Teo also held discussions with EMS, during which he gave them the design for the AMB box, and EMS then incorporated the design into their tender documents. Teo only found out about this in October 1996. He had no objection to the use of the drawings by either the HDB or EMS in their tender documents, although he agreed that the use of the drawings in the tender documents meant that any third party could use the designs as a basis for manufacture. He agreed that the HDB would not show any preference for any tenderer in the tendering process and would award the contract to any party which could comply with the contractual requirements.

10     Two witnesses gave evidence for Soundtex. The first was one Ang Choon Cheng, who is the general manager of Soundtex. He testified that in September 1996, EMS specified that two doors were required for the electrical meter box, one to allow access to the kilowatt meter and the other to the MCB and the isolator. Soundtex altered their design of the electrical meter box to meet these requirements accordingly, and the whole process took some seven months. Approval for the new design from the HDB was finally given in May 1997. Ang Choon Cheng denied that Soundtex copied the design of the AMB box. Instead, they followed the drawings in the EMS tender documents in arriving at the design for the Soundtex box, and Soundtex only came to know of the plaintiffs’ registered design on 12 June 1997 when they received a letter of demand from the plaintiffs’ solicitors. Neither ABB’s Product News brochure announcing the launch of the AMB box, nor the advertisement of the registered design placed in The Straits Times on 26 April 1997, was drawn to his attention.

11     The second witness was one Seiu Kam Chiong, a director of Tay Siew Kheng Plumbing & Electrical which purchased electrical meter boxes from a company, Sunlight Electrical Pte Ltd, as well as the SMB-III box from the plaintiffs. The trial judge found his evidence irrelevant on the issues before the court.

Decision below

12     The first issue the trial judge determined was the locus standi of the plaintiffs to sue for infringement of the registered design. On this issue, he held that s 7 of the UK Act vests certain rights in the registered proprietor of a registered design, and the registered proprietor in this case was Hunter. ABB’s position in any event was that Ms Ang, an employee of Hunter, was the author of the design, and in the circumstances ABB had no rights under the UK Act. Their claims in the action were therefore dismissed.

13     In respect of the locus standi of Hunter, Soundtex submitted that it was not Ms Ang who designed the AMB box but Teo who did so, acting in the course of his employment with ABB. Therefore it was ABB, who were the proprietors of the design and not Hunter who were not entitled to register the design in their name. The trial judge noted that there were some apparent inconsistencies in Ms Ang’s evidence, but having considered her evidence as a whole, he found that she was the principal designer, and being the author of the registered design and the employee of Hunter, the latter were the proprietors of the registered design. They accordingly had locus standi to institute these proceedings against Soundtex.

14     Turning to the next issue, the learned judge held that the registered design was valid as (a) it could not be said that eye appeal was not a factor in its conception; (b) it was not dictated solely by the function the electrical meter box has to perform; and (c) it was sufficiently novel, in that there was no prior publication and there were sufficient differences between the AMB box and the prior art, namely: the SMB-III box.

15     Next, the learned judge held that the Soundtex box did not infringe Hunter’s rights in the registered design, as the design of the Soundtex box was substantially as different from the registered design as the latter was from the design of the SMB-III box. In reaching this finding he adopted the approach that the test for substantial difference in a claim for infringement is in many respects similar to the test for substantial novelty of the registered design as compared to the prior art.

16     Lastly, the learned judge held that even if there was infringement by Soundtex of Hunter’s registered design, that was done innocently without knowledge of the registration until 12 June 1997. He accepted the evidence of Ang Choon Cheng that he had no knowledge of either ABB’s Product News brochure or the advertisement of the registered design in The Straits Times, and that he came to know of the registered design only on 12 June 1997 upon receipt of the letter from the plaintiffs’ solicitors. Accordingly, by virtue of s 9(1) of the UK Act and s 3 of the Singapore Act, no damages were to be awarded in respect of any infringement by Soundtex up to 12 June 1997. However, the trial judge held that the defences of acquiescence, waiver and estoppel failed, as he could not see any merit in Soundtex’s case that Hunter had waived their rights in the registered design. Further, Soundtex were not aware of Hunter’s rights in the registered design and it was impossible to see how, without any knowledge of the existence of Hunter’s rights, Soundtex could have understood Hunter’s actions as a waiver. Nor could it be said that Hunter were estopped from raising the infringement or had acquiesced to it, since there was no communication by either word or action between them and Soundtex.

17     The learned judge dismissed Hunter’s claim against Soundtex, as the Soundtex box did not infringe the registered design. He also dismissed Soundtex’s counterclaim, in which they sought a declaration that the registered design was invalid and that the exclusive rights and privileges in the registered design had not been acquired or extended to Singapore. Finally, the trial judge ordered the costs of the action (in respect of both the claim and counterclaim) to be paid by the plaintiffs to Soundtex, as the issues in the counterclaim were the same as those in the claim.

The appeals

18     Hunter and ABB appeal in CA 80/99 against that part of the decision of the trial judge which determined that the design of the Soundtex box did not infringe the registered design and that Hunter and ABB should pay Soundtex the costs of the proceedings below. Soundtex, on their part, appeal in CA 82/99 against that part of the trial judge’s decision that determined that Hunter are the proprietors of the design, that the registered design is valid, and that the defences of waiver, acquiescence and estoppel were not available to Soundtex. The combined effect of these two appeals is that the entire decision of the trial judge is now under appeal. Essentially, the four issues before the trial judge fall for consideration by this court.

Locus standi

19     We turn first to the issue of locus standi, which centres on the authorship of the design of the AMB box. The proprietorship of a design is governed by s 2 of the UK Act. Under s 2(1) the author of a design shall be treated as the original proprietor of the design, and under s 2(1B) where a design is created by an employee in the course of his employment, his employer shall be treated as the original proprietor of the design. The “author” of a design means the person who creates it: s 2(3). Laddie, Prescott and Vitoria in The Modern Law of Copyright and Designs (2nd Ed, 1995), Vol 1, at p 1150 para 33.3 remark:

[P]rima facie, it is the author who is treated as the original proprietor of the design. The Act now defines the author as the person who creates the design. This appears to be consistent with what had been the pre-1989 law. The author is the person who conceives the particular features which are incorporated in the design. Although, no doubt, he may work through the medium of an amanuensis, he must have chosen the shapes, lines, textures and colours, if any, of that which is sought to be registered. But a person who gives general instructions to another for the creation of a design is not the author … Where the author of a design creates it under a commission for money or money’s worth, the commissioner is treated as the original proprietor. If the commissioning provisions do not apply and the author creates the design in the course of his employment, the employer is treated as the original proprietor.

20     Soundtex challenge Hunter’s claim as the proprietors of the registered design. Soundtex’s arguments on this point are essentially a repetition of those raised before the trial judge. Their counsel submits that on the evidence adduced, the proprietors of the registered design are in fact ABB, and not Hunter. He says that the evidence shows that Teo, not Ms Ang, was the actual author of the registered design. Counsel refers to the following unsatisfactory parts of Ms Ang’s evidence. She was unable to furnish the court with details of the design process with which she was allegedly closely involved, and when she was asked simple questions regarding the conception of the design, she was hesitant and unsure. Specifically, when she was asked how she arrived at the design, she said that she “only designed the meter appearance” and “the rectangular shape and round corners”, and that she ‘did not know how the other features were arrived at’ and could not recall when the design was finalised. However, subsequently, she managed to “recall” that she was also involved in other aspects of the design, such as the division of the AMB box into two compartments (upper and lower), the two flaps (for the MCB and isolator) and the transparent window for the meter. Counsel therefore suggests that she was not a designer. If indeed she had been a designer of electrical meter boxes for almost 20 years and was involved in the design of the AMB box as she claimed, it was strange that she did not have a clearer recollection of how the design was arrived at and of her involvement in the process. Further, her sketch in court of the design for the AMB box (the exhibit marked “P5”) was amateurish and did not support the standard expected of a designer with the knowledge and experience claimed for the conception of the design for the AMB box.

21     Counsel then refers to the evidence of Teo. He says that Teo was very much involved in co-ordinating the design of the AMB box and worked with Ms Ang from the beginning of the project, including passing along the feedback received from the HDB. For instance, he held discussions with the HDB on about 12 occasions in 1995 and 1996 “to gather information on taste and requirements”, and these discussions were based on the SMB-III box. He wanted a totally new design for an electrical meter box to replace the SMB-III box which was ABB’s product and was old.

22     Apart from the respective roles of Ms Ang and Teo, counsel relies on two pieces of evidence which, he submits, indicated to the relevant authorities and members of the public that ABB were the proprietors of the registered design. These were (a) a report dated 4 June 1996 of the Productivity and Standards Board (‘PSB’) in which ABB were referred to as the “client” and “manufacturer”, and the AMB box as the “ABB Model AMB” and “ABB Electrical Meter Box” respectively; and (b) ABB’s Product News brochure which indicated that “they are the proprietors of the AMB box”. Finally, it is suggested that ABB procured Hunter to register the design in the latter’s name, as they did not want to offend the HDB, Town Councils and EMS by securing a monopoly over a product for which the latter had been inviting public tenders. For this reason, Hunter were used as an acceptable alternative. After all, Hunter were incorporated only three months prior to the application for registration of the design, and had no track record of having designed or manufactured electrical meter boxes.

23     The issue here is one of fact and depends on the credibility of Ms Ang’s evidence that she was the designer of the AMB box. The trial judge found that she was, and the crucial question is whether the trial judge had in any way misdirected himself in making this finding. Soundtex made much of the apparent inconsistencies and contradictions in Ms Ang’s testimony, but the fact remained that these did not escape the trial judge who nevertheless held that, on the evidence as a whole, Ms Ang’s claim to be the principal designer of the registered design was to be upheld. He said at para 26:

PW3 deposed that she was one of the designers of the AMB box. She said that there were other designers. However PW4 said that he was not involved in the design and that his involvement was in getting feedback from the HDB and in submitting the design to the PSB for approval. I have noted that there were some apparent inconsistencies in PW3’s evidence. However, taking the evidence as a whole, I uphold PW3’s claim that she was the principal designer … PW3 gave evidence that she had experience as a designer for metal and plastic enclosures for almost 20 years. Therefore I find on the evidence before me that PW3 was the author of the registered design. There is also a question of whether the design was finalised before Hunter was incorporated in April 1996, but this point was not pursued by the defendants. Furthermore, there is nothing in the UK Act which prohibits the registration of a design by only one of the joint authors. Accordingly I find, on the basis that PW3 was an employee of Hunter, that Hunter is the original proprietor of the registered design.

24     In our opinion, on the basis of the evidence before him, the trial judge was entitled to accept her evidence that she created the registered design. As for Teo, it was not his evidence that he designed or played a major role in the design of the AMB box. Teo openly disclaimed any involvement in the creation of the design and limited his own involvement to liaising with the HDB and ascertaining their requirements and thereafter giving his input to Ms Ang on what was required by the HDB.

25     At any rate, it does not lie in the mouth of Soundtex to assert that ABB are the proprietors of the registered design, when ABB themselves not only disclaim any authorship in the design but affirmatively assert that Ms Ang was the author of the design, and hence Hunter the proprietors of the registered design. This is a situation where the alleged infringer contends that the proprietorship of the design lies with a party who is not asserting it. In this respect, it is helpful to refer to the case of Real Electronics Industries Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd (T Vimalanathan, third party) [1996] 1 SLR 336. There, the plaintiffs sued the defendants for infringement of their copyright in a design of a printed circuit board. In their defence, the defendants pleaded, inter alia, that the plaintiffs had not established their title or ownership to the design, giving them a right to sue and alleged that one Soh was the author of the design and that Soh was not an employee of the plaintiffs, and that the copyright in the design was vested in Soh and had not been assigned to the plaintiffs. Rubin J dismissed this argument at p 343:

[T]he arguments that the copyright of the contested modem’s design lay with Mr Soh and not with the plaintiffs, received a mortal blow by the following statement by Mr Soh in his affidavit:

3       I had been labouring and working on an interface and modem card known as COMFAX CF-29SR from November 1991 until about December 1991 when it was completed and documented into a computer in the plaintiff company. Around December 1991 it was sent to M/s Shinluck PCB Engineering Pte Ltd to make the Printed Circuit Board by me on behalf of the plaintiff company.

…

6         The plaintiff’s COMFAX CF29-SR was, however, copied by the defendant’s company, through the aforesaid Nathan [the third party] when he was still in the plaintiff’s company … [emphasis added by the court]

The foregoing passages are unmistakable. Mr Soh whom the defendants’ and third party’s counsel allege has the copyright, explicitly conceded that the design developed is the property of the plaintiffs. In such a circumstance, does it lie in the mouth of the defendants and the third party, to ascribe a right to Mr Soh who not only did not wish to claim the alleged right but also declared that it belonged to the plaintiffs. Given this scenario, the issue of assignment, as envisaged under s 194(3), does not arise at all in the case at hand. [emphasis is added]

Similarly, in the present case where ABB themselves take the position that Hunter are the proprietors of the registered design, it does not avail Soundtex to attempt to convince us otherwise.

26     As for the PSB report and Product News brochure, it is unclear what evidential value these have. Taking the PSB report first, it merely stated an assumption which the PSB made, which assumption was incorrect. Further, it is not entirely incorrect to identify ABB as the “manufacturer” of the AMB box, when they were the ones who manufactured the components of the AMB box, such as the MCB, isolator, kilowatt terminal, connectors, earth terminals, wires and labels, and the casing was produced by Hunter, at the time when the box was submitted to the PSB for testing. Second, with regard to the ABB’s brochure it did not make any representation that ABB are the proprietors of the registered design. The brochure stated that the design was registered, and referred to the AMB box as “the ABB Electrical Meter Box”, but did not state that ABB are the proprietors of the registered design. This was not inconsistent with ABB’s position. ABB purchased the box from Hunter, who are the registered proprietors of the design, and it would be proper for ABB to inform their customers that the AMB box is the subject of a registered design, and that they sell a product of that design and that their product is not an imitation. Thirdly, the suggestion that ABB induced Hunter to register the design in their own name, as they did not want to offend the HDB, Town Council and EMS, is really pure speculation. Lastly, it is wholly immaterial that Hunter were incorporated only three months prior to the application for registration. On the basis of the evidence, it cannot be said that the trial judge’s finding that Ms Ang was the author of the design and that, as she was in the employ of Hunter at the material time, Hunter are the proprietors of the design is plainly wrong. In the premises, we accept the finding that Hunter are the original proprietors of the registered design and thus had the locus standi to sue Soundtex.

Validity of the registered design

27     We now turn to the validity of the registered design which is challenged by Soundtex. The relevant provision touching on this point is s 1(1) of the UK Act which, so far as relevant, is as follows:

(1)         In this Act ‘design’ means features of shape, configuration, pattern or ornament applied to an article by an industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include

(a)   … , or

(b)   features of shape or configuration of an article which —

(i) are dictated solely by the function which the article has to perform, or

(iii) …

In this case, the features of the registered design as claimed in the statement of novelty reside in the shape and configuration as “applied” to the article, ie the AMB box. We therefore need only be concerned with the features of shape and configuration of the design. The question is whether the features of shape or configuration in the design of the AMB box “appeal to and are judged by the eye” — these terms are conveniently paraphrased as the “eye appeal” — and are not dictated solely by the function which the AMB box has to perform.

Eye appeal

28     The trial judge noted that the registered design is for an electrical meter box which is to cover the MCB, isolator and kilowatt meter. It is exposed and is installed on the walls along the corridors of HDB flats and, there being one box for each unit of the flat, there would be as many as a dozen or more of such boxes along each corridor. The customer in this case is the HDB, but no doubt they would have the views of flat owners in mind in their selection of such boxes. It cannot therefore be said that eye appeal is not a factor in the conception of the registered design. Accordingly, the electrical meter box has to provide an aesthetic protective cover for the MCB, isolator and kilowatt meter which will permit convenient access for the householder to the MCB and the isolator, and for the electricity supplier to the kilowatt meter. For this purpose, the design comprises two parts: an upper rectangular compartment housing the MCB and the isolator with two flaps: one for the MCB and the other for the isolator, and a lower square compartment housing the meter. The latter compartment has a protrusion with a clear perspex cover to enable the meter to be read without opening the cover. The learned judge opined that there can be any number of designs which can perform the same functions. For example, the edges of the covers for the upper and lower compartments are rounded, though they need not be. The upper compartment is rectangular, though it need not be — it may be square, and vice versa for the lower compartment. There need not be a protrusion to accommodate the meter as it is possible to make the entire lower compartment deeper to achieve the same purpose. It may even be possible to design a box with an oval rather than a rectangular shape. In the premises, the learned judge concluded that the registered design has eye appeal and is not dictated solely by the function the electrical meter box has to perform.

29     Counsel for Soundtex contends that there is nothing in either the shape or configuration of the registered design which is in any way special, peculiar, distinctive, significant or striking and there is nothing there that catches the eye. What catches the eye is a box containing electrical components. It has certain features which render it useful to the plaintiffs’ customers, such as the HDB, Town Councils and EMS, and make the AMB box superior to the models which preceded it, but these features relate only to the function which the box has to perform and do not have any eye appeal. In brief, the AMB box is purely of a utilitarian nature. In particular, none of the plaintiffs’ witnesses “came forward to say that the design of the AMB box was created to “attract the beholder””; and even the HDB themselves required the colour and texture of the box to match with and blend into that of the wall on which it was mounted. In any event, whilst the trial judge may have been right in holding that eye appeal simpliciter was a factor in the HDB’s choice of box, the relevant eye appeal in the legal sense was quite different. The legal test of features which have eye appeal is limited to those which would ‘seize the attention of a potential customer because their appearance is appealing and not simply because they can be seen’. Finally, the registered design is dictated solely by the function the AMB box has to perform. Each and every feature of the registered design serves a function and is attributable to, or is caused or prompted by a functional requirement of the meter box.

30     Clearly, the essence of a “design” under the statutory definition as applied to a finished article consists of features perceived visually, namely, features of shape, configuration, pattern or ornament, which would give the article a specific appearance. This conception of visual features as applied to an article is fundamental to the registered design system which is concerned with, and limited to, the protection of aesthetic as opposed to functional designs or ideas and inventions.

31     It should be borne in mind that the design, and the article to which the design is applied, are distinct: the design is not the article, and the article does not constitute the design. Accordingly, in this case, it is the registered design as applied to the AMB box and not the AMB box itself to which we should have regard. In Re Clarke’s Registered Design [1896] 2 Ch 38; 13 RPC 351 an application was made to court to expunge from the Register of Design a design for the shape of an electrical lamp. The judge at first instance held that there was sufficient novelty in the design to support the registration. On appeal his decision was reversed on the ground that there was no substantial novelty in the design. Lindley LJ said at [1896] 2 Ch 38, 43; 13 RPC 351, 358:

This Act is confined to designs applicable to manufactured articles, and to the application of such designs to such articles. Again, the Act does not apply to the things to which a design is applied; the Act applies to the design applied to them. The distinction is obvious enough when the design is for a pattern or ornament; but when, as in this case, the design is for the shape of a thing, the distinction is reduced to the difference between the shape of a thing and a thing of that shape. A design applicable to a thing for its shape can only be applied to a thing by making it in that shape. A design for the shape of something is what is meant by s 60 when shape is in question; and a registered design for a shape of a thing is infringed if that thing is made in the shape shown by the registered design (see s 58).

In Dover Ltd v Nurnberger Celluloidwaren Fabrik Gebruder Wolff [1910] 2 Ch 25; 27 RPC 498, where it was held by the Court of Appeal that the design of a hand grip for the handle of a bicycle was not new or original, Buckley LJ said at [1910] 2 Ch 25, 28; 27 RPC 498, 503:

From s 93 (the definition section of the Patents and Designs Act 1907) I learn that a design means something which is applicable to an article by … or any other means whatever, manual, mechanical, or chemical. Design means, therefore, a conception or suggestion or idea of a shape or of a picture of a device or of some arrangement which can be applied to an article by some manual, mechanical or chemical means. It is a conception, suggestion, or idea, and not an article, which is the thing capable of being registered. It may, according to the definition clause, be applicable to any article whether for pattern or for the shape or configuration or for the ornament thereof (that is to say of the article) or for any two or more of such purposes. The design, therefore, is not the article, but is the conception, suggestion, or idea of a shape, picture, device or arrangement which is to be applied to the article, by some one of the means mentioned in the definition clause. It is a suggestion of form or ornament to be applied to a physical body.

32     A design, therefore, is a conception of features of shape, configuration, pattern or ornament applied to an article and reduced to visible form so as to be identifiable, either by being embodied in the actual article or by being placed upon it in such a way that they are clear to the eye. In the present case, we need only be concerned with the shape and configuration of the design. Of shape and configuration, Buckley LJ in Gramophone Co Ltd v Magazine Holder Co (1910) 27 RPC 151, 159 had this to say:

[A] design within the Act may be one applicable to an article ‘for the shape or configuration.’ That is the head under which this design falls. These two words ‘shape’ and ‘configuration’ are not I think tautologous. The word ‘shape’ prima facie imports, and certainly includes, the external form of the article. ‘Configuration’ conveys the idea, not of the external form only, but of the construction of a composite article. The word ‘configuration’ imports the arrangement by which the shape of a composite article is arrived at.

33     In order to be registrable, a design has to satisfy two criteria under s 1(1) of the UK Act. First, there is the positive criterion which, so far as relevant here, is that the design has features of shape and configuration which, in the finished article, appeal to and are judged by the eye, ie the eye appeal. Second, there is the exclusionary part which excludes features of shape and configuration which are dictated solely by the function which the article has to perform. Applying the statutory definition here, what we need to consider are the features of shape and configuration as applied to AMB box which appeal to and are judged by the eye but excluding from the design features which are dictated solely by the function the AMB box has to perform.

34     Both these criteria (the positive and exclusionary) for determination of a design were considered by the House of Lords in AMP Inc v Utilux Pty Ltd [1972] RPC 103, which concerned a registered design of an electrical terminal used in washing machines. The House held that the features of shape or configuration in the design of the terminal fell within the exclusionary provision and therefore the registration was invalid. In dealing with the question of eye appeal of the terminal Lord Morris of Borth-y-Gest in his speech said at pp 112–113:

The question is raised as to the sense in which the features in a finished article are to appeal to and are to be judged solely by the eye. I think that it is clear that the particular feature which is in question or under consideration must be seen when the finished article is seen. But the words of the definition point, in my view, to considerations other than that of merely being visible. The phrases ‘appeal to’ and ‘judged solely by the eye’ denote features which will or may influence choice or selection. The eye concerned will be the eye, not of the court, but of the person who may be deciding whether or not to acquire the finished article possessing the feature in question. This does not mean that the ‘appeal’ or attraction must be to an aesthetic or artistic sense — though in some cases it may be. The features may be such that they gain the favour of or appeal to some while meeting with the disfavour of others. Beyond being merely visible the feature must have some individual characteristic. It must be calculated to attract the attention of the beholder. Thus Lord Avonside in one case (GA Harvey & Co (London) v Secure Fittings Ltd [1966] RPC 515) said that for a design to appeal it ‘must be noticeable and have some perceptible appearance of an individual character’. In the same case he referred to what had been constructed as being ‘of a distinctive shape or configuration which appeals to the eye and that shape or configuration is an addition to or embellishment of the fundamental form of such a unit and is not dictated solely by function’. In another case, Swain (Matthew) Ltd v Thomas Barker & Sons Ltd [1967] RPC 23, Lloyd-Jacob J spoke of ‘artistic variants’ which had imported ‘genuine design characteristics’ and of ‘a striking feature making an immediate appeal to the eye’.

On the same issue, Lord Pearson said at p 121:

The phrase is naturally to be read as importing some limitation of the expression ‘features of shape, configuration, pattern or ornament’. Not all such features constitute a design. It is not reasonable to suppose that the only limitation is that the features are visible in the finished article. If that had been the intention, it could have been expressed much more simply. The emphasis is on external appearance, but not every external appearance of any article constitutes a design. There must be in some way a special, peculiar, distinctive, significant or striking appearance — something which catches the eye and in this sense appeals to the eye …

His Lordship then dealt specifically with the design in question at pp 122–123:

I will now consider the features of shape or configuration which are alleged to constitute the ‘design’ in the present case.

The article in respect of which the designed is registered is called a ‘terminal’, but in fact it forms an electric connection between two electric conductors … On being merely looked at, it does not make any appeal to the eye. It has no feature of shape or configuration which is special, peculiar, distinctive, significant or striking. There is nothing in its appearance which catches the eye. It is not intended to be looked at: it is to form part of the interior mechanism of the washing machine, and would not normally be seen by anyone, except a maintenance engineer. If it had any eye appeal, that would be wasted, but I do not think it has any. An experienced electrical engineer, if he examined it carefully before it was incorporated in a machine, might be able to envisage it in operation and form some provisional opinion as to its probable efficiency when tested in operation. But he would be judging it by the mind for efficiency, not by the eye for appearance.

35     Thus the test of eye appeal is not simply that of a mere visual appreciation, which takes account of the thing seen without any particular reaction being generated thereby. To have eye appeal the design must have individuality of appearance; it must be ‘calculated to attract the attention of the beholder’ and therefore it must be in some ways “special, peculiar, distinctive, significant or striking”. It must not merely be visible but also be noticeable and “have some perceptible appearance of an individual character”.

Function

36     The exclusionary part of the statutory definition was also considered by the House of Lords in AMP v Utilux. It was argued that the exclusion only applies in cases where a design is created with features of a particular shape or configuration because of the function the finished article to which the design applied has to perform. Thus if the function of the article requires the design to be created in a certain shape or with a certain configuration only, then and only then are its features dictated solely by function. It was shown there that in relation to the electrical terminals, numerous alternative shapes of terminal could have been used for the relevant washing machines and it was therefore argued that the design of the respondents’ terminal was outside the exclusionary provision. These arguments were roundly rejected, for if they were correct, the statutory exclusion would have virtually no effect. Lord Reid said at p 109:

The respondents’ argument is that a shape is only dictated by function if it is necessary to use that precise shape and no other in order to perform the function. Admittedly if that is the meaning the scope of this provision would be reduced almost to vanishing point because it is difficult to imagine any actual case where one shape and one shape alone will work.

Lord Pearson (at p 122) also rejected the argument that a shape is only “dictated” by function if it is necessary to use that precise shape and no other in order to perform the function, and held that if the shape is not there to appeal to the eye but solely to make the article work, then this provision (the negative part of the definition) excludes it from the statutory protection. In his opinion, the phrase “dictated by” in the statutory definition means attributable to or caused or prompted by.

37     Where a shape is adopted by a designer upon the sole requirement of functional ends, ie to make the article work and not to appeal to the eye, then the provision excludes it from statutory protection. Lord Morris said at p 113:

In the present case the terminal was simply devised so that it should ‘do the job’. It was to perform the function that was defined by Hoover’s requirements. The terminal is I think to be considered as and looked at as a unit. But if its constituent parts are considered I think that on the evidence each one was solely devised so that it should correctly perform its own particular function. There was nothing extra. There was nothing that could be regarded as any kind of embellishment. First and last and all the time the key-note was functional success. The terminals, unseen in the machines for which they were required (save by those who make or service the machines), had only to pass the test of being able to perform their functions. They would be judged by performance and not by appearance.

Then, responding to the contention that the exclusion only applies where a designer has no option, because of the function which the article has to perform, other than to make it in one particular shape, Lord Morris continued at p 114:

I am unable to agree with this view. The contrast pointed to in the concluding words of sub-s (3) is between, on the one hand, features either of shape or of configuration or of pattern or of ornament which have been added or applied to an article because in the finished article those features will appeal to the eye and will be judged solely by the eye (and not be judged by any other test such as that of utility) or, on the other hand, features of shape or configuration (pattern or ornament being now omitted) which are purely functional (or, in other words, features of shape or configuration only brought about by or relevant to considerations of the functions which the article ‘to be made in that shape or configuration’ will have to perform). In my view, the features of shape of AMP’s terminals are essentially within the latter grouping and they will not be withdrawn from that grouping even though there might be an alternative or other shapes of terminals which would also fall within such grouping.

38     Finally, of the argument raised by the respondents that, as there could be variations of shape in terminals that would successfully do what was required of them, the “features of shape” were not ‘dictated solely’ by the function which the terminals would have to perform, Lord Morris said at p 113:

In my view, this contention is not sound. If there are alternative features of shape but if each one is ‘dictated solely’ by the function which is to be performed by the article then each one would be excluded from the expression ‘design’.

Later his Lordship reverted to the same point and said at p 115:

The circumstance that other shapes of other terminals might also be dictated by the function to be performed by them will not alter the fact that the shape of Amp’s terminals was dictated only by functional considerations and not also by the added consideration of making an appeal to the eye.

39     In order to be excluded from registration under the exclusionary part of the statutory definition, ie features dictated solely by function, it is necessary that all of the features of the design should be so dictated. If some features are dictated by function and others are not, and the features have eye appeal, then the design is registrable. This was one of the points decided by the Privy Council in the case of Interlego AG v Tyco Industries Inc [1989] 1 AC 217; [1988] RPC 343 to which we now turn.

40     In that case, the plaintiffs were the proprietors of the well known Lego bricks which are toys for children and are plastic bricks with round knobs and clutches which enable the bricks to be interlocked so that a child could construct buildings or other objects. One of the issues raised was whether the design had any eye appeal not solely dictated by the function the bricks had to perform. The Privy Council held that the actual shape and dimensions of the knobs and tubes were not dictated solely by the function of the bricks and that the bricks were designed, in part at least, with a view to the appearance of the article as a whole. In other words, the design incorporated mixed functionality and ornament. Lord Oliver of Alymerton, delivering the judgment of the Privy Council, said at [1989] 1 AC 217, 242; [1988] RPC 343, 353–354:

Nothing is to qualify as a design at all unless it has ‘features … which appeal to and are judged solely by the eye’, a requirement conveniently paraphrased by saying that the finished article must have ‘eye appeal’. That much is clear from the definition. What is less clear is the ambit of the exclusion. There are, apart from authority, three possible constructions of the definition taken as a whole, as was pointed out by Megaw LJ in the Court of Appeal in AMP Inc v Utilux Pty Ltd [1970] RPC 397 at p 433. It could mean that all that is registrable or is to be considered in connection with an application for registration is that part of the shape or configuration which has eye appeal, any purely functional feature being excluded from registration. Alternatively, it could mean that any design which includes any feature which is dictated solely by function is to be excluded from registration. Or, finally, it could mean that a design which, ex hypothesi, has eye appeal will be excluded from registration only if every feature of it is one which is dictated solely by function.

No one has contended for the first of these possibilities and such a construction would, indeed, make very little sense. In approaching the definition it is always to be borne in mind what is to be registered. It is a shape, configuration or pattern to be applied to a particular specified article and it is the shape or configuration of the whole article in respect of which there is to be a commercial monopoly. That necessarily involves taking the design and the article as a whole. Thus, the effective choice must be between excluding the whole shape or configuration from registration because there is a part of it that is purely functional or treating the whole shape or configuration as registrable (assuming that it has eye appeal) unless the whole of it is dictated solely by functional considerations.

In their Lordships’ view the latter construction is the one which makes better sense and it is in fact the construction which is supported by the authorities. What is contemplated here is that an article — and that must mean the whole of the article and not simply a part of it — is to be made in a particular shape or configuration. Thus the shape or configuration as a whole is being ‘applied to’ the article as a whole. It then has to be asked, is that shape or configuration (ie the shape or configuration of the whole article) dictated solely by the functional purpose? Moreover it makes no sense to exclude from registration designs for articles which have — and, indeed, may be intended to have as their principal attraction — a distinctive and novel appearance merely because they contain also features — perhaps even very minor ones — which are dictated by functional requirements.

His Lordship then considered the decision of the House of Lords in AMP, and stated the principles to be deduced from it as follows, at [1989] 1 AC 217, 243– 244; [1988] RPC 343, 355:

First, the primary essential before a shape can be registered as a design is that it should have eye appeal and in this context (a) the eye is that of the prospective customer and (b) the appeal is that created by a distinctiveness of shape, pattern or ornamentation calculated to influence the customer’s choice. … Secondly, the negative part of the definition does not involve, in order to demonstrate that a particular shape is ‘dictated solely’ by function, showing that the function could not have been performed by an article in some other shape. All that has to be shown is that the relevant features of the shape were brought about only by, or are attributable only to, the function which the article in that shape is to perform, even if the same function could equally well be performed by an article of a different shape. Thirdly, if every feature of the shape is one which is attributable solely to the function which the finished article is to perform, then the exclusion operates even though the shape may also have eye appeal.

41     Dealing with the design in question, Lord Oliver said at [1989] 1 AC 217, 248; [1988] RPC 343, 359:

Thus although the presence of knobs and tubes is no doubt attributable simply and solely to the functional purpose of providing clutch-power, the actual shape and dimensions of the particular knobs and tubes employed for that purpose were not dictated solely by their function but, in part at least, with a view to the appearance of the article as a whole. This evidence cannot be ignored and in their Lordships’ view it necessarily negatives any conclusion that the shape or configuration of the Lego brick is dictated solely by the function which it has to perform. It is a shape which, in their Lordships’ opinion, not only clearly has eye-appeal but has also significant features, both of outline and proportion, which are not dictated by any mechanical function which the article has to perform as part of a construction set.

Design of AMB box

42     We now turn to the question whether the registered design in this case as applied to the AMB box possesses features of shape and configuration, which “appeal to and are judged by the eye”. The essence of the “eye appeal”, as derived from AMP v Utilux and Interlego v Tyco (supra), is the distinctiveness of shape or configuration calculated to influence the customer’s choice. It is not sufficient that the features in question be merely visible; there must be something “special, peculiar, distinctive, significant or striking” about them, something “calculated to attract the attention of the beholder” or which may or will influence the choice or selection by customers. The registered design here as embodied in the AMB box is not merely visible; it is more than that. It has an individuality of appearance and is calculated to attract the attention of the beholder and influence the choice or selection by customers. As embodied in the AMB box the design reveals an article which is functional yet attractive. This is apparent from the way in which it is constructed: its shape and configuration, its modular sections and streamlined proportions.

43     Turning to the exclusionary part of the statutory definition, the trial judge arrived at the conclusion that the registered design was not dictated solely by the function the meter box has to perform. In our opinion, this conclusion is correct. The trial judge was further of the view that there can be any number of designs that can perform the same functions, and that appeared to be one of his reasons for the conclusion he arrived at. However, in our view, the fact that there can be any number of designs that can perform the same functions is not a valid or sufficient reason. It does not necessarily follow that because alternatives to the registered design exist, the registered design is not dictated solely by the function the AMB box has to perform. The crucial question here is whether this particular registered design is dictated solely by the function which the AMB box has to perform. The answer is clearly in the negative. In our judgment, for the reasons given, the features of shape and configuration of the registered design as manifested in the AMB box have eye appeal and are not dictated solely by the function the box has to perform. The finding of the trial judge on this point is correct.

Novelty at the date of application for registration

44     We now turn to the second requirement for registrability of a design under the UK Act, which is that the design is new at the date of application for registration. This is governed by sub-ss (2) and (4) of s 1 which, so far as relevant, are as follows:

(2)    A design which is new may, upon application by the person claiming to be the proprietor, be registered under this Act in respect of any article, or set of articles, specified in the application.

…

(4)    A design shall not be regarded as new for the purposes of this Act if it is the same as a design —

(a)   …, or

(b)   published in the United Kingdom in respect of the same or any other article before the date of the application,

or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade.

In considering the application of these provisions to the case at hand, two questions arise: first, whether the registered design was anticipated by any prior art, and second, whether there was any prior publication of the design.

Prior art

45     The prior art which, counsel for Soundtex contends, anticipated the registered design was the design for the SMB-III box, which was in use prior to the application for registration of the design of the AMB box. It is contended that the design of the AMB box is the same or substantially the same as that of the SMBIII box. The SMB-III box had been in existence since 1993 and had been used in the HDB tender documents since 1994. The SMB-III box is also rectangular in shape but larger than the AMB box with the MCB and the isolator being housed at the top with two flaps respectively for gaining access to them and the kilowatt meter at the bottom with a protrusion having a window with a perspex or glass cover so as to enable one to read the meter without opening the box. The trial judge found that when the two designs were compared, there are sufficient differences between the SMB-III box and the AMB box to prevent the former from constituting prior art. These differences are: (a) the SMB-III box has only one compartment as opposed to two in the AMB box; (b) the flaps in the SMB-III box for the MCB and the isolator are more squarish compared to the rectangular flaps in the AMB box; (c) the protrusion in the SMB-III box is greater than that in the AMB box and has a different angle; (d) the SMB-III box has protruding gland plates while those in the AMB box are flush; and (e) the SMB-III box has a protrusion at the top for the hinge which the AMB box does not have. If the two designs are placed side by side, one can immediately notice that they are different.

46     Counsel for Soundtex challenges this conclusion. It is argued that the differences enumerated did not relate to the shape or configuration of the registered design and that the registered design of the AMB box is the same or substantially the same as that of the SMB-111 box and that it differs from the latter “only in immaterial details or in features which are variants commonly used in the trade”. Consequently, there is no substantial novelty in the registered design compared to the SMB-III box.

47     Counsel for the plaintiffs, on the other hand, repeats the differences set out by the trial judge and further points to the features of shape and configuration present in the registered design which are not found in the SMB-III box. They are as follows:

Front view

(a)         The registered design comprises a rectangular box (‘the main box’) with two rectangular covers demarcating two compartments;

(b)         there is a substantial depressed gap between the top and bottom covers;

(c)         the top and bottom covers do not cover the entire front view of the main box;

(d)         the edges of the top and bottom covers, corresponding to the edges of the main box, are not flush with the
             respective edges of the main box;

(e)         there are no protrusions at the top, bottom or sides of the registered design; and

(f)          there are two slim flaps on the top cover, separated by a space of equal width.

Top and bottom views

(a)         There are no substantial protrusions or depressions on the top or bottom; and

(b)         there are two gland plates on the top.

Side view

(a)         There are two compartments; and

(b)         there is a depressed gap between the top and bottom covers of the two compartments.

48     We do not agree with the contentions of counsel for Soundtex that the differences identified by the trial judge did not relate to the shape or configuration of the registered design. They clearly do. Looking at the two designs and comparing them as the trial judge did, it is immediately apparent to us that the registered design as manifested in the AMB box possesses sufficient differences to set it apart from that as manifested in the SMB-III box. The trial judge pointed out five differences between the AMB and the SMB-III box, and there are other differences pointed out by counsel for the plaintiffs. The most material differences are the following. First, the striking feature which is present in the AMB box but absent in the SMB-III box is the division into two compartments with a clear and distinct dividing space between them. The upper compartment contains the MCB and the isolator and the lower contains the meter with a protrusion. The plaintiffs have termed this division as the hallmark of their ‘modular’ design. Second, the structure and proportions of the two compartments of the AMB box and the protrusion with the perspex cover at the window give it a neater, more elegant and streamlined look compared to the SMB-III box. In our judgment, there is sufficient novelty in the registered design. It cannot be said that the design of the AMB box differs from that of the SMB-III box in immaterial details or in variants commonly used in the trade.

Prior publication

49     The next challenge mounted by Soundtex to the novelty of the registered design is that there were prior publications of the design before the date of application for registration. They rely on the following instances of prior publication: (a) Hunter’s sale of the AMB box to ABB; (b) submission by Hunter/ ABB of the AMB box to the PSB for testing; (c) the derivation of the registered design from the HDB tender specifications.

50     In connection with this issue it is relevant to refer to sub-ss (1) and (3) of s 6 of the UK Act which provide:

(1)         An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of

(a)   the disclosure of the design by the proprietor to any other person in such circumstances would make it contrary to good faith for that other person to use or publish the design;

(b)    the disclosure of the design in breach of good faith by any person other than the proprietor of the design; or

(c)   in the case of a new or original textile design intended for registration, the acceptance of a first and confidential order for goods bearing the design.

(3)         An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of the communication of the design by the proprietor thereof to a government department or to any person authorised by a government department to consider the merits of the design, or of anything done in consequence of such a communication.

Sale by Hunter to ABB

51     The first instance of prior publication was the sale by Hunter of the AMB box. The contract for the sale was evidenced by the two letters: one by Hunter to ABB dated 6 June 1996 offering the components of the AMB box for sale, and the other by ABB to Hunter dated 11 June 1996 in reply accepting the offer. The trial judge held that this sale was not a prior publication of the AMB box, and that what transpired between Hunter and ABB were discussions between them with a view to improving or perfecting the design, and such discussions would be treated as confidential. He referred to the case of Nevill v John Bennett & Sons (1898) 15 RPC 412. Also considered by the trial judge were Blank v Footman, Pretty & Co (1888) 39 Ch D 678; 5 RPC 653; Carflow Products (UK) v Linwood Securities (Birmingham) [1996] FSR 424 and Sommer Allibert (UK) Ltd v Flair Plastic Ltd [1987] RPC 599.

52     Before we proceed further it would be helpful at this juncture to consider these cases. In Nevill, the plaintiffs who were the proprietors of a registered design brought an action against the defendants for infringement of their design. One of the defences raised was that there was a prior publication of the design and accordingly the design was not new at the date of the application for registration. The alleged prior publication arose in this way. The plaintiffs had commercial dealings with one Fotiadi in Constantinople and in their course of dealings the latter sent to the plaintiffs a design which he thought would be desirable to be applied to goods for sale in Persia. The plaintiffs then worked on the design and put it into a suitable practical form which was later approved by Fotiadi. After approval, the plaintiffs applied for the design to be registered and it was registered with the plaintiffs as the registered proprietor. The defendants relied on such collaboration between the plaintiffs and Fotiadi as a prior publication. Hall VC in rejecting this argument said at p 414:

[I]n this case, where everything was private and there was mere collaboration between Fotiadi, through his agent Stelfox, and the plaintiffs, with a view to the design being put into a suitable and workable shape, which was to be the property of the plaintiffs, but to be engaged, as was said, for the use of Fotiadi in the Persian market — to say that that private consultation, that private working together, amounted to prior publication, seems to me to be entirely unfounded. The idea of prior publication, I quite believe, is where a matter of that kind has been thrown upon the public knowledge, and has become a matter of public knowledge, not necessarily extensively, but otherwise than in the way of private preparation which I have mentioned, and it seems to me that a publication of that kind is altogether a different matter to what took place on this occasion.

53     In Blank, the plaintiff created a design and showed samples of the design to one Hummel, who was his commission agent, for the purpose of ascertaining whether the design would be attractive to potential customers. Hummel took some samples and showed them to his main customers and actually obtained orders for considerable quantities of the material to which the design was applied. But the orders were executed only after registration of the design. It was held by Kekewich J that the showing of the samples of the design by the plaintiff to Hummel was communication of a confidential character being a necessary incident to the relation between the two parties and therefore did not amount to publication. He held at (1888) 39 Ch D 678, 680–681; 5 RPC 653, 655:

… Mr Hummel has an interest in any design of Mr Blank’s in goods of this class, and though he is not a partner or in any way a partner, he has that interest which makes him a person whom Mr Blank would naturally consult before endeavouring to put any of that class of goods on the market. Mr Blank, therefore, having sketched this design, shows it to Mr Hummel. I cannot conceive that in doing so he would be publishing the design in any sense which could be placed on that word. Even if that relation had not existed between the two parties, I see no reason why a designer should not call in an expert, a gentleman whom he knows to be experienced in the trade, likely to advise him well and whom he can trust, for the purpose of advising him before incurring further expense and trouble. But the relation which I have described existing, there cannot be to my mind the slightest doubt about it. Therefore, in calling in Mr Hummel and showing him the sketch, and showing him the designs as altered from time to time, for they were altered over and over again, and in consulting him respecting the cost and other details, I consider that Mr Blank was only doing that which he was fairly entitled to do, the confidential character of the communications being a necessary incident of the relation between the two parties.

However, the part played by Hummel in showing the samples of the design to a few of his main customers amounted to publication and therefore there was no novelty in the design at the time the plaintiff applied to register it.

54     In Sommer Allibert, the first plaintiffs sold garden chairs made in moulded plastic designed by the second plaintiffs under the name of Madrigal and they both brought an action for infringement of the design of that chair against the defendants who sold also moulded plastic chairs but under the name of Sonata. One of the issues raised was whether the despatch of certain drawings by the second plaintiffs to the first plaintiffs was prior publication. It was held that such disclosure of the drawings to the first plaintiffs was “in-group communication” and was never intended for and was never communicated to the public.

55     In Carflow Products, the plaintiffs sued several defendants for infringement of a design of a steering wheel lock. One of the defences raised was that a prototype of the steering wheel lock had been made by one of the defendants and shown to a buyer for another defendant at a certain meeting, before the plaintiffs sold their products. At an early stage of the proceedings, two issues were ordered to be tried, namely, whether the prototype had been shown to the buyer for the other defendants, and if so, whether that was shown in circumstances of confidence. On the first issue, the trial judge found that the prototype had been so shown to the buyer. On the second issue, the trial judge considered the position subjectively as well as objectively and came to the conclusion that the circumstances in which it was shown were such that the buyer was free in law and equity to use or disclose the same.

56     Counsel for Soundtex submits that Hunter and ABB were negotiating and entering into the transaction as commercial parties at arm’s length and seeks to distinguish the two cases of Nevill v Bennett and Blank v Footman (supra) as follows. Unlike Nevill, it was not the plaintiffs’ case that the registered design was originally provided by ABB to Hunter to put it into a working form. On the contrary, both Hunter and ABB firmly maintained that the former are the true and sole proprietors of the registered design, and this was accepted by the trial judge. The design was not achieved as a result of a collaboration between them. Again, unlike Blank, the discussions between Hunter and ABB were held with a view to sale and purchase of the AMB box and not for the purpose of consultation. The registered design was finalised around April 1999, and any discussions conducted after that were carried out in a commercial context, and thus were not to be regarded as confidential. The transaction between them in June 1996 was one for the sale and purchase of the AMB box. Before the transaction, the design drawing was shown by Ms Ang’s husband, Chan, to ABB in June 1996 for the purpose of ascertaining whether the latter “were interested to purchase”. Registration of the design took place thereafter in July 1996, after the occurrence of these events which constituted prior publications. If the plaintiffs wanted to avoid this consequence, they ought to have held their discussions only after the design was registered.

57     Counsel relies on Gunston v Winox Ltd [1921] 1 Ch 664; 38 RPC 40. In that case, the plaintiffs created a design and showed it to the defendants with a view to obtaining orders from the latter. However, negotiations between them fell through. The defendants copied the design of the plaintiffs for their products. The plaintiffs submitted their design to the Premier Drug Company who approved the design and placed an order on certain conditions. The plaintiffs then registered the design and sued the defendants for infringement of the design. The question arose whether the sending of the samples to the company was a prior publication. Astbury J held that the design was disclosed to the Premier Drug Company in such circumstances as would have been contrary to good faith for the company to publish it or use the design before registration. On appeal, his decision was reversed on the ground that the communication between the company and the plaintiffs proceeded on the basis that there was an existing copyright and there was no obligation on the part of the company not to disclose the design. In the course of his judgment Lord Sterndale MR said at p 51:

There is ample authority that showing of a design to a person for the purposes of getting an order, is prima facie, a disclosure of that design.

58     In the instant case, it seems to us that Hunter and ABB had intended to collaborate to produce and market the AMB box. The discussions which took place between them were held with a view to improving and perfecting the design of the AMB box so as to meet the HDB’s needs. The nature of these discussions which were held with a view to collaboration for mutual profit imported an obligation of confidence. They collaborated closely on the conceptualisation of the design and market research and it was contemplated that ABB would be Hunter’s sole agents. The agreement between them dated 11 June 1996 provided that the AMB box would be supplied by Hunter to ABB on an exclusive basis. ABB had an interest in the registered design, and this being so, the communications between Hunter and ABB were clearly confidential and not such as to amount to a prior publication. There were present both the elements of interest in the design and private collaboration. It cannot be said that the registered design had been “thrown upon the public knowledge” or ‘become a matter of public knowledge’ so as to amount to a public disclosure. In our judgment, there was no prior publication in the circumstances.

Submission to PSB

59     The next instance of prior publication relied upon by Soundtex was the submission of the AMB box to the PSB for the purpose of testing. This was no more than a case where the author of a design submits an article, to which the design has been applied, to the relevant authority for safety testing. The trial judge was unable to see why a confidential relationship ought not to be established in a situation such as that. To hold that such an act amounts to prior publication would defeat the attempts of all designers of articles which require some form of testing or certification before such articles may be put in the market. Disclosure to the PSB in such circumstances does not mean that the design has been “thrown upon the public knowledge, and has become a matter of public knowledge” (per Hall VC in Nevill v Bennett (supra) at p 414). The trial judge accordingly held that the submission to the PSB did not constitute a prior publication. We agree with the trial judge. The limited disclosure to the PSB for a specific purpose could not constitute a prior publication within the meaning of s 1(4) of the UK Act.

Derivation from HDB tender specifications

60     The third and final instance of prior publication relied upon by counsel for Soundtex was the derivation of the registered design from HDB tender specifications. This argument of “prior publication” was premised on the publication of the SMB-III box by the HDB before the creation of the registered design. This argument was not advanced before the trial judge and appeared to us to be a mere afterthought. At any rate we find it difficult to understand how the derivation of the design from the SMB-III box could constitute a prior publication of the design. We have dealt with the issue relating to the SMB-III box earlier in our discussion on the anticipation of prior art.

Infringement of Hunter’s registered design

61     We now turn to the issue whether the design of the Soundtex box infringed the registered design of the AMB box. In considering this issue the trial judge accepted the proposition that if the design in question is of limited novelty in that only certain of its features can be regarded as new, equally small differences between that design and any subsequent design will be sufficient to avoid infringement. For this broad approach he relied on Simmons v Mathieson & Co (1911) 28 RPC 486 and Negretti and Zambra v WF Stanley & Co Ltd (1925) 42 RPC 358 and also the following passage in Russell-Clarke on Copyright in Industrial Designs (5th Ed, 1974) at p 85:

In deciding whether any differences between the alleged infringement and the registered design are or are not substantial differences, the same considerations will apply as in determining whether the registered design is or is not novel compared with previous designs. Thus, the alleged infringement and the registered design should be looked at, not only together, but apart, and at different times, and a little distance off. Since the principle which applies in ordinary artistic copyright, that there can be no copyright in a mere idea, is also presumably applicable in the case of copyright in a registered design, there can presumably be no infringement if all that has been done by the defendant is to take the broad idea and not the particular method of representing it.

If only small differences separate the registered design from what has gone before, then equally small differences between the alleged infringement and the registered design will be held to be sufficient to avoid infringement.

In Simmons v Mathieson & Co Ltd …, Swinfen Eady J said:

… and I think under these circumstances, seeing what the defendants have done in producing something independently, something bearing some resemblance to it, but I think differing as much from the plaintiffs’ as the plaintiffs’ differ from any of its predecessors, it would be impossible to hold that there was sufficient novelty in the design, without at the same time deciding that the defendants’ is so different that it cannot be held to infringe. I think, therefore, on the question of infringement, that the defendants have not infringed the plaintiffs’ registered design.

And on appeal, Fletcher Moulton LJ, as he then was, said:

The only possible way in which the registration could be good would be to magnify the importance of minute details so as to give it novelty or originality, and then if you magnify the importance of small details for that purpose, you must also keep them on that scale for the purpose of deciding whether there is infringement.

62     The trial judge then turned to consider the differences between the SMB-III box, the AMB box and the Soundtex box. He held that the overall configuration of the AMB box was not new; it adopted the same configuration as the SMB-III box, i.e. location of the MCB and the isolator above the meter in an overall rectangular shape with two flaps for the MCB and the isolator and a protrusion with a window for the meter. There was thus no novelty in this configuration. The SMB-III box is larger than the AMB box, but dimension is not a factor to be considered as novelty was claimed only in the shape and configuration, and further no dimension was specified in the certificate of registration. However, the general dimensions of the AMB box and the Soundtex box are virtually the same; ie they are the same length and breadth in the overall box as well as in the top and bottom compartments, even the flaps are the same size. Even then, the differences between the AMB box and the Soundtex box are apparent upon a visual comparison as follows:

(a)    the angle of the protrusions housing the meter are noticeably different — the protrusion in the Soundtex box is nearer the perpendicular than that in the AMB box;

(b)    the windows for the meter with the perspex or glass cover are noticeably different — that in the Soundtex box covers the entire area of the protrusion whereas in the AMB box there is a border, the window in the Soundtex box sticks out from the protrusion whereas in the AMB box it is flush with it, and there are two distinctive features of the window in the Soundtex box which do not exist in the AMB box which make the former distinct from the latter:

(i)    eight knobs are visible at the edges of the window, two on each of the four edges; and

(ii)   a thin black line borders the window;

(c)    at each side of the AMB box, at both top and bottom, there are joint lines running at 45 degrees from the top and bottom corners, forming two triangles, whereas the joint line in the Soundtex box runs 90 degrees from the middle of the box; and

(d)    the Soundtex box is deeper than the AMB box.

63     Having considered these differences, the trial judge was of the opinion that as the test for substantial difference in a claim for infringement is similar to the test for substantial novelty of the registered design as compared to previous designs, the design of the Soundtex box is as different from the registered design as the latter is from the design of the SMB-III box, and concluded that Soundtex had not infringed the plaintiffs’ registered design. He said at para 43:

The learned editor of Russel-Clarke suggests that in a case such as this, in which the registered design is an evolution of an earlier design in the market, the test for substantial difference in a claim of infringement is in many respects similar to the test for substantial novelty of the registered design compared to previous designs. I think this is borne out in the Simmons case. The differences listed in the previous paragraph clearly show that the design of the Soundtex box is as different from the registered design as the latter is from the design of the SMB-III box. I therefore conclude that in producing the Soundtex box, the defendants have not infringed the registered design.

64     The plaintiffs challenge this finding. It is contended on their behalf that the trial judge erred in the following respects: (a) affording an unduly limited scope to the registered design; and (b) holding that the Soundtex box is substantially different from the AMB box. The scope of the registered design was unduly limited, because the trial judge had adopted the wrong test in determining the scope of registration. Counsel submits that the test adopted by the trial judge was not correct, namely, that where the registered design is of limited novelty in that only limited features thereof are new, then equally small differences between the registered design and any subsequent design would be sufficient to avoid infringement. On this point counsel submits that the passage of Russell-Clarke had been doubted by the authors of The Modern Law of Copyright & Designs, Vol 1 at para 35.12–35.13 and the two cases cited, Simmons and Negretti and Zambra, do not stand for the principle. Turning to the differences between the registered design and that of the Soundtex box, counsel points out that of the four differences identified by the trial judge in his grounds of judgment only one of any significance is the appearance of the window of the Soundtex box, namely, the window in the Soundtex box covers the whole area of the protrusion while in the AMB box there is a border surrounding the window. The other differences between the Soundtex box and the AMB box identified by the trial judge are not features of design which would be noticed by the consumer’s eye and are therefore irrelevant.

65     Counsel for Soundtex, on the other hand, submits that, in assessing whether there was infringement, the following steps should be adopted:

(a)    The court must first construe the registered design and see what it protects. To that end, it must have regard to the statement of novelty in the certificate of registration which determines the scope of the protection claimed.

(b)    In determining the scope of the protection, the court must take into account only those features which have “eye appeal” and discount those features which are not registrable — ie features which in the subject article do not appeal to the eye or are dictated solely by the function the article has to perform.

(c)    The court must then compare the alleged infringing design with the registered design itself (not products embodying the design), considering once again those features which have eye appeal and discounting those which, though similar, are not registrable.

Counsel, after discounting the various unregistrable features of the registered design, submits that the only relevant features which are apparently within the scope of protection, and which have not been infringed by Soundtex, are the features identified by the trial judge. Counsel further submits that all these features are not capable of being protected and hence unregistrable on the grounds of lack of eye appeal and novelty and of functionality. Adopting the same approach as the trial judge, counsel submits that the differences that separate the registered design from the prior art (the SMB-III box), and those that separate the registered design from the alleged infringing design (the Soundtex box), were equally small.

66     We turn first to the statutory provisions governing infringement of a registered design. What amounts to infringement is provided in sub-ss (1) and (2) of s 7 of the UK Act, which read as follows:

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

(a)   to make or import

(i) for sale or hire, or

(ii) for use for the purposes of a trade or business, or

(b)   to sell, hire or offer or expose for sale or hire,

an article in respect of which the design is registered and to which that design or a design not substantially different from it has been applied.

(2)         The right in the registered design is infringed by a person who without the licence of the registered proprietor does anything which by virtue of subsection (1) is the exclusive right of the proprietor.

67     Reverting to what has been decided by the trial judge, we entertain some serious doubts whether the approach adopted by him, which was based on the passage from Russell-Clarke at p 85, is correct. The passages of the judgments of Swinfen Eady J and Fletcher Moulton LJ in Simmons relied upon in Russell-Clarke were purely obiter dicta. In that case, both the learned judges found that the registered design was not new and original, and accordingly the registration was invalid, and strictly speaking there was no need to embark on a comparison between the registered design and the alleged infringement and determine whether there was infringement. As counsel for the plaintiffs points out, the learned authors of The Modern Law of Copyright & Designs Vol 1 at para 35.12 expressed some doubt as to the correctness of the approach suggested in Russell-Clarke.

68     In Le May v Welch (1885) 28 Ch 24, 31 Baggallay LJ said:

It was urged that if the design ought to be registered, though there were only small differences between it and previous designs, the same rule ought to be applied as to infringement, and that a trifling difference between the collars of the plaintiffs and the defendants would prevent the defendant’s collars from being an infringement. That is not the right way to deal with the case; the proper way of dealing with it is to see, whether the registration should be maintained, or the design removed from the register.

In Gramophone Co Ltd v Magazine Holder Co (1910) 27 RPC 151, 159 Buckley LJ said:

[I]f the design in question be one which is applied to a well-known form the novelty of the design must consist in deviations from that well-known form to such an extent as that a new design is arrived at. To ascertain whether this is so or not, it must be material to ascertain what is the well-known form at the time of registration, and then to see in what respects the design is a variation from that form so as to be new or original. The novelty or originality in such case will consist in the deviations from that which, according to the state of knowledge at the date, was a well-known form. The design must, no doubt, be regarded as a whole, but in so regarding it, it is material to ascertain whether, and to what extent, that whole is novel or original by reason of some, and what, variations from that which is ascertained to be the well-known form. In order to ascertain whether the design is infringed, it may thus become of the essence to ascertain whether those parts of the design, in which the novelty consists, have or have not been taken by the alleged infringer.

69     The learned authors of The Modern Law of Copyright & Designs suggest the following approach at para 35.14:

We suggest that the correct approach to determining whether there is infringement is as follows:

(1)   assess what are the essential or significant features of the registered design having regard to such matters as the statement of novelty, relevant prior art and functional exclusions; and then,

(2)   compare the registered design with the alleged infringement to assess whether visually the latter has incorporated all the design features which, as a result of step (1), are considered to be essential parts of the registration.

In principle, this two-step approach seems to us to be correct and we respectfully adopt it.

70     We have already gone through the first step and determined that the registered design has the essential features which, as applied to the AMB box, have eye appeal not dictated solely by the functions the AMB box has to perform and that there are sufficient differences between the registered design and the prior art, ie the design for the SMB-III box, to give novelty to the registered design. We now turn to the next step, the comparison between the registered design and the alleged infringement, ie the design embodied in the Soundtex box. A registered design includes all its features, those which are novel and those which are not, and must be looked at as a whole, and the comparison exercise conducted must have regard to the design as a whole. There will be no infringement, if the alleged infringement is substantially different from the registered design looked at as a whole.

71     In Benchairs Ltd v Chair Centre Ltd [1974] RPC 429, the Court of Appeal held that the design of the defendants’ chair did not infringe that of the plaintiffs’ chair. Russell LJ delivering the judgment of the court considered first the approach to the determination whether the defendants’ design infringed the plaintiffs’ design and said at pp 444:

As we see it, our task is to look at these two chairs, to observe their similarities and differences, to see them together and separately, and to bear in mind that in the end the question whether or not the design of the defendant’s chair is substantially different from that of the plaintiff is to be answered by consideration of the respective designs as a whole.

Later his Lordship held at p 445:

In addition to attempting a detailed analysis of similarities and differences, we also have done our best to step back and consider the designs of the two chairs, on all too many occasions, separately, together, and each as a whole. To our eyes the plaintiff does not establish a prima facie case that the design of the defendant’s chair is not substantially different from that of the plaintiff. Of course, they are both chairs, and stackable chairs: but so far as the whole design is concerned they appear to us to be substantially different, and it perhaps would not serve to repeat some of the differences that we have stressed.

72     In making such comparison attention no doubt should be focused on those features which have “eye appeal”, and features of shape or configuration which are dictated solely by function and methods or principles of construction are excluded. This is reinforced by s 7(6) of the UK Act which provides:

The right in a registered design is not infringed by the reproduction of a feature of the design which, by virtue of s 1(1)(b), is left out of account in determining whether the design is registrable.

73     We now turn to the comparison between the registered design and that embodied in the Soundtex box and the crucial question is whether the latter is substantially different from the registered design. As a first step, it is necessary to identify those features which fall for comparison. In the instant case, in respect of the registered design, there is no doubt that the outstanding feature is the modular design which is present in both the AMB box and the Soundtex box. In both cases, the box is divided distinctly in two compartments: the upper one housing the MCB and the isolator with access to them provided by the two flaps respectively and the lower one housing the kilowatt meter which can be read through a window with a perspex or glass cover. The shapes and the sizes of the two boxes are the same; so also are those of the divided compartments and the flaps that provide access to the MCB and isolator. Size as a concept is encompassed in the definition of shape and configuration. The noticeable differences between the two designs are, first, the slightly larger window and, second, the slight difference in the protrusion angle of the window. The other differences, namely, the presence of eight knobs at the edge of the window and the thin black line at the borders of the window are, in our opinion, quite immaterial. Looking at the two designs as applied to the boxes together as well as apart and also from some distance off, the general effect and the inescapable impression is that the two designs are substantially the same. It does not appear to us that there are substantial differences between the two. The differences lie only in the details or refinements thereto. In our judgment, the design of the Soundtex box is an infringement of the registered design.

Innocent infringement

74     It will be recalled that the trial judge held that on the evidence adduced the defence of innocent infringement was available to Soundtex so that, even if there was infringement, which in our view there was, no damages would be awarded in respect of any infringement up to 12 June 1997. The defence is provided by s 3 of the Singapore Act which is as follows:

The registered proprietor of a design shall not be entitled to recover any damages in respect of any infringement of copyright in a design from any defendant who proves that at the date of the infringement he was not aware nor had any reasonable means of making himself aware of the existence of the registration of the design:

Provided that nothing in this section shall affect any proceedings for an injunction.

There has been no appeal against this part of the judgment. No issue therefore arises on this defence.

Acquiescence, waiver and estoppel

75     Soundtex’s appeal against the judge’s decision that the defences of acquiescence, waiver and estoppel were not available to them. To found his argument, counsel for Soundtex relies on the following facts. Teo submitted ABB’s Product News brochure, which contained drawings depicting the registered design, to the HDB and EMS when he was promoting the AMB box, in August 1996. Following that, HDB and EMS reproduced the registered design in the drawings contained in the tender documents. These tender documents had the effect of requiring contractors tendering for HDB projects to use electrical meter boxes of the same or a similar design. When Teo became aware of the use of the design by the HDB and the Town Councils, he raised no objection. In fact, it was his evidence that he was pleased with because this meant that his marketing strategy had worked. Subsequently, when Soundtex followed the tender drawings and specifications in coming up with the Soundtex box, the plaintiffs decided to sue them for infringement of the registered design. Soundtex therefore alleged that Teo had deliberately allowed the HDB, EMS and Town Councils to use the registered design in their tender documents. Not only did he not stop them from doing so, he also did not request that they inform the public that the design was a registered design. There was nothing in the tender documents to show that the design was registered or that permission had to be sought from ABB before they could be used. In the circumstances, not only did ABB impliedly allow the HDB and other public bodies to use the registered design, they also represented by their conduct that anyone else may use it. It was ABB’s marketing strategy for EMS to use their design in the tender documents, no doubt, in the hope that contractors would purchase the AMB box from them in order to comply with the tender requirements. However, they must have realised that once the drawings containing the registered design were provided in that manner, without any indication that it was a registered design, it was quite possible that contractors would simply lift the design from the tender drawings. Indeed, it was Teo’s evidence that he was prepared to take the risk of people copying the registered design. In the premises, argued Soundtex, they were entitled to the defences of waiver, acquiescence and estoppel.

76     The trial judge rejected this argument. He held at para 51:

The common thread running through these equitable doctrines is that a party must, by words or conduct, have induced the other party to act to his detriment, or has stood by despite knowledge of an infringement of his rights. I cannot see any merit in the defendants’ contention that in this case, Hunter, in permitting the HDB or EMS to use the drawing, had waived their rights in the registered design vis-à-vis the defendants. The defendants were not aware that such rights existed; indeed they did not even know that there was a design by Hunter. Without any knowledge of the existence of Hunter’s rights, I cannot see how the defendants could have understood Hunter’s action as a waiver of those rights. The same consideration applies to the argument that Hunter was estopped or had acquiesced to the infringement. There simply was no communication by word or action between Hunter or ABB and no knowledge on their part of the infringement. Counsel for the defendants has not cited any authorities that extend these equitable doctrines to the situation before us.

77     We agree with the trial judge that on the facts the defences of waiver, acquiescence or estoppel were not available to Soundtex. The elements of these equitable defences have not been made out. There was no clear and unequivocal representation made by either of the plaintiffs, on which Soundtex could have relied. As the trial judge found, there was no communication between Hunter or ABB on the one hand, and Soundtex on the other. Even if there was, there was no reliance by Soundtex, having regard to the fact that Soundtex was unaware that Hunter’s design was registered and succeeded in their defence of innocent infringement. Finally, it cannot be said that it was ‘unconscionable’ for the plaintiffs now to assert their rights. In the circumstances, in our judgment, the defences of waiver, acquiescence and estoppel were not available to Soundtex.

Certificate of contested validity

78     The plaintiffs in their case applied for a certificate of contested validity of registration pursuant to s 25 of the UK Act for the sake of completeness. Section 25 reads:

(1)    If in any proceedings before the court the validity of the registration of a design is contested, and it is found by the court that the design is validly registered, the court may certify that the validity of the registration of the design was contested in those proceedings.

(2)         Where any such certificate has been granted, then if in any subsequent proceedings before the court for infringement of the right in the registered design or for cancellation of the registration of the design, a final order or judgment is made or given in favour of the registered proprietor, he shall, unless the court otherwise directs, be entitled to his costs as between solicitor and client:

Provided that this subsection shall not apply to the costs of any appeal in any such proceedings as aforesaid.

The plaintiffs contend that the rights and privileges conferred by a certificate of contested validity are imported pursuant to s 2 of the Singapore Act. We see no impediment to our granting such a certificate. We accordingly grant it.

Conclusion

79     For the reasons given, we allow the plaintiffs’ appeal in CA 80/99 and dismiss Soundtex’s appeal in CA 82/99. The claim by Hunter against Soundtex succeeds. As the defence of Soundtex of innocent infringement succeeds, we make no award of damages for any infringement up to 12 June 1997. We grant an injunction against Soundtex in terms of prayer (a)(i) of the statement of claim.

80     We invite counsel for Hunter and Soundtex respectively to address us on any other reliefs to which Hunter are entitled and which fall within the ambit of the claim. We would also like to hear counsel on the question of costs here and below. Counsel are requested to submit their respective submissions to us within 14 days from this date.

Order accordingly.

Reported by Dawn Tan Ly-Ru