| Sebel Furniture Ltd v Tiong Hin Engineering Pte Ltd [1999] 2 SLR 662; [1998] SGHC 350 |
| Suit 2062/1996 | |
| 22 Oct 1998 | |
| High Court | |
| Lim Teong Qwee JC | |
| M Ravindran and Joseph Liow (Ravindran Associates) for the plaintiff, Patrick Yap and Eddie Koh (Yik Koh Teo & Partners) for the defendant |
Judgment
[Please note that this case has not been edited in accordance with the current Singapore Law Reports house style.] Lim Teong Qwee JC: 1 The plaintiff is an Australian company. It makes chairs and other furniture including a range of chairs under the trade mark Program. These chairs are sold in Australia, Singapore and elsewhere. The Program range of chairs include an unupholstered “side chair” (ie a chair without arms) without “linking” (ie without the capability of being linked one to another through a feature at the side of the chair). In October 1990 the design of the Program chair was registered in Australia with effect from March 1984. In May 1994 Sebel was also registered in the United Kingdom as the proprietor of a design of a chair which it calls the Wide Program chair. It has not made any Wide Program chair but a prototype chair more or less in the registered design was produced in court. In this judgment I shall refer to Sebel’s design registered in the United Kingdom as the UK registered design, Sebel’s unupholstered side chair as the Original Program chair and a chair in the UK registered design as the Wide Program chair. 2 The defendant is a Singapore company. It also makes chairs and other furniture. Its chairs are sold in Singapore under the trade mark Daglo. The Daglo chairs also include an unupholstered side chair without linking. Tiong Hin sells these chairs under the trade mark Dover. 3 The Original Program chairs were first sold in Australia in about mid-1986 and in Singapore in 1987. The Dover chairs were first sold in 1995. Both chairs incorporate a plastic seat shell made from an injection mould but apart from this both have a common feature. The backrest is flexible and it bends at some point above the base of the seat shell. In the four financial years to 30 June 1996 8,096, 9,004, 19,001 and 63,888 Original Program chairs were sold in Singapore. In the next year 40,638 were sold and in the eight months to 28 February 1998 20,622 were sold. Sebel says that the decline in sales is the effect of the competition from the Dover chairs which are sold at a substantially lower price. 4 In this action commenced by writ issued in October 1996 Sebel claims an injunction and other reliefs for infringement of its exclusive right in the design of the Wide Program chair and infringement of its copyright in the drawings of the seat shell of the Original Program chair and of the mould for it. A claim for passing off was withdrawn at the commencement of the trial. 5 Tiong Hin says that the Dover chair is substantially different from the Wide Program chair and denies any infringement of Sebel’s right in the UK registered design. It also says that the registration is and has at all material times been invalid and counterclaims a declaration to that effect and an order that the exclusive privileges and rights in the registered design have not been acquired in or extended to Singapore. Tiong Hin denies any infringement of Sebel’s copyright in the drawings of the Original Program chair or of its mould. 6 At the conclusion of the trial I dismissed both the claim and the counterclaim. In delivering judgment I intimated that I would give my grounds in writing. These are my written grounds of judgment. UK Registered Design Claim 7 Section 2 of the United Kingdom Designs (Protection) Act (Cap 339) (“Singapore Act”) provides: Subject to the provisions of this Act, the registered proprietor of any design registered in the United Kingdom under the Registered Designs Act 1949 or any Act amending or substituted for that Act … shall enjoy in Singapore the like privileges and rights as though the certificate of registration in the United Kingdom had been issued with an extension to Singapore. Subsections (1) and (2) of s 7 of the Registered Designs Act 1949 (“UK Act”) provide: (1) 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. Section 1(1) of the UK Act provides: In this Act ‘design’ means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include — (a) a method or principle of construction, 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 (ii) are dependent upon the appearance of another article of which the article is intended by the author of the 8 In Amp Incorporated v Utilux Pty Ltd 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. A key was suggested. Its function is to turn a particular lock, and only one shape of key will do that. But that is not quite true. In most cases at least a skeleton key of a different shape will also turn the lock. In the end no actual case was found where only one precise shape would do. At p 110 he said: If the shape is not there to appeal to the eye but solely to make the article work then this provision excludes it from the statutory protection. Lord Donovan agreed with him. 9 Lord Morris of Borth-y-Gest said at p 114: On behalf of Amp it was contended that the words of exclusion in the subsection only apply 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. This would mean that if a designer, though only considering functional requirements, has a choice to the extent that he could make the article in different shapes then he could (provided that the other provisions of the subsection were satisfied) register a separate design in respect of each different shape. On this view, which was accepted by the Court of Appeal, Amp’s design was not excluded from the definition because the function which Amp’s terminal has to perform does not require that it must be in the shape evolved by Amp and in no other shape. I am unable to agree with this view. With respect I am also unable to agree with that view. The exclusion provision applies if the shape is dictated solely by the function. It does not say that the article has to be of that shape and of no other in order to perform the function. 10 Viscount Dilhorne said at p 118: It matters not, in my opinion, if a terminal of a different shape could perform the same functions. The shape and configuration of this terminal resulted from Mr Collier’s efforts to provide one which met the requirements and so were dictated solely by its function. Lord Pearson said at p 124: Thus all the features of the terminal’s shape are ‘dictated by’ in the sense of being attributable to or caused or prompted by the terminal’s function of forming an electric connection between the two electric conductors, the tab and the wire. Therefore the respondents’ design fails to comply with the negative statutory requirement mentioned above. 11 In British Leyland Motor Corp v Armstrong Patents Co Ltd … it could not be an appropriate exercise of the power to depart from earlier decisions of the House to reject the construction of the Act of 1949 adopted in the Amp case on a point which is at most only of peripheral relevance to the issue now to be decided. Whatever anomalies in the law may arise from the Amp decision, we must, it seems to me, accept them and attribute to them such importance as they merit. Amp has remained undisturbed and I think it authoritatively and with respect correctly states the law on the UK Act of 1949. 12 I was referred to Morris and Quest, Design: The Modern Law & Practice (First Edition, 1987) which has this statement at p 30: Any features of a design which are shown by evidence to have been provided for the purpose of performing a function have to be ignored when considering registrability, unless any such feature also has a visual appeal which has nothing to do with its function. I think this is a fair summary of the speeches in Amp on the exclusion provision in the definition. I think that features of shape and configuration “attributable to or caused or prompted by” the function which the article has to perform are excluded notwithstanding that an article of a different shape or configuration can also perform the same function. See also Sommer Allibert (UK) Ltd v Flair Plastics Ltd 13 I come now to the chairs. Both the Wide Program chair and the Dover chair (and indeed the Original Program chair as well) have a flexible backrest. Perhaps the expression “pivotable back” as used by Sebel more accurately describes this kind of backrest. The upper part of the backrest pivots about a horizontal axis located above the base of the seat shell. Mr Payne the research and development manager of Sebel said in his second affidavit: … the seat was swept upwardly at the rear and extended into the lower backrest. Between the lower backrest and the upper backrest was a central opening of substantial horizontal extent which defined two backrest supports at the outer edges of the backrest, a moulded plastic hinge arrangement was incorporated into each backrest support which enabled the upper backrest to pivot about a horizontal axis located at the level of the opening in the backrest. The hinge action was achieved because the plastics material from which the chair was moulded (polypropylene) had a flexible nature yet was relatively rigid.’ Figure 1 shows the front view of the Wide Program chair. Tiong Hin’s Dover chair is shown in figure 2. The Original Program chair is shown in figure 3. 14 I have seen the Wide Program chair and I have seen it tested. The upper backrest does pivot about a horizontal axis at the level of the opening between the two supports. This has been achieved by a central opening which defines two backrest supports at the outer edges of the backrest. The method or principle of construction has been dictated solely by the function which the backrest of the chair has to perform. The features of shape and configuration incorporating a central opening in the backrest to define two supports at the outer edges of the backrest are attributable to or caused or prompted by the chair’s function of having a pivotable backrest and such features have to be excluded. 15 The design of the Wide Program chair is registered under the UK Act. The statement of novelty says that the novelty of the design lies in the shape and configuration of the chair shown in the representation of the design. The features of shape and configuration incorporating a central opening in the backrest to define two supports at the outer edges of the backrest are excluded by definition and the design that is registered extends only to the features of shape and configuration which in the finished article namely the Wide Program chair appeal to and are judged solely by the eye. I would not wish to be understood to say that a feature that is excluded cannot be so arranged with other features whether excluded or not so that the whole may be a feature of configuration that is not excluded. The central opening with the two supports so created is an excluded feature but the “muscles” on the supports in combination with the line of the opening not having been dictated by the function the backrest is to perform appeal to and are judged solely by the eye and the resulting configuration is a design within the definition. See also Interlego AG v Tyco Industries Inc 16 The exclusive right conferred on the proprietor of a registered design resides in “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”. It is not Sebel’s case that the UK registered design has been applied to the Dover chair. Sebel’s complaint is that the design applied to the Dover chair is not substantially different from the registered design. The design has to appeal to the eye. It has to be judged solely by the eye and the eye would be the eye of the customer. See Amp at p 108 per Lord Reid. 17 In Sommer Allibert the contest was between a Madrigal chair and a Sonata chair. Both were plastic moulded chairs. The backrest and seat of both chairs possessed shallow grooves. In the Madrigal chair the grooves on the backrest were vertical and in the seat they were front-to-back. In the Sonata chair the grooves on the backrest were horizontal and in the seat they were side-to-side. The design of the Madrigal chair was registered and the statement of novelty claimed novelty in the features of shape and configuration. There was an earlier registered design in respect of a Dangari chair and it was alleged that the design of the Madrigal chair differed from that of the Dangari chair only in immaterial details or in features which were variants commonly used in the trade. 18 Slade LJ said at p 623: … a factor which we have to take into account in assessing the scope of the plaintiff’s registered design is the background of the relevant prior art in existence at its priority date. The test for “substantial difference” in cases of alleged infringement is in many respects similar to what would be the test for “substantial novelty” of the alleged infringement compared with the registered design. He cited the following passage from the judgment of Russell LJ in Benchairs Ltd v Chair Centre Ltd 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: and apparently, though we do not think it affects our present decision, viewed as though through the eyes of a consumer or customer: see Amp Incorporated v Utilux 19 I have looked at the Wide Program chair and the Dover chair. I have looked at them together and I have looked at them separately. One obvious similarity is that both chairs have a central opening in the backrest to create two supports at the outer edges of the backrest. I must ignore these common features. There are other similarities but they are what may be expected to be present between plastic moulded side chairs. In both chairs the seat sweeps upward at the back to form the backrest. They are not design features but functional features. I can also see a number of differences between the two chairs. 20 I begin with the front view. The “shoulders” of the backrest are different. They are more rounded in the Wide Program chair. They complement the smooth upwardly curved line of the opening in the backrest and together they produce a softness that takes away some of the harshness in the appearance of a plastic moulded chair. The “muscles” on the supports give an appearance of strength and extend the line of the opening to the base of the “shoulders”. In the Dover chair the “shoulders” are almost square and they match the sharply right angled line of the opening in the backrest. The supports are much longer and there are horizontal lines over them. The front edge of the seat in the Wide Program chair folds over more than that in the Dover chair. In the Wide Program chair the front edge sweeps back at the side to house sockets for the legs. It may not be apparent in figure 1 but the front corners of the seat are more rounded as I have seen. The Dover chair incorporates a platform on the four legs and the seat shell is secured to the platform. There are no sockets for the legs. The seat ends where the top of the legs begin and the front corners of the seat are less rounded. 21 I move now to the side view shown in figures 4 and 5. I have referred to the different treatment of the legs. In the Wide Program chair the appearance is that of the legs being fitted into sockets housed in the seat shell as in fact they are. In the Dover chair it is immediately apparent that the seat shell is fitted onto an assembly of legs. Perhaps what stands out most in the side view is that the Wide Program chair has a forward appearance. This is achieved by the rear legs inclining more markedly forward and the front legs less backward than in the case of the Dover chair. The seat shell is set further back so that the front edge is closer to the tops of the front legs and the backrest is much further back behind the tops of the rear legs. The lower part of the backrest is more backward than that in the Dover chair. 22 I do not think it is necessary to consider the difference in the inverted plan (underside) view. Figures 10 and 11 I think speak for themselves. The seat has to be strengthened and this requirement has been met by an arrangement of ribs. This is a functional feature and I would exclude it but even then the resulting pattern is different one from the other. Apart from this what can be clearly seen is again the difference in the treatment of legs that I have referred to. In addition the socket for the front leg is closer to that for the rear leg than the distance between the front leg and the rear leg where they are joined in the Dover chair. 23 I have considered the designs as applied to the two chairs as a whole. I have judged them by the eye and that will have to be my eye but I think that the eye of the customer or potential customer would not judge them any differently. I have quite unhesitatingly come to the conclusion that the design applied to Tiong Hin’s Dover chair is substantially different from the UK registered design. In my judgment Sebel’s exclusive right in the UK registered design of the Wide Program chair has not been infringed by making or selling the Dover chair or anything to do with it. 24 Counsel for Tiong Hin has invited me to apply two other tests for infringement. In Valor Heating Co Ltd v Main Gas Appliances Ltd … in the past in considering registered designs this court has taken the view that you must consider infringement not merely upon the basis of a side by side comparison, but also upon the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in a position of deciding whether some other article is the one you originally saw. He went on to say immediately following that: I think myself in the end that these are really the factors that one has got to bear in mind when one is considering the question as to whether or not there is a substantial difference. He came to the conclusion that the designs were substantially different and I think he did that on the basis of what was really a side by side comparison. 25 I think it is right that in considering whether there is or is not a substantial difference I should bear in mind the concept of what is commonly and quite appropriately called imperfect recollection. At the same time I should also bear in mind that a customer’s recollection may be related to or influenced by functional features which are excluded in design copyright. In the case before me I do not think I can say any more. There is no evidence that any customer or potential customer had seen a Wide Program chair and having gone away and seen a Dover chair had found himself in a position to decide if the Dover chair was the Wide Program chair he had originally seen. It is impossible. No Wide Program chair has been commercially made but I have had the advantage of having seen the prototype of the Wide Program chair in the course of the trial. I have taken account of these matters and I am satisfied that my conclusion as to the design applied to the Dover chair being substantially different from Sebel’s UK registered design remains unaffected. 26 In Dunlop Rubber Co Ld v Golf Ball Developments Ltd (1931) 48 RPC 268 the contest was between the plaintiff’s registered design for a golf ball and the design applied to the defendant’s golf ball. The statement of novelty said that novelty lay in “the division of the surface by quadrangular figures into six equal areas, and the division of those areas by a lattice pattern forming a four-pointed star in the middle of each area”. Farwell J said at p 281: Now, in a case where the registered Design is made up of a pattern which has no one striking feature in it, but it appeals to the eye as a whole, it may very well be that another design may be an imitation of it which makes the same appeal to the eye, notwithstanding that there are many differences in the details. It may well be that that is so; but I think conversely it is true to say that, if a design has in it a striking feature which catches and holds the eye, and which is the one thing that strikes the eye when one looks at the design, a design which otherwise may be like a registered design but which eliminates the striking feature or alters it so that it is not recognisable, in such a case it seems to me it is impossible to say that one is an imitation of the other. The striking feature in the registered design was the four-pointed star. 27 In Sommer Allibert Slade LJ cited this passage from the judgment of Farwell J and said at p 626: In the same way, to our eyes and in our judgment, the design of the back and lumbar gap of the Madrigal chair are the principal differences which distinguish that chair from the Sonata chair (and indeed from the various specimens of the prior art which we have seen). The marked differences between these particular features struck us at once and have continued to impress us throughout the case. Features in the backrest of the Madrigal chair were found to be striking. 28 I have referred to the differences between the Wide Program chair and the Dover chair. They are substantial. I have seen the chairs throughout the hearing and these differences have struck my eye and left an impression on me. I am not sure that in such a case it would be necessary or useful to apply what is commonly referred to as the “striking feature” test but there are three particularly striking features. The first is the overall rounded appearance of the Wide Program chair created by the line of the opening in the backrest, the “muscles” on the two supports, the rounded “shoulders” of the backrest and the rounded front corners of the seat. The second is the forward appearance of the chair created by the arrangement of the legs. The third is the fold-over of the front edge of the seat which sweeps back at the sides to house sockets for the legs. I think that these are striking features of the UK registered design which distinguish it from the design of the Dover chair and in my judgment Sebel’s exclusive right in the registered design has not been infringed. Counterclaim 29 I think it is convenient to consider the counterclaim now. Tiong Hin says that on 23 May 1994 the date of registration of the UK registered design it was not new. Section 1(2) of the UK Act provides: 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. Section 1(4) provides: A design shall not be regarded as new for the purposes of this Act if it is the same as a design — … (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. Section 11(2) provides: At any time after a design has been registered any person interested may apply to the registrar for the cancellation of the registration of the design on the ground that the design was not, at the date of the registration thereof, new …, or on any other ground on which the registrar could have refused to register the design; and the registrar may make such order on the application as he thinks fit. 30 Section 4 of the Singapore Act provides: The High Court shall have power upon the application of any person who alleges that his interests have been prejudicially affected to declare that exclusive privileges and rights in a design have not been acquired in Singapore under the provisions of this Act upon any of the grounds upon which the United Kingdom registration might be cancelled under the law for the time being in force in the United Kingdom. 31 Tiong Hin’s case is that the Original Program chair has been sold in Singapore since 1990. The evidence is that it has been sold in Singapore since 1987 but nothing turns on that. If the UK registered design is the same as the design applied to the Original Program chair or if it differs only in immaterial details or in features which are variants commonly used in the trade then at the date of registration of the UK registered design and for some years before that the design was not new. 32 In Ang Lay See v Solite Impex Pte Ltd In the present appeal the sole issue before us was whether the lack of novelty of a design in Singapore, as opposed to the lack of novelty of the same design in the UK, would be sufficient ground for the High Court to declare under s 4 of the local Act that exclusive privileges and rights in the registered design have not been acquired in Singapore. On this issue, s 4 of the local Act is ambiguous. While it may be suspect whether the legislature could have intended or possessed the purpose to include the lack of local novelty as a ground for cancellation, Parliament could not possibly have intended the registration and subsequent protection in Singapore, through registration in the UK, of designs commonplace in Singapore. Such a result would strike at the core object of design legislation and introduce undesirable counter-mischiefs. The grounds, therefore, upon which the High Court’s powers pursuant to s 4 of the local Act are to be exercised must be read to include the local equivalents of the grounds applicable to the cancellation of registrations in the UK. The High Court’s powers under s 4 of the Singapore Act may be exercised upon a ground which is the local equivalent of a ground upon which UK registration might be cancelled under the UK Act. UK registration might be cancelled on the ground that the design was not, at the date of registration, new (s 11(2)). The design was not new if it had been published in the United Kingdom (s 1(4)). I think clearly the local equivalent of this ground for cancellation is that the design was not, at the date of registration, new and it was not new if it had been published in Singapore. 33 I allowed an amendment to the particulars of objections to the validity of Sebel’s UK registered design at the commencement of the trial and Mr Payne gave this evidence in examination in chief: Q: Difference P-2 and chair depicted at AB-232? [Note: P-2 is the Original Program chair and the chair depicted at AB-232 is the chair of which the Wide Program chair is the prototype.] A: 1 Edge profile. Perimeter of backrest and perimeter of seat. In AB-232. For appearance. 2 ‘Muscle’ of either side of chair between seat and backrest. In AB-232. To give smooth transition Q: ‘Muscle’? A: This part rises above profile. Looks stronger. Q: Other differences? A: 3 ‘Smile’. [Note: The ‘smile’ refers to the opening in the backrest which is not unlike the parting of the lips when a person smiles.] 4 Shoulders and front of seat rounded. 5 30 mm wider. 6 Rib detail. AB-235. Underside of seat [of the same chair]. The differences are quite apparent. See figures 1, 3, 10 and 12. 34 Counsel for Tiong Hin submitted that because the statement of novelty claimed that the novelty of the design lay in the shape and configuration of the chair as shown in the representation at AB-232 and AB-235 I should ignore the differences in the edge profile, the “muscles” and the “smile” because they are finishes and are not covered by the statement of novelty. The argument is that these features are neither “shape” nor “configuration”. 35 I am unable to agree. “Configuration” means an arrangement of the parts or elements in the design and in the UK Act “design” means “features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye”. See s 1(1). All the features associated with the edge profile, the “muscles” and the “smile” are parts or elements in the design applied to the Wide Program chair and they are features of shape and configuration and are covered by the statement of novelty. 36 As to the rounder and softer appearance and the chair being wider counsel for Tiong Hin relied on Mr Hyde’s evidence that the Wide Program chair and the Original Program chair “have the same basic appearance”. All I need to say is that the Wide Program chair is rounder and softer in appearance as can be seen and it is seen to be wider and is in fact wider by 30mm. As to the ribs (on the underside) they are functional features but it can be seen that they are also different. 37 Tiong Hin has not made good its case that the UK registered design was not new at the date of registration. The UK registered design had not at that date been published in Singapore. It differs substantially from the design applied to the Original Program chair. No other ground upon which the UK registration might be cancelled has been alleged and in my judgment Tiong Hin is not entitled to a declaration that it is invalid or an order that exclusive privileges and rights in the UK registered design have not been acquired in or extended to Singapore. Copyright Drawings of seat shell 38 Mr Payne said in his first affidavit: I am the person who drew the drawings … being sheets 1 and 2 of two sheets of drawings of Part No 7406 … I have seen the [Original Program ] chair and say it is a faithful reproduction of my drawings … The legend on sheet 1 included the statement “Drawn KP 26-9-84”. Mr Payne said “KP” were his initials. The Original Program chairs were first sold in Australia in mid-1986. I think Mr Payne made the drawings in September 1984 and I find accordingly. He is an Australian citizen and has been employed by Sebel since 1981. At the time the drawings were made he was in charge of the drawing office within the research and development department. These drawings are of the seat shell of the Original Program chair. 39 Section 27 of the Copyright Act provides: (1) Subject to the provisions of this Act, copyright shall subsist in an original … artistic work that is unpublished and (a) was a qualified person at the time when the work was made; (2) Subject to the provisions of this Act, where an original … artistic work has been published — (a) copyright shall subsist in the work; … if, but only if — (c) the first publication of the work took place in Singapore; (d) the author of the work was a qualified person at the time when the work was first published; … (4) In this section, “qualified person” means a citizen of Singapore or a person resident in Singapore. “Artistic work” means a drawing and ‘drawing’ includes a plan. See s 7. 40 It is not disputed that the two sheets of drawings of Part No 7406 are artistic works and that the provisions of the Copyright Act apply to Australia and to Australian citizens. No evidence has been adduced as to the works being anything other than original and unpublished when they were made or as to the works not having been first published in Australia. Mr Payne the author of the drawings was in charge of the drawing office within the research and development department of Sebel and I find that the drawings were made by him in pursuance of the terms of his employment. In my judgment copyright subsists in the drawings of the seat shell of the Original Program chair and Sebel is entitled to the copyright. See s 30(6). 41 Section 15(3) provides: For the purposes of this Act, an artistic work shall be deemed to have been reproduced — (a) in the case of a work in a two-dimensional form, — if a version of the work is produced in a 3-dimensional … and the version of the work so produced shall be deemed to be a reproduction of the work. Section 26(1) provides: For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right — … (b) in the case of an artistic work, to do all or any of the following acts: (i) to reproduce the work in a material form; … The copyright in an artistic work is infringed by doing in Singapore without the consent of the owner any act comprised in the copyright. See s 31(1). 42 Sebel’s case is that Tiong Hin has without its consent reproduced the drawings of the seat shell of the Original Program chair in a material form by producing a version of the drawings in a three-dimensional form in the seat shell of the Dover chair. The submission is that Tiong Hin had access to Sebel’s drawings and that an inference can and ought to be drawn that the drawings had been copied. 43 There is no evidence that Tiong Hin had access to the drawings or that anyone of its officers or anyone it had any dealings with even knew that the drawings or copies of them existed. Counsel referred to LB (Plastics) Ltd v Swish Products Ltd There was, of course, no direct evidence from any witness that he had seen the defendants’ employees copying the plaintiffs’ drawings directly or indirectly; but evidence such as that is hardly to be expected, and indeed can rarely have been heard of in a case of infringement of copyright. The inference drawn by the learned judge was drawn from what I regard as overwhelming circumstantial evidence from which, in my view, no other inference could properly have been drawn. The evidence that is before me is that Mr Goh the managing director of Tiong Hin had seen a chair like the Original Program chair in 1992 and 1993 in Singapore and had not known any other chair then which had a “flexi-back”, ie a flexible or pivotable backrest. 44 In Swish the plaintiff (LB (Plastics)) designed and manufactured a plastic knock-down drawer system known as the Sheerglide. Much of its business was done with furniture makers who purchased Sheerglide drawers in component form for the purpose of fitting into carcases of their own manufacture. One such customer was Grovewood Products Ltd a company linked to the defendant by common share ownership. The court found that from the start the defendant had specimens of the Sheerglide drawers and at a later stage copies of quite a number of the plaintiff’s drawings and the prime object of the defendant was to produce a very similar type of drawer. There was even a memorandum from the development manager of the defendant to its technical director under the heading “Patents and Registered Designs on KD Drawers and Fittings with Particular Reference to LB (Plastics)” which contained this statement “I also raised once again … the possibility of minor changes to the LB design which could possibly get around any patents and registered designs which they or any others may have on [the LB principle]”. 45 There was as observed by Lord Salmon “overwhelming circumstantial evidence”. There was much more circumstantial evidence than I have pointed out above. See the judgment of Whitford J at first instance from p 574 for a fuller statement and analysis of the evidence. The evidence before me is not anything approaching that but counsel for Sebel invited me to consider what he submitted was the circumstantial evidence from which I should infer copying. 46 It was submitted that Mr Goh had the opportunity to copy. As I have observed earlier Mr Goh had seen a chair like the Original Program chair and had not known any other chair that had a pivotable backrest. I think what he had seen must have been the Original Program chair. That was in Singapore in 1992 and 1993. 47 Mr Goh said in his first affidavit that since 1991 he had noticed the potential for “flexi-back” chairs as he calls them. He said he came to know that in Italy they were making such chairs as far back as 1988. In June 1991 Tiong Hin received an inquiry from its Hong Kong office about an invitation to tender for the supply of 180 “moulded plastic shell chairs with built-in tilting on backrest”. The accompanying specification had an illustration showing a chair with a central opening in the backrest to create two supports at the outer edges. In late November 1993 he was in China and Taiwan. In China he saw “similar flexi-back chairs” on display at a trade fair and in Taiwan he came across such chairs which were being marketed. The relevant pages of the catalogues for Italy, China and Taiwan are agreed documents and they all show chairs with a central opening in the backrest which define two supports at the outer edges of the backrest. I should mention that Sebel did have dealings with the publisher of the Taiwan catalogue but terminated the relationship because as Mr Hyde said the Taiwan party had fabricated an imitation of the Original Program chair but action could not be taken as Sebel’s copyright was not recognised in Taiwan. 48 I return to Mr Goh’s evidence. He said in his affidavit that “Tiong Hin then took the decision to adopt the concept of chairs with a built-in mechanism for tilting and to produce their own design range of plastic flexi-back chairs”. He visited a toolmaker in Taiwan who had designed and made moulds for Tiong Hin the past ten years. Under cross-examination he said he brought with him five or six seat shells of Tiong Hin’s Daglo 812 plastic moulded chair. One such chair was produced as exh D-3. The Daglo 812 seat shell like that of the Dover chair is moulded as one unit with the seat swept upward to form the backrest but there is no opening in the backrest of the Daglo 812. 49 Under cross-examination Mr Goh said: Q: Why brought D-3 seat shell? A: Wanted [Mr Lee of Wen Chin Mould Making Industries] to modify D-3 to make flexi-back seat shell. Q: Easier to bring flexi-back chair to show Mr Lee what you wanted? A: Not necessary. I wanted to modify our own product. Q: Easier? To bring flexi-back chair to show him? A: Yes. (Witness requests question to be repeated.) Yes, but I could not get hold of one. Q: If able to get hold of one you would have got it? A: Yes. I might but I would not use that as sample. I would still modify our own product. Q: Why not go out and buy one? Original Program chair? A: No. Could not get one from the market. He also said: Q: Seen design for this shape elsewhere? March 1994? A: Saw pictures of chairs of such shape in Taiwan. From some magazines. Also chairs of this shape in exhibition in Q: Which chairs in Singapore? A: Like P-2. [Note: Exhibit P-2 is an Original Program chair.] Q: You could remember this chair when in Taiwan? A: Yes. Q: In fact you discussed this chair with Mr Lee in Taiwan? A: No. I drew sketch and showed him. Q: What you sketched? A: Sketch of shape of chairs I saw of similar shape in Taiwan, China and also Singapore. Also told him chairs of Q: You actually drew sketch in Taiwan. Similar to shape of P-2? A: Quite close. Q: Any difference chairs you saw in magazines in Taiwan and P-2? A: Similar. No doubt it would have been easier to bring a “flexi-back” chair to show the toolmaker as Mr Ravindran submitted but that as will be seen would not be either necessary or practical. 50 Mr Goh said later in cross-examination that he (and the toolmaker Mr Lee) carried out experiments which involved cutting a hole in the backrest of the seat shell of the Daglo 812. He said: [Witness demonstrates.] Hole cut in backrest. Experimented by sitting and rocking. Adopted design in D-4. [Note: Exhibit D-4 is a Daglo 812 chair with an opening cut in the backrest produced as an illustration.] Decided to adopt this design because curve would support my back when I sit down. Upper lip of ‘smile’ supports my back when I lean back. I found backrest angled backwards too much so that when I leaned back and it tilted it was not very comfortable. I decided to straighten backrest. Also I found height too low. I decided to increase height as well. Backrest too curved. I also decided to flatten it with only slight curve. With new design whole backrest will support my back. I added two screws to secure seat to legs on underside to make it more stable. As I added two screws I added three lines of ribs. When I experimented I found two bending sides not strong enough. I decided to add two supports behind backrest to strengthen those parts. Initially only two blocks were added without holes. Later through experiments I found supports without holes flexibility restricted. Decided to have holes in supports. Even with holes I was not satisfied with flexibility. I decided to add cut lines across supports. I also decided to add lines to supports in front of backrest. Purpose of lines to increase strength. Also to camouflage loss of colour arising out of tilting over long period of time. Colour might not fade but this is done only as preventive measure in case it happens. Lines added will give someone feeling whole backrest flexible. Return of top edge of backrest made longer for easier handling. From D-4 arrived at design in D-1. Width of backrest also increased. Mr Goh was not asked and he did not say why he wanted to modify Tiong Hin’s existing product but it is plain to see the obvious advantages since strength and flexibility of the backrest and the supports were important factors to be considered and he would know the strength and flexibility of the plastic used in the Daglo 812. 51 All that Mr Goh needed to show the toolmaker was a seat shell with a backrest which had a central opening to create two supports at the outer edges. It might have been easier if he had with him a chair like the Original Program chair to show the toolmaker but it is not necessary and there can be little purpose in doing that if he was going to cut an opening in the backrest to experiment with. The opening would have had to be cut differently to achieve the support for the back from the “upper lip” of the “smile”. Mr Goh drew a sketch to show Mr Lee. A seat shell having a backrest with an opening at some point above the base of the seat shell is not difficult to sketch. The shape was similar or quite close to that of the backrest of the Original Program chair. It was similar to that of chairs Mr Goh had seen in Taiwan, China and Singapore. He also told Mr Lee about chairs of this shape in Italy. Obviously by “shape” he meant chairs with an opening in the backrest to allow the backrest to pivot. He had seen the potential for such chairs. That potential was what he set out to exploit. He wanted to make a “flexi-back” chair. 52 Mr Ravindran also referred to what he said were “stark similarities”. I am unable to see such similarities. Both seat shells are moulded in one piece and both have a central opening in the backrest. The supports for the upper backrest have horizontal lines across the front. And there the similarities end. But if a customer or a user were to look at the two chairs it would not be these broad similarities which would strike him or appeal to his eye but rather the differences. 53 I think it is convenient to begin with Mr Payne’s evidence first as regards the differences. Under cross-examination he said: Q: D-1. P-2. Difference? A: Appearance. Shape of ‘smile’. D-1 has 9 stripes on each side in flex area. Flexing device different. Rear view Q: D-1. Has higher back? A: [Witness views both chairs together.] Yes. Q: D-1. P-2. P-2 wider? Front profile? A: Would say D-1 looks slightly wider. Q: Side. Left profile. Legs. Different? A: Said different. Q: Clearly seen D-1 sits on base of legs but in P-2 legs go into P-2? A: Agree. Q: Tilting mechanism of P-2 more conspicuous than in D-1? A: Would say D-1 more conspicuous. More lines. Q: Back profile. Difference that strikes you? A: Tilting area and leg arrangement. Q: Inverted plan view. Difference that strikes you? A: Rib configuration due to different leg configuration. Q: Another difference in P-2 slots for legs but not in D-1? A: Agree. Q: Holes for screws to secure seat to legs in D-1? A: Yes. Six holes. 54 The shape of the “smile” is completely different. I have described the opening in the Dover chair. In the Original Program chair it is much wider and is gently curved upwards at the sides. There are only five stripes on each of the supports. See figures 2 and 3. The flexing device is different. In the Original Program chair a plastic mould is fitted into the back of the support. This backing mould defines the horizontal axis about which the upper backrest pivots. In the Dover chair a plastic mould is also fitted onto the back of the support but this mould has a number of holes in it and horizontal lines or troughs across it resulting in the upper backrest responding differently. The moulds in the two chairs look as different as they are different. See figures 8 and 9. They are in the location which Mr Payne referred to as the tilting area. The arrangement of the legs is different. In view of these differences it is altogether not surprising that Mr Payne said that the appearance was different and that was the first thing he said when he was asked about the difference between the two chairs. 55 The back of the Dover chair is higher. Its top edge is about 15mm higher than that of the Original Program chair measured from the base of the seat shell. Mr Payne was absolutely right when he said that it was the Dover chair and not the Original Program chair that looked wider. The Dover chair is wider. It is 425mm at the base of the seat shell and the edges of the backrest taper in straight lines very nearly to the top edge at which point the backrest is 395mm wide. It is almost rectangular. The base of the backrest of the Original Program chair is slightly narrower at 400mm. The outer edges then taper in straight lines to about the top edge of the supports for the upper backrest at which point the backrest is 394mm wide. From that point up the edges of the backrest taper not in straight lines but in a gentle inward curve towards the top edge rounding off at the “shoulders”. At that point the backrest is only 356mm wide. 56 The legs are different. In the Original Program chair the legs fit into sockets moulded as part of the seat shell. I have referred to the arrangement of the legs when pointing out the difference between the Wide Program chair and the Dover chair. Like the Wide Program chair the Original Program chair has an equally forward appearance when viewed from the side. See figure 6. The difference is that the legs of the Original Program chair are centrally located while in the Wide Program chair they are more forward of the seat shell. 57 Mr Payne correctly pointed out in his second affidavit that the socket arrangement for the legs enabled the Original Program chairs to stack closer together than the Dover chairs. The consequence is that Dover chairs stack to a greater height than the same number of Original Program chairs. This represents a significant advantage of the Original Program chair over the Dover chair in terms of storage and shipment including transportation by road vehicles. 58 The Daglo 812 chair has the same arrangement for the legs as the Dover chair. The seat shell is secured to a platform on the four legs. Mr Goh did not deal with this matter in his affidavit and he was not cross-examined on it. If Tiong Hin copied the Original Program chair then it must have known about the socket arrangement for the legs but nevertheless it deliberately deprived itself of this advantage. Not incorporating the socket arrangement for the legs might be an error in copying as Mr Payne suggested in his affidavit but if the Dover chair was developed from the Daglo 812 as Mr Goh said by experimenting with it and without copying then he and those he worked with in Taiwan might not have appreciated the advantage and the potential saving in cost of manufacture. The same arrangement for the legs appeared to have been just carried over into the Dover chair. I shall refer to this again later. 59 Mr Ravindran submitted that there was motivation in Tiong Hin having a chair with a flexible backrest. I have referred to the evidence and it seems clear that from about 1991 Mr Goh saw a potential for such a chair and later Tiong Hin set out to exploit that potential. The Hong Kong inquiry was in 1991. A prototype of the Dover chair was available in April 1994. On 29 June 1994 Tiong Hin submitted a tender to supply chairs to Temasek Polytechnic. I agree that Tiong Hin was motivated by the potential that Mr Goh saw for a chair with a flexible backrest. 60 Mr Ravindran submitted that Tiong Hin’s account of the development of the Dover chair was incredible. He said that Sebel with a research and development team spent some 5,000 man-hours between 1982 and 1986 to design the Original Program chair but according to Mr Goh he took much less time and had less people working on it. That may well be so but there are no substantial similarities between the two chairs. They are different and they appear different and there is no occasion for Tiong Hin to have to explain how it came up with its own design. See Swish at p 621 per Lord Wilberforce and see also Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd 61 Mr Payne said in his second affidavit: Between 1982 and 1984 when the Original Program chairs were designed, the Research and Development [Department] consisted of eight persons. We had two industrial designers, one draughtsman, four model makers and one manager. The industrial designers are responsible to design the furniture which the plaintiffs intended to manufacture and sell. The draughtsman is responsible for preparing the technical drawings for the purposes of record as well as to enable toolmakers to make injection moulds to manufacture the intended furniture. The model makers have the responsibility to produce prototypes, prior to the toolmakers being commissioned. These prototypes are required for the purposes of testing the intended product to analyse its strengths and weaknesses. Furthermore, the prototypes produced by the model makers allow us to assess the aesthetic value of the final product. It did not take four years as counsel said. The design of the Original Program chair was registered in Australia with effect from March 1984. It would have taken about two years only. 62 By about 1982 there were chairs in the market with pivotable backrests. They were generally made of metal and employed a spring mechanism to allow the backrest to pivot. They employed different principles and came in different designs but ‘they all suffered from the common problem that they were expensive to manufacture’ as Mr Payne said in his second affidavit. He continued: The plaintiffs then identified that there was a possible market for a comparatively inexpensive chair, that had a pivotable backrest, that was made by injection moulding and was thus inexpensive, had a small labour component, was lightweight, easy to transport and store, and was durable. He then said: Commencing about 1982, our Research and Development Department then went about to achieve a design that could meet this perceived need for such a chair. The Research and Development Department decided to utilise a completely new design and manufactured various prototypes … This new prototype included various features including: (a) the seat and backrest were moulded as a single piece, (b) the seat was swept upwardly at the rear and extended into the lower backrest. Between the lower backrest and the upper backrest was a central opening of substantial horizontal extent which defined two backrest supports at the outer edges of the backrest, (c) a moulded plastic hinge arrangement was incorporated into each backrest support which enabled the upper backrest to pivot about a horizontal axis located at the level of the opening in the backrest. The hinge action was achieved because the plastics material from which the chair was moulded (polypropylene) had a flexible nature yet was relatively rigid, (d) the upper edge of the backrest was provided with a downwardly directed trough or channel which provided a hand grip which enabled a person standing behind an empty chair to easily move the chair, (e) the profile of the backrest and seat provided maximum support for the back of the sitter, irrespective of whether the sitter was leaning backwards and thereby pivoting the backrest, or sitting upright in which case the backrest would be in its rest position. In this way the static muscle effort required to maintain a constant position is minimised thereby reducing fatigue. The profile of the seat provided maximum support for the sitter’s buttocks and alleviated pressure on the sitter’s thighs by providing a sitting surface which is shaped to encourage a sitting position which promotes the natural curve of the lower spine and which imparts thigh support by eliminating pressure points, (f) the location and angle of the metal legs of the chair relative to the plastic shell allowed a goodly number of chairs to be stacked safely … 63 Sebel decided on a completely new design and manufactured various prototypes. That would have taken not only time to come up with such a design. It would have taken time to manufacture various prototypes. Tiong Hin had no such difficulty in its way. It was already making a plastic injection moulded seat shell for an inexpensive chair. The Daglo 812 chair had been made since 1981. It did not have to come up with a completely new design. It did not have to manufacture any prototypes for purpose of testing the product to analyse its strengths and weaknesses or for any purpose at all. It had the Daglo 812 seat shell to work with. 64 I will now address the features referred to in Mr Payne’s evidence. (a) The Daglo 812 seat shell is also moulded in one piece but as I have mentioned Tiong Hin has been making it since 1981. (b) Sebel made prototypes with an opening in the backrest to create two supports in the outer edges. To achieve the results mentioned in para (e) a large number of prototypes would have been made and tested. Questions before Sebel’s personnel would have been the position of the horizontal line about which the upper backrest is to pivot, the width and length of the supports and the design of the flexing device. Tiong Hin did not have to make prototypes before deciding on a design. All it had to do and what it did as its witnesses testified was to experiment with the seat shell of the Daglo 812 by the simple method of cutting an opening in the backrest. The advantage of working with a seat shell it had made was that it would know the strength and the flexibility of the material that went into the seat shell. I have already referred to Mr Goh’s evidence on the experiments he carried out. (c) I have referred to the difference in the flexing device. In the Dover seat shell the plastic mould was fitted primarily to strengthen the support as Mr Goh said. That according to him restricted the flexibility. The solution became the problem and holes and troughs were cut to solve the new problem. (d) The provision of a hand grip was for Sebel something new. In Tiong Hin’s case the Daglo 812 seat shell already had a hand grip. Mr Goh said that the return of the top edge of the backrest was made longer for easier handling. It only made a simple improvement to an existing feature. (e) The profile of the backrest and seat had to be determined by design and by making prototypes for testing in Sebel’s case. This must have taken much time. The significant feature of the profile is that the lower backrest is backward of the line of the upper backrest. This together with the pivotability of the upper backrest about a horizontal axis at some level in the opening distinguishes the Original Program chair from the Dover chair. The profile of the Dover seat shell shows a continuous line from the lower backrest to the upper backrest above the opening. It looks remarkably like that of exh D-4 the Daglo 812 seat shell with an opening cut in the backrest. It is not surprising that Mr Payne found the backrest of the Dover chair to be stiffer ‘and thus urges the sitter forwardly’. I would have thought that the lower edge of the upper ‘lip’ being below the horizontal axis about which the upper backrest is to pivot would rotate forward when the sitter leans back. (f) I have referred to the arrangement of the legs and the advantage of stacking a given number of chairs to a lesser height. 65 Mr Goh said he took two days to come up with a sketch of the design while he was in Taiwan in March 1994. It was not the drawing but only a sketch. He said that shortly after he returned to Singapore the toolmaker faxed the drawings of the seat shell to him. In mid-April 1994 Mr Lee visited Singapore and he brought with him a hand-made prototype chair based on the drawings. Mr Goh made some comments on the prototype and Mr Lee made sketches of the prototype with his comments written in it. The comments related to the finish, the height of the seat above the top edge of the leg assembly and the inclination of the leg assembly and did not affect the design of the seat shell in the drawings. 66 Mr Goh said that in July 1994 Tiong Hin was informed by the toolmaker that the moulds were ready for testing and late that month it received an off tool sample of the seat shell. On 3 August 1994 Tiong Hin faxed its comments on the sample to the toolmaker. The comments were statements of defects in the sample but did not affect the design of the seat shell. On 29 January 1995 the moulds were shipped to Singapore. The shipping documents were produced. Tiong Hin paid USD50,000 for the moulds. 67 I see no reason for coming to the conclusion that Tiong Hin’s account of the development of the Dover chair is incredible. Mr Goh’s evidence was substantially corroborated by Mr Lee. Mr Lee also explained how he made the mould for the seat shell. He took about 100 days to complete but he could have done it in 75 days. It took another 10 days or so although he could not be sure to make modifications. It was put to both Mr Goh and Mr Lee that they had copied the Original Program chair. Both denied copying. It seems to me that if Mr Goh had copied then he took nothing but instead he gave up three significant features: (a) close stacking and the saving in manufacturing cost by not adopting the leg arrangement; (b) pivoting about a horizontal axis by not adopting Sebel’s flexing device and instead fitting a plastic mould with holes and troughs cut horizontally across it and creating more than one horizontal axis so that the upper backrest tended to rotate rather than pivot; and (c) not having the upper ‘lip’ rotating forward when a sitter leans back by having the upper ‘lip’ and not positioning the lower backrest backward of the line of the upper backrest. No reason has been suggested for Tiong Hin not to have adopted these features if it did copy the Original Program chair but one reason suggests itself. The Dover chair was developed from the Daglo 812 chair by creating an opening in the backrest. 68 Mr Ravindran’s submission appears to be that Sebel’s copyrignt in its drawings has been infringed because the seat shell of the Original Program chair is moulded in one piece and the backrest has a central opening which defines two supports for the upper backrest at the outer edges of the backrest and the seat shell of the Dover chair also has an opening in the backrest which defines two supports for the upper backrest at the outer edges of the backrest even if the two chairs are quite different in the shape and the configuration of the opening and the supports and they look quite different. I was referred to AB-836 which is a drawing of the profile of the seat shell of the Original Program chair with the profile of the seat shell of the Dover chair superimposed on it. The profile is taken from the section through the centre of the chair. It was submitted that there were similarities. 69 I have examined AB-836. There are no similarities. There are marked differences and I will only mention the more significant ones: (a) the profile of the lower backrest is backward of the line of the upper backrest in the Original Program chair but in the Dover chair it is a continuous line from the lower backrest to the upper backrest; (b) the backrest of the Dover chair is much more upright as it is plain to see; (c) the supports are not in the same position; (d) the backrest of the Dover chair is higher; (e) the seat of the Original Program chair is more scooped and it extends forward more than the seat of the Dover chair; and (f) the leg arrangements are completely different and the sockets for the legs of the Original Program chair are clearly shown. 70 I have considered the submissions made to me and I have examined the chairs and the drawings. I have also considered the evidence of the witnesses. In my judgment the evidence before me does not point to copying and no inference of copying may be drawn. On the contrary I find that Tiong Hin developed the design of the Dover chair without having had access to Sebel’s drawings of the Original Program chair and without copying it. The Dover chair is not nor is its seat shell a version in three-dimensional form of the artistic work in the drawings. In my judgment Tiong Hin has not infringed Sebel’s copyright in the drawings. 71 There is one other matter which I ought to refer to. Section 69 of the Copyright Act provides: For the purposes of this Act — (a) the making of an object of any kind that is in 3 dimensions does not infringe the copyright in an artistic work that is in two dimensions; … if the object would not appear to persons who are not experts in relation to objects of that kind to be a reproduction of the artistic work. This provision is in pari materia with s 9(8) of the Copyright Act 1956 (of England). 72 In Dorling v Honnor Marine This in my opinion is a question of fact. As to it the learned judge held that each drawing of a part was an object within the sub-section and that it would appear to him as a non-expert that these parts when made were a reproduction of the corresponding plan, each drawing in the plan having I take it artistic copyright. That is enough to decide the question against the cross-appeal, and I can see no reason to disagree with the learned judge’s view. Dankwerts LJ said at p 171: The learned judge, who said that he knew nothing whatever about boats or plans of boats, appears to have considered that he was, therefore, a qualified non-expert for the purposes of s 9(8). The conclusion to which he came was ‘that some of the parts — sufficient together to consititute a substantial part of the whole boat — would have appeared to a non-expert, who did not know that they were in fact based on the plans, to be reproductions of the corresponding drawings on the plans, but that he would not have felt any strong conviction that the completed boat was a three-dimensional version of the plans. I am in a somewhat more difficult position than the learned judge because I am used to reading plans for the purpose of making models. But, applying my mind to the problem as best I can, I agree with the learned judge’s conclusion as regards the parts. There are difficulties with the notion of a non-expert but it seems clear that the defence raises a question of fact. 73 In Swish Lord Wilberforce said at p 622: The subsection introduces, in the context of reproduction in another dimension, a test which may be described as a test of lay recognition — one well known and applied in many different contexts in American law — for example in relation to dolls or toys made after comic strip characters, or in relation to musical reproductions. It inevitably gives rise to difficulties as to the nature of the evidence which may be received, and as to the degree of non-expertise to be attributed to the judge. The subsection applies by way, and only by way of defence, ie after the issue of copying has been decided, and on the assumption that it has been decided in favour of the plaintiff … In performing this task the judge must also be credited with some ability to interpret design drawings: the subsection does not say the contrary, and without it the comparison could not be made. But the comparison to be made is, as I understand it, a visual comparison. The (non-expert) judge should not repeat the process which, as judge with the assistance of expert and other witnesses, he has gone through in deciding whether there has been copying or not. Lord Salmon said at p 636: [The defence under s 9(8)] raises solely a question of fact. I express no opinion as to whether evidence should have been adduced. Normally it should be when questions of fact are in issue. However, if evidence is to be called, it conjures up rather a bizarre picture of witnesses being called on one side and the other who state that they have no experience or knowledge of the subject in question nor possibly of working drawings, and then go on to state whether it does or does not appear to them that the three-dimensional object was reproduced from the two-dimensional drawing. It would be well-nigh impossible to assess the value of such evidence. Lord Hailsham of St Marylebone said at p 630: I am as puzzled as other judges have been by the concept of the notional non-expert (although I am quite certain that the noun, if not the qualifying adjective could be applied to myself) and by the policy underlying the subsection which, I am told, is inspired by s 258 of the Gregory Report. I am by no means as convinced as some judges seem to have been that expert evidence as to what might appear to a non-expert would be admissible, or that a typical non-expert could be called, like a witness to an alleged innuendo in libel, to say what had or had not appeared to him. There are difficulties as to the admissibility of evidence and the assessment of such evidence when admitted and I do not see that expert evidence may be given as to what may appear to a non-expert. 74 I think that the defence under s 69 of the Act should be pleaded. It has not been in this case and I have not heard any submissions on it. I have also decided the issue of copying in Tiong Hin’s favour so that the defence under s 69 no longer arises but I have seen the Dover chair and I have seen Sebel’s drawings of the seat shell of the Original Program chair and I think I ought to express a view with reference to this defence. I begin by saying that I am sure that I am not an expert in relation to seat shells (of chairs) of the Dover chair seat shell kind but I doubt if that is relevant. The question is whether to persons who are such non-experts the seat shell of the Dover chair would not appear to be a reproduction of Sebel’s drawings. What I have to do is to place myself in that position (which presents no difficulty as I am such a non-expert). I have done that or done the best I can to do that and I am well satisfied that Tiong Hin’s product does not appear to be a reproduction of Sebel’s drawings. If the occasion had arisen I would have said that in my judgment the seat shell of the Dover chair would not appear to persons who are not experts in relation to seat shells of that kind to be a reproduction of Sebel’s drawings of the seat shell of the Original Program chair. Drawings of mould 75 I have not seen Tiong Hin’s mould for the seat shell of the Dover chair. It weighs several tons and obviously cannot be conveniently produced in court nor is it really necessary. Tiong Hin had no access to Sebel’s drawings of the mould. It had no access to Sebel’s mould. Sebel’s case appears to be that its mould is a reproduction of its drawings, that the seat shell of the Original Program chair is made from the mould, that Tiong Hin has copied Sebel’s seat shell to make its mould from which its seat shell has been made, and that Tiong Hin’s mould is accordingly a reproduction of Sebel’s drawings of its mould. I have heard no submission on the alleged infringement of copyright in the drawings of the mould but if Sebel’s case is what it appears to be then its claim fails if as I have found Tiong Hin has not copied the seat shell of the Original Program chair or its drawings. 76 In the result I dismissed Sebel’s claim and Tiong Hin’s counterclaim. I certified that the validity of the registration of the design of the Wide Program chair in the United Kingdom was contested in these proceedings. I should add that counsel for Tiong Hin agreed to such a certificate and I heard no submissions on this and have not considered the effect if any of this certificate under s 25 of the UK Act in its application to Singapore. Claim and counterclaim dismissed. Reported by Hui Choon Kuen
design to form an integral part.
between seat and backrest and to aid function of flexing.
of which the author —
form;
China. Also saw chairs this shape in Singapore.
this shape in Italy.
in particular. Arrangement of legs different.