(2012) 24 SAcLJ 1020-1058 (B Ong) Statutory Interpretation Singapore

1020
Singapore Academy of Law Journal
(2012) 24 SAcLJ
INTERPRETING INTELLECTUAL PROPERTY STATUTES

IN SINGAPORE
What are the Limits of Judicial Creativity?
Statutory interpretation lies at the core of the intellectual
property regime, where courts are tasked with the critical
function of making sense of, and giving effect to, the
Parliamentary intent behind various pieces of specialised
legislation. The words used in these statutory provisions
frame the legal principles underlying the patent, trade mark
and copyright systems, and how judges interpret these words
can make a huge difference to the availability and scope of
the exclusive rights created by each statute. While courts
often purport to adopt a purposive approach towards
statutory interpretation, keeping in line with their limited
constitutional function, there is a very fine line between, on
the one hand, legitimate acts of clarifying what the draftsman
has legislatively provided for and, on the other hand,
illegitimate acts of judicial lawmaking. In this article, three
recent examples from the Singapore courts concerned with
the three major intellectual property rights will be closely
examined to illustrate this tension.
Burton ONG
DPhil, BCL (Oxford), LLM (Harvard),
LLB (National University of Singapore);
Advocate and Solicitor (Singapore),
Attorney and Counsellor-at-Law (New York State);
Associate Professor, Faculty of Law, National University of Singapore.
I.
Introduction
1
Statutory interpretation plays a fundamental role in the law of
intellectual property (IP) because the legislative framework for each
species of IP articulates the essential parameters for each legal
1
construct. Each piece of legislation defines the subject matter that
1
In Singapore, these statutes include the Copyright Act (Cap 63, 2006 Rev Ed),
Patents Act (Cap 221, 2005 Rev Ed), Trade Marks Act (Cap 332, 2005 Rev Ed),
Geographical Indications Act (Cap 117B, 1999 Rev Ed), Registered Designs Act
(Cap 266, 2005 Rev Ed), Layout-Designs of Integrated Circuits Act (Cap 159A,
2000 Rev Ed) and the Plant Varieties Protection Act (Cap 232A, 2006 Rev Ed).
(contd on the next page)
2012 contributor(s) and Singapore Academy of Law.

No part of this document may be reproduced without permission from the copyright holders.
(2012) 24 SAcLJ
Interpreting Intellectual Property Statutes

in Singapore
1021
qualifies for legal protection as well as the character and scope of the
exclusive rights conferred upon those who are entitled to assert such
rights. Judges hearing any IP dispute are thus, in essence, tasked with
interpreting the language used in the relevant IP statute to determine
what these written laws provide for and to decide how they should be
applied to the case at hand. Given that the role of the courts in cases
involving IP legislation is constitutionally limited to implementing the
Parliamentary intention underlying the relevant statute, one might be
tempted to regard this process of statutory interpretation as a relatively
uncontroversial matter. However, the practical experience of the
Singapore courts demonstrates otherwise.
2
When courts are engaged in statutory interpretation, the
cardinal principle behind the entire exercise is that they should adopt a
purposive approach that gives effect to the Parliamentary intention
2
behind the legislation. The language found in any Act of Parliament has
to be understood in light of the objectives that lawmakers had when the
statute was enacted. In some circumstances, this may lead a court to
depart from the literal meaning of the words used in a statutory
provision, in favour of an interpretation that is regarded as more
consistent with the policy considerations, or purpose, underlying the
legislative framework. Such creativity may, however, be a cause for
concern because there is a fine line between conventional modes of
statutory interpretation, where the words of the statute are simply given
a meaning that Parliament intended and situations that are tantamount
3
to a rewriting of the statute in question. Where IP statutes are
concerned, the gravity of this issue is magnified by the fact that personal
property rights in intangibles are at stake, with a corresponding
Other non-statutory areas of law traditionally associated with the law of intellectual
property include the law of passing off (a common law tort) and the law of
confidential information and trade secrets (an action based in equity).
See s 9A of the Interpretation Act (Cap 1, 2002 Rev Ed), as analysed extensively in
Public Prosecutor v Low Kok Heng [2007] 4 SLR(R) 183 at [41], where V K Rajah JA
of the High Court declared that s 9A(1) of the Interpretation Act mandated a
construction of the relevant statutory language that the legislative purpose in
preference over an interpretation that does not promote such a purpose or object,
such that any common law interpretative approach (including the plain meaning
rule and the strict construction rule) must yield to the purposive approach. For an
insightful critique of this case and the experience of the Singapore courts with the
law on statutory interpretation in general, see Goh Yihan, Statutory Interpretation
in Singapore: 15 Years on from Legislative Reform (2009) 21 SAcLJ 97.
See Aharon Barak, Purposive Interpretation in the Law (Princeton University Press,
2005) at p 18, discussed in Goh Yihan, Statutory Interpretation in Singapore:
15 Years on from Legislative Reform (2009) 21 SAcLJ 97 at para 29, where the
process of judicial interpretation is explained as one confined to giving legal text a
meaning its language can bear, whether explicitly or implicitly, and does not
involve an express rewriting of the statutory language.

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(2012) 24 SAcLJ
premium placed on legal certainty that is eroded to some extent when

the courts choose to venture beyond the words used in the legislation.
3
Using selected examples from the three major IP regimes
patents, trade marks and copyright this article seeks to explore how,
and why, the Singapore courts have adopted less-than-straightfoward
interpretative approaches when trying to decipher the meaning of
statutory language used in these pieces of legislation. To the extent that
such instances of judicial creativity have effectively adopted
interpretations of the relevant legislation that differ significantly from
the plain and obvious meaning of the words used in the statute, the
discussion below will seek to examine the legitimacy and desirability of
these developments to Singapores IP jurisprudence.
II.
Purposive interpretation of statutory provisions in Singapore
4
Before examining the cases concerned with the three major IP
statutes, it is useful to summarise the law on statutory interpretation in
Singapore. Before 1993, various interpretative approaches devised by the
common law were usually employed by the Singapore courts, including
the plain meaning or literal approach (which focused on the ordinary
meaning of actual words used in a statute) and the purposive approach
(which focused on giving the words in the statute a meaning that was
4
consonant with the perceived purpose of the statute). With the
5
passing of the Interpretation (Amendment) Act 1993, the
Interpretation Act was amended by Parliament to provide explicit
instructions on how statutory language ought to be construed by the
courts and when they may rely on extrinsic materials to aid in this
6
process. Since then, section 9A(1) of the Interpretation Act has
provided:
In the interpretation of a provision of a written law, an interpretation
that would promote the purpose or object underlying the written law
(whether that purpose or object is expressly stated in the written law
or not) shall be preferred to an interpretation that would not promote
that purpose or object.
5
In essence, when confronted with words found in a statutory
provision that are capable of being interpreted in more than one way,
4
5
6
The lack of a unified approach in Singapore reflected the English common law
position. See generally Robert Beckman & Andrew Phang, Beyond Pepper v Hart:
The Legislative Reform of Statutory Interpretation in Singapore (1994) 15 Statute
LR 69 and Brady Coleman, The Effect of Section 9A of the Interpretation Act on
Statutory Interpretation in Singapore [2000] Sing JLS 152.
Act 11 of 1993.
Cap 1, 2002 Rev Ed.

(2012) 24 SAcLJ

in Singapore
1023
the courts are expected to select the meaning that would best fit the
underlying purpose of the legislation. As other legal commentators have
put it, while it empowered the judge to assign to the legal text an
appropriate meaning, this does not extend so far as to permit him to
7
create new text to correct an existing text. Subsequent decisions of the
courts appear to have affirmed this approach. The Court of Appeal in
8
Public Prosecutor v Manogaran s/o R Ramu held:
The cardinal rule in statutory construction is to construe the statutory
provision in question according to the intention expressed in the
provision itself. If the words of the statute are themselves precise and
unambiguous, then no more can be necessary than to expound those
words in their ordinary and natural sense. [emphasis added]
6
The statement above suggests that adopting the purposive
approach towards statutory interpretation requires finding expression of
the statutes purpose within the language of the statutory provision
itself, and if the words used in the statute are precise and
unambiguous then their ordinary and natural meaning should be
taken, presumptively at least, to correspond with what Parliament had
intended when the statute was enacted. Subsequently, in Public
Prosecutor v Low Kok Heng, while declaring that section 9A of the
9
Interpretation Act mandated that [a]ll written law (penal or otherwise)
10
must be interpreted purposively, V K Rajah JA observed that it is
crucial that statutory provisions are not construed, in the name of a
purposive approach, in a manner that goes against all possible and
reasonable interpretation of the express literal wording of the provision
11
[emphasis added].
7
Within the specific realm of IP statutes, support for this
understanding of the purposive approach towards statutory
interpretation can be found in a landmark trade mark case of Nation
8
9
10
11
See Goh Yihan, Statutory Interpretation in Singapore: 15 Years on from

Legislative Reform (2009) 21 SAcLJ 97, citing Baraks (Aharon Barak, Purposive
Interpretation in the Law (Princeton University Press, 2005) at para 15) pithy
observation that [i]nterpretation ends at the point at which language ends
and Lord Steyns caution (Lord Steyn, Interpretation: Legal Texts and Their
Landscape in The Coming Together of the Common Law and the Civil Law (Basil
S Markesinis ed) (Hart Publishing, 2000) at p 81) that [t]he judge must
concentrate on the different meanings which the text is capable of letting in. What
falls beyond the range of possible meanings will not be a result attainable by
interpretation. Principles of institutional integrity which bind all judges set those
limits for judges.
[1996] 3 SLR(R) 390 at [34].
Cap 1, 2002 Rev Ed.
[2007] 4 SLR(R) 183 at [41].
[2007] 4 SLR(R) 183 at [52].

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(2012) 24 SAcLJ
Fittings (M) Sdn Bhd v Oystertec plc (Nation Fittings) where, in

12
relation to the Trade Marks Act, Andrew Phang J held:
[A] purposive approach towards the statutory text does not ignore the
literal meaning of the text by any means but, rather, complements it by
ensuring that the purpose and intent of the statutory text itself is
achieved and that any strained and, a fortiori, absurd result is avoided.
I should reiterate that the courts interpretation should be consistent
with, and should not either add to or take away from, or stretch
unreasonably, the literal language of the statutory provision concerned.
In other words, the literal statutory language constitutes the broad
framework within which the purpose and intent of the provision
concerned is achieved. It is imperative, to underscore the point just
made, that this framework is not distorted as the ends do not justify the
means. Where, for example, it is crystal clear that the statutory language
utilised does not capture the true intention and meaning of the provision
concerned, any reform cannot come from legal gymnastics on the part of
the court but, rather, must come from the Legislature itself. [emphases
added]
III.
Patents The inventive step criterion and the state of the art
8
In First Currency Choice Pte Ltd v Main-Line Corporate Holdings
13
Ltd (FCC), an unsuccessful appeal was brought against a decision of
14
the High Court in favour of a patent holder, which granted an
injunction against the appellants enjoining them from engaging in acts
of patent infringement. One of the issues raised before, and dismissed
by, the Court of Appeal was concerned with the trial judges
determination of the patents validity. The appellant had sought to
invalidate the patent grant on the basis that the trial judge had erred in
holding that the patent had involved an inventive step one of the
15
essential requirements of patent validity.
9
In reaching its conclusion that the inventive step criteria for
patentability was indeed satisfied in this case, the Court of Appeal had
16
to interpret and apply section 15 of the Patents Act, which defines this
legal concept thus:
12
13
14
15
16
[2006] 1 SLR(R) 712 at [27].

[2008] 1 SLR(R) 335.
Singapore Patent No 86037, Dynamic Currency Conversion for Card Payment
Systems.
Under the Patents Act (Cap 221, 2005 Rev Ed), a valid patent must satisfy the
requirements of novelty (s 14), inventive step (s 15) and industrial application (s 16).
Cap 221, 2005 Rev Ed.

(2012) 24 SAcLJ

in Singapore
1025
An invention shall be taken to involve an inventive step if it is not

obvious to a person skilled in the art, having regard to any matter
which forms part of the state of the art by virtue only of section 14(2) and
without having regard to section 14(3).[17] [emphasis added]
18
10
Section 14(2) of the Patents Act defines the state of the art as
a legal concept:
The state of the art in the case of an invention shall be taken to
comprise all matter (whether a product, a process, information about
either, or anything else) which has at any time before the priority date
of that invention been made available to the public (whether in
Singapore or elsewhere) by written or oral description, by use or in
any other way. [emphases added]
11
Looking at these statutory provisions, the court encountered
some difficulty in directly applying the literal language of the statutory
definition of state of the art, which was embedded within one of the
subsections of section 14 (novelty), to the inventive step requirement
19
found in section 15 (inventive step) of the Patents Act. After observing
that [t]he requirement of obviousness is separate and distinct from that
20
of novelty, the court went on to give a narrower definition of how the
state of the art should be understood in the context of the inventive
step criterion (section 15), as distinct from how it has been statutorily
defined for the purposes of the novelty criterion (section 14) despite
17
18
19
20
Sections 14(2) and 14(3) of the Patents Act (Cap 221, 2005 Rev Ed) define the
scope of the state of the art, or the prior art, against which the claimed invention
must be evaluated to determine if the novelty criterion for patentability is satisfied.
In essence, the prior art encompasses anything and everything that is available to
the public that which the public could have had access to with the novelty
threshold for patentability crossed, so long as this prior art does not contain
anything that anticipates the claimed invention. Section 14(3) extends the scope of
the prior art to include certain unpublished materials that were not available to the
public patent applications with a priority date (the date on which the patent
application was filed) earlier than the priority date of the claimed invention whose
validity is under assessment. The effect of s 14(3) is to enable patent applications
with earlier priority dates (but which were unpublished at the priority date of the
claimed invention) to be relied upon to destroy the novelty of inventions of
subsequently filed patent applications. Patent applicants are thus incentivised to
submit their patent applications as early as possible, ahead of their rivals, in order
to secure the novelty of their claimed inventions. Such notional disclosures
unpublished patent applications with earlier priority dates are considered part of
the prior art only for the purposes of the s 14 novelty assessment. What s 15 does is
confine the inventive step inquiry to the prior art that consists of real disclosures
of information that the public actually had access to, before the priority date of the
claimed invention.
Cap 221, 2005 Rev Ed.
Cap 221, 2005 Rev Ed.
First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008]
1 SLR(R) 335 at [37].

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the express prescription in section 15 to employ the same statutory

21
definition found in section 14(2) of the Patents Act. The Court of
Appeals unwillingness to use the same definition of state of the art for
both the novelty and inventive step inquiries and its preferred approach,
22
was expressed thus:
[T]here does not appear to be a clear distinction between the
requirements of novelty and obviousness because both the question of
whether an invention is novel and that of whether it involves an
inventive step appear to be determined by the state of the art at the
priority date. This can be rather confusing because it is well
established that the test for obviousness is significantly narrower than
that for novelty. It is also trite law that the state of the art, as
contemplated by [section] 15 of the [Patents] Act, ought to be viewed in
relation to the common general knowledge of the notional skilled person,
as opposed to that of the public (see [section] 14(2)). This would
exclude knowledge which is not available to the public. While this
genre of knowledge ([that is,] knowledge which is not available to the
public) is excluded from the common general knowledge which the
notional skilled person is deemed to possess for the purposes of
assessing obviousness, such knowledge is nonetheless taken into
account in assessing whether an invention is novel under [section] 14
of the [Patents] Act. [emphasis added]
The novelty
criterion
(section 14)
21
22
Definition of state of the

art as set out in the Patents
Act (Cap 221, 2005 Rev Ed)
Definition of state of the

art as interpreted by the
Court of Appeal in FCC
Section 14(2):
The state of the art in the case
of an invention shall be taken
to comprise all matter (whether
a product, a process,
information about either, or
anything else) which has at any
time before the priority date of
that invention been made
available to the public (whether
in Singapore or elsewhere) by
written or oral description, by
use or in any other way.
[emphases added]
[37]:
matters made available
to the public, whether in
Singapore or elsewhere, at
any time before the
priority date of the
invention in question.
Cap 221, 2005 Rev Ed.

1 SLR(R) 335 at [38]. The assertion that knowledge which is not available to the
public is taken into account in assessing whether an invention is novel, is
misleading. The basic principle is that the state of the art comprises all knowledge
that is available to the public, regardless of whether or not anyone has actually
accessed that knowledge this is the unread book-in-a-dark-and-dusty-corner-ofthe-library principle espoused in Lux Traffic Controls Ltd v Pike Signals Ltd [1993]
RPC 107 at 133.

(2012) 24 SAcLJ
The inventive step

criterion
(section 15)

in Singapore
Section 15:
having regard to any matter
which forms part of the state of
the art by virtue only of section
14(2) and without having
regard to section 14(3).
[emphasis added]
1027
[38]:
[T]the state of the art, as
contemplated by [section]
15 of the [Patents] Act,
ought to be viewed in
relation to the common
general knowledge of the
notional skilled person, as
opposed to that of the
public.
Table 1: Definitions of the State of the Art for the Purposes of the
Novelty and Inventive Step Criteria
12
The state of the art, in other words, was given a more
circumscribed definition within the context of the inventive step
(section 15) criterion while this concept had a more expansive
definition within the context of the novelty (section 14) criterion. Such
a reading of the statutory language was inconsistent with the literal
wording of the relevant legislative provisions, which indicate that the
same legal concept of the state of the art should be employed in both
contexts (see Table 1).
13
The Court of Appeal in FCC appeared to adopt a purposive
construction of the Patents Act as its basis for reaching its conclusion
that the reference to the state of the art in section 15 should be
interpreted differently from its statutorily defined meaning in
section 14. First, the court suggested that the distinction between the
two criteria for patentability was blurred because both the question of
whether an invention is novel and that of whether it involves an
inventive step appear to be determined by the state of the art at the
priority date, resulting in a state of affairs that could be rather
confusing because it is well established that the test for obviousness is
23
significantly narrower than that for novelty. However, maintaining a
clear conceptual distinction between the novelty and inventive step
principles does not require two different definitions of what constitutes
the state of the art a very technical legal concept that has been
developed by the law of patents to identify the background materials
that are taken into account when evaluating the patentability of an
invention.
14
The legal tests for novelty and inventive step are perfectly
capable of operating independently from each other even if they are
applied to the same state of the art. As long as the precise nature of
each legal inquiry is fully understood and appreciated one focuses on
23
1 SLR(R) 335 at [38].

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whether the claimed invention can already be found or if it is already a

part of the state of the art, while the other focuses on whether the
claimed invention is merely an obvious extension or variation of what
already existed in the state of the art it is not necessary to employ
different formulations of what the state of the art should comprise.
The state of the art defines the boundaries of what was in the public
domain at the priority date, while the novelty and inventive step criteria
provide the different lenses through which these elements in the public
domain are deciphered, scrutinised and evaluated from the notional
skilled persons point of view. Once it is clearly understood that the
novelty question posed to the skilled person (Is there anything in the
state of the art which discloses exactly the claimed invention?) is quite
different from the inventive step question (Given the state of the art at
the priority date, would it have required any spark of imagination or
creativity to develop the claimed invention?), then a common
definition of the state of the art that which is the public domain to
which reference can be made by the skilled person does not become a
source of confusion.
15
Second, the court relied on English case law to support its nonliteral reading of the statutory definition of what constitutes the state of
the art for the purposes of the inventive step requirement, reiterating
that such an approach injects substance into the legislative intent
24
underlying [section] 15 of the [Patents] Act. Starting from the premise
that the novelty and inventive step requirements must have been
intended by Parliament to be distinct legal criteria, the court adopted
the reasoning of Lord Reid in Technograph Printed Circuits Ltd v Mills &
25
Rockley (Electronics) Ltd (Mills & Rockley), who opined that the
equivalent statutory language in the UK Patents Act 1949 should be
given the more natural meaning of what was or ought to have been
26
known to a diligent searcher. Furthermore, reference was made to the
oft-cited four-step Windsurfing International Inc v Tabur Marine (Great
Britain) Ltd (Windsurfing) test, to show reliance on common general
24
25
26
1 SLR(R) 335 at [41].
[1971] FSR 188.
[1971] FSR 188 at 193. In this case, the House of Lords had to interpret the words
having regard to what was known or used in ss 32(1)(e) and 32(1)(f) of the
Patents Act 1949 (c 87) (UK), statutory provisions that set out, respectively, when a
patent may be invalidated on grounds that the invention is not new having
regard to what was known or used, before the priority date of the claim, in the
United Kingdom and that the invention is obvious and does not involve any
inventive step having regard to what was known or used, before the priority date of
the claim, in the United Kingdom.

(2012) 24 SAcLJ

in Singapore
1029
27
knowledge in the test for obviousness. It is submitted, with respect,

that neither of these English authorities ought to have been invoked to
limit the meaning of state of the art in section 15 of the Singapore
28
Patents Act to just matter that would have been part of the skilled
persons common general knowledge.
16
Lord Reids dicta in Mills & Rockley should have been regarded
with more circumspection given the contrary view of this issue by
Lord Diplock, who took the position that the phrase what was known
or used should be assigned the same meaning in both the novelty and
inventive step contexts, given that identical statutory language was used
in each subsection of the UK Patents Act 1949 to define the prior art
29
against which the invention had to be assessed. Moreover, the statutory
language used in the Singapore Patents Act is not based on the
provisions found in the UK Patents Act 1949, but employs different
terminology including references to the state of the art and other
30
technical phrases drawn directly from the UK Patents Act 1977. As
for the Windsurfing test, or guidelines, for applying the inventive step
criterion, there is nothing in the English Court of Appeals four-step
framework that lends any support to the view that the state of the art
studied by the skilled reader, when applying the inventive step criterion
31
set out in section 15 of the Patents Act, should be narrower in scope
compared to the state of the art that is used for the purposes of
evaluating the novelty of an invention. This should be apparent from
32
the terms in which the Windsurfing test has been formulated:
There are, we think four steps which require to be taken in answering
the jury question. The first is to identify the inventive concept
embodied in [the] suit. Thereafter, the court has to assume the mantle
27
28
29
30
31
32
1 SLR(R) 335 at [41]. The Windsurfing test refers to the analytical framework set
out by the English Court of Appeal in Windsurfing International Inc v Tabur Marine
(Great Britain) Ltd (Windsurfing) [1985] RPC 59, which was adopted by the
Singapore courts in Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2000]
2 SLR(R) 708 at [50].
Cap 221, 2005 Rev Ed.
Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1971] FSR 188
at 200. Lord Diplocks disagreement with Lord Reids interpretative approach was
acknowledged by the Singapore Court of Appeal in First Currency Choice Pte Ltd v
Main-Line Corporate Holdings Ltd [2008] 1 SLR(R) 335 at [40], but no reason was
explicitly given for favouring the latters views over the formers.
The statutory language found in s 15 (inventive step) of the Singapore Patents Act
(Cap 221, 2005 Rev Ed), which makes reference to s 14 (novelty) of the same Act,
was directly transplanted from s 3 (inventive step) and s 2 (novelty) of the UK
Patents Act 1977 (c 37).
Cap 221, 2005 Rev Ed.
Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59
at 7374, cited by the Court of Appeal in First Currency Choice Pte Ltd v Main-Line
Corporate Holdings Ltd [2008] 1 SLR(R) 335 at [41].

1030
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of the normally skilled but unimaginative addressee in the art at the

priority date and to impute to him what was, at that date, common
general knowledge in the art in question. The third step is to identify
what, if any, differences exist between the matter cited as being known
or used and the alleged invention. Finally, the court has to ask itself
whether, viewed without any knowledge of the invention, those
differences constitute steps which would have been obvious to the
skilled man or whether they require any degree of invention.
[emphases added]
17
What the Windsurfing test recommends is for the skilled person
to be imputed with common general knowledge in the art in question
so as to enable him to make, in as realistic a fashion as possible, an
assessment of the state of the art to determine if the claimed invention
involves an inventive step that makes it patentable. The hypothetical
skilled persons inquiry into whether or not the invention possesses an
inventive step is not confined to material that comprises the common
general knowledge in the art. He is given access to the entire state of the
art, just as he would have when engaged in the novelty inquiry, but is
expected to carry out the inventive step inquiry in a practical manner
that takes into account what an actual expert in that discipline would
consider common general knowledge for that particular field of
technology. In other words, the common general knowledge of a reallife expert in the relevant field of technology serves as a lens through
which the state of the art is surveyed, interpreted and evaluated; this
reference to the skilled persons common general knowledge is not
used to define the boundaries of what ought to constitute the whole of
the state of the art.
18
Returning to the views of Lord Reid and Lord Diplock in Mills &
Rockley and their opposing interpretations of the words having regard
to what was known or used in the novelty and inventive step
33
subsections of section 32 of the UK Patents Act 1949, the Singapore
Court of Appeal could have looked at subsequent decisions of the
English courts that, like Lord Diplock, preferred to adopt a consistent
interpretative approach, which gives the skilled person access to the
same prior art when determining whether the claimed invention
satisfies the novelty requirement and the inventive step criterion. This
was the view expressed by Justice Whitford in Imperial Chemical
34
Industries Ltd (Pointers) Application:
[T]he tribunal may have to consider the same material on the
objections of anticipation and obviousness, but, though the material
used is the same, the questions to be asked are quite different: It is for
this reason that I take the view, that, where the objection being
33
34
c 87.
[1977] FSR 434 at 454455.

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in Singapore
1031
considered is obviousness, the circumstances of publication must be

taken into account. A thing is obvious if it is lying in the way, if it is so
placed as to be easily perceived or noticed Where obviousness in
the light of a disclosure in a document is asserted, it may well be said
that, however obvious the answer may be, if one assumes the
document to be read by a relevant addressee, the circumstances of its
publication may be such that it would be fair to assume that it would
never come to the attention of the relevant addressee of come to his
attention in circumstances such that it would be wholly improbably
that he would pay any attention to it A document may be available
to the public in the sense that it is lodged in a library, but the library
in which the document is lodged may be one of the libraries
constantly consulted by workers in the field or possibly one of the few
remaining parish libraries where it presence is likely to be wholly
undetected. It may be of great antiquity; it may be in a language not
generally current; it may be contemporaneous. It many cases it is
established in evidence that a document relied upon is of the class that
relevant addressees could be expected to consult In other cases, the
evidence may be to a contrary effect.
19
Such an approach maintains the natural and ordinary meaning
of the statutory language found in the patent framework that exhorts
the skilled person to scrutinise the same prior art when evaluating the
claimed invention for both novelty and non-obviousness. The common
general knowledge of the skilled person from the relevant field of
technology is only relevant in an indirect way it enables this legal
construct to pay more attention to those parts of the prior art that
belong to the class [of materials] that relevant addressees could be
expected to consult, and to assign less weight to materials that it would
be fair to assume would never come to the attention of the relevant
addressee, before making an overall assessment as to whether or not the
invention was such an obvious extension of the prior art that it did not
satisfy the inventive step criterion for patentability. Having the skilled
person carry out the inventive step inquiry with reference to the same
prior art that is used for the purposes of the novelty inquiry was also
reiterated subsequently by Millet LJ in the English Court of Appeal in
35
PLG Research Ltd v Ardon International Ltd:
The philosophy behind the doctrine of obviousness is that the public
should not be prevented from doing anything which was merely an
obvious extension or workshop variation of what was already known
at the priority date. Accordingly, the skilled man is treated as having
access to every example of the prior art, and must be considered as
sufficiently interested in the information which he is deemed to have
to consider it practical application whether he would have done so in
practice or not.
35
[1995] RPC 287 at 313.

1032
(2012) 24 SAcLJ
The Windsurfing case established that an example of the prior art

cannot be rejected on the ground of obscurity. But knowing of a piece
of prior art is one thing; appreciating its significance to the solution to
the problem in hand is another.
IV.
Trade marks Anti-dilution rights and well-known

trade marks
36
20
In Novelty Pte Ltd v Amanresorts Ltd (Amanusa), an
unsuccessful appeal was brought against a decision of the High Court in
favour of the proprietors of a group of luxury resorts (who owned
various well-known trade marks, including AMANUSA) which had
granted an injunction against the appellants enjoining them from using
the AMANUSA mark in naming the latters housing development
project. The respondents succeeded in establishing an action in passing
off against the appellant before the Court of Appeal by proving that the
appellants actions amounted to a misrepresentation from which there
was a likelihood of damage to the respondents goodwill in the
37
AMANUSA name. An important issue of statutory interpretation also
arose in this case because the respondents had also made an alternative
claim under section 55(3) of the Trade Marks Act, which concerns the
38
infringement of well-known trade marks. This was the first
opportunity given to the appellate court to analyse this provision since it
39
was substantially amended in 2004 to give effect to Singapores
international legal obligations to expand the scope of protection
conferred upon this special class of well-known trade marks.
21
Even before these amendments to the Trade Marks Act in 2004,
well-known marks were protected to a certain extent when the statute
was first enacted in 1999 because of Singapores international
obligations to protect such marks under Article 6bis of the Paris
40
Convention for the Protection of Industrial Property (Paris
Convention) and Article 16 of the Agreement on Trade-Related Aspects
36
37
38
39
40
[2009] 3 SLR(R) 216.

Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 at [132].
Sections 2(1) and 2(7) of the Trade Marks Act (Cap 332, 2005 Rev Ed) defines a
well-known trade mark as either a registered or unregistered trade mark that is
well known in Singapore, including any relevant sector of the public in Singapore,
regardless of whether the proprietor of such a mark carries on any business, or has
any goodwill, in Singapore.
Trade Marks (Amendment) Act 2004 (Act 20 of 2004).
Article 6bis of the Paris Convention for the Protection of Industrial Property
requires member states to, inter alia, prohibit the use, of a trademark which
constitutes a reproduction, imitation, or a translation, liable to create confusion, of a
mark considered to be well known and used for identical or similar goods
[emphasis added].

(2012) 24 SAcLJ

in Singapore
1033
41
of Intellectual Property Rights (TRIPS Agreement). Between 1999

and 2004, well-known trade marks were specifically protected via
42
sections 27(3) and 55(2) of the Trade Marks Act 1998. The Act was
amended in 2004 after Singapore signed two free trade agreements
(FTAs), with the US and various European countries. Both FTAs
obliged Singapore to give effect to the World Intellectual Property
Organizations Joint Recommendation Concerning Provisions on the
Protection of Well-Known Marks (adopted in 1999; WIPO Joint
43
Recommendation), which seeks to elevate the levels of legal
protection enjoyed by well-known trade marks above the minimum
44
standards set out in the TRIPS Agreement. Section 27(3) of the Trade
45
Marks Act 1998, which protects the proprietor of a well-known trade
mark against the unauthorised use of marks that that might cause
public confusion and damage the proprietors interests, remained
46
unchanged. Section 55(2) of the Trade Marks Act 1998 was reworded
but essentially kept intact, and a new section 55(3) was introduced to
enhance the protection for well-known trade marks that went beyond
traditional modes of confusion-dependent trade mark infringement
(see Table 2). Post-2004, well-known trade marks in Singapore are also
entitled to protection from blurring (unauthorised uses that weaken the
distinctiveness of the mark), tarnishment (unauthorised uses that
damage the positive reputation built around the mark) and acts that
take unfair advantage of the distinctive character of the mark
(unauthorised uses that misappropriate part of the value of the trade
mark without necessarily causing loss to the proprietor). In the
Amanusa decision, the Court of Appeal seized the opportunity to
analyse the scope of these newly introduced, so-called anti-dilution
41
42
43
44
45
46
Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property

Rights extends the scope of Art 6bis of the Paris Convention for the Protection of
Industrial Property, mutatis mutandis, to include good and services [that] are not
similar to those in respect of which a trademark is registered, provided that use of
that trademark in relation to those goods or services would indicate a connection
between those goods or services and the owner of the registered trademark and
provided that the interests of the owner of the registered trademark are likely to be
damaged by such use [emphases added].
Act 46 of 1998.
See Art 6 of Annex XII of the European Free Trade AssociationSingapore Free
Trade Agreement, and Art 16.1.2(b)(i) of the USSingapore Free Trade Agreement.
Both free trade agreements are available at <http://www.fta.gov.sg>. For a more
comprehensive account of the legislative history of these amendments to the Trade
Marks Act, see Burton Ong, Protecting Well-Known Trade Marks: Perspectives
from Singapore (2005) 95 TMR 1221.
These so-called TRIPS-plus trade mark law provisions are discussed in greater
detail in Burton Ong, The Trademark Law Provisions of Bilateral Free Trade
Agreements in Trademark Law and Theory: A Handbook of Contemporary Research
(Graeme B Dinwoodie & Mark D Janis eds) (Edward Elgar, 2008).
Act 46 of 1998.
Act 46 of 1998.

1034
(2012) 24 SAcLJ
rights available to proprietors of well-known trade marks, and had to

make sense of the statutory language found in these provisions in light
of the international law developments leading up to this legislative
reform.
Scope of
protection for
registered
well-known
trade marks
as set out in the
Trade Marks Act
(Cap 332,
2005 Rev Ed)
Between 1999 and 2004

Trade Marks Act 1998
(Act 46 of 1998)
After 2004 amendments

Trade Marks Act (Cap 332,
2005 Rev Ed)
Scope of
protection for
registered and
unregistered
well-known
trade marks
as set out in the
Trade Marks Act
(Cap 332,
2005 Rev Ed)
Between 1999 and 2004

Trade Marks Act 1998
(Act 46 of 1998)
After 2004 amendments

2005 Rev Ed)
Section 55(2):
The proprietor of a trade
mark which is entitled to
protection under the Paris
Convention or the TRIPS
Agreement as a wellknown trade mark is
entitled to restrain by
injunction the use in
Singapore in the course of
trade of a trade mark
in relation to identical or
similar goods or services,
where the use is likely to
cause confusion.
Section 55(2):
[T]he proprietor of a well
known [sic] trade mark shall be
injunction the use in Singapore,
in the course of trade of any
trade mark in relation to
identical or similar goods or
services, where the use is likely to
cause confusion.
Section 27(3):
A person infringes a registered trade mark which is well
known in Singapore if
(a) without the consent of the proprietor of the trade
mark, he uses in the course of trade a sign which is
identical with or similar to the trade mark in relation to
goods or services which are not similar to those for which
the trade mark is registered;
(b) the use of the trade mark in relation to those goods
or services would indicate a connection between those
goods or services and the proprietor;
(c)
there exists a likelihood of confusion on the part of
the public because of such use; and
(d) the interests of the proprietor are likely to be
damaged by such use.
Section 55(3):
[T]the proprietor of a well
known [sic] trade mark shall be
injunction the use in Singapore,
in the course of trade of any
trade mark in relation to any
goods or services, where the use
of the trade mark
(a) would indicate a
connection between those

(2012) 24 SAcLJ

in Singapore
1035
goods or services and the

proprietor, and is likely to
damage the interests of the
proprietor; or
(b) if the proprietors
trade mark is well known to
the public at large in
Singapore
(i)
would cause
dilution in an unfair
manner of the distinctive
character of the
proprietors trade mark;
or
(ii) would take unfair
advantage of the
distinctive character of
the proprietors trade
mark.
Table 2: Statutory Provisions Defining the Scope of Legal Protection for
Well-Known Trade Marks
22
According to the Court of Appeal in Amanusa, the crucial and
difficult area of law which require[d] clarification was whether
establishing trade mark infringement under section 55(3)(a) of the
47
Trade Marks Act required the claimant to show a likelihood of
confusion in addition to the elements explicitly set out in that provision,
even though the issue was actually academic for the purposes of [the]
appeal because the respondents passing-off claim which required a
48
likelihood of confusion to be proven had already succeeded.
Acknowledging that the problem was complicated by the byzantine
49
history of trade mark legislation in Singapore, and further
confounded by the legal platypus character of the WIPO Joint
Recommendation, which is an amalgam of Article 16 of the TRIPS
Agreement, the law of trade mark dilution from American
jurisprudence as well as the European Union Directive to approximate
50
the laws of the Member States relating to trade marks (EU Trade
Marks Directive), the Court of Appeal described the process of
decipher[ing] the law on well-known trade marks in Singapore as
51
akin to engaging in a game of Chinese whispers.
47
48
49
50
51
Cap 332, 2005 Rev Ed.

Directive 2008/95/EC of the European Parliament and of the Council of
22 October 2008 to approximate the laws of the Member States relating to trade
marks (OJ L 299, 8 November 2008).
Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 at [163][165].

1036
(2012) 24 SAcLJ
23
The conclusion reached by the Court of Appeal was that,
notwithstanding the absence of any such wording in the statutory
52
language used in section 55(3)(a) of the Trade Marks Act, a likelihood
of confusion requirement should be read into the statutory provision so
that the proprietor of a well-known trade mark who wished to bring an
action for trade mark infringement under that provision had to prove
this element in addition to the explicitly stated elements of a connection
between the [defendants] goods or services and the proprietor and that
this connection was likely to damage the interests of the proprietor. By
reading this additional confusion requirement into section 55(3)(a), the
scope of the anti-dilution rights (which are not dependent on any
confusion requirement) introduced into the Singapore trade marks
regime in 2004 was effectively confined to section 55(3)(b) a provision
only applicable to the extremely elite class of trade marks that are well
known to the public at large. Such a reading of section 55(3)(a) means
that trade marks that fall short of this very high threshold, even if they
are well known to a sector of the public in Singapore, are not entitled to
any form of anti-dilution protection whatsoever.
24
By inserting an implicit confusion requirement into
section 55(3)(a), the court gave a restrictive interpretation to this
legislative amendment to the Trade Marks Act that substantially
replicates the function of section 55(2), a pre-existing provision that
contains an explicit confusion requirement (see Table 2 above), except
that section 55(2) only applies to identical or similar goods or services
whereas section 55(3)(b) applies to any goods or services. If this had
indeed been the intention of Parliament to broaden the scope of
section 55(2) then one would have expected amendments to be made
directly to the language of section 55(2), rather than through the
introduction of a brand-new statutory provision in section 55(3),
which, conspicuously, makes no reference to public confusion as a
precondition for legal liability.
A.
International developments and legislative antecedents
Figure 1: International Developments and Legislative Antecedents
52
Cap 332, 2005 Rev Ed.

(2012) 24 SAcLJ

in Singapore
1037
25
Figure 1 above illustrates the links between the chain of
international legal documents that led up to the enactment of
section 55(3)(a) of the Trade Marks Act. Each of these links was
meticulously scrutinised in Amanusa, and one of the reasons the Court
of Appeal decided that a confusion requirement had to be implied into
section 55(3)(a) was premised on the view that confusion arising from
the unauthorised use of a well-known trade mark was an essential
element of the legal prohibitions articulated in each of these legislative
antecedents.
26
Article 6bis of the Paris Convention clearly contemplates a
legal prohibition against unauthorised uses of a well-known trade mark
53
that are liable to create confusion and the language of Article 16(3) of
the TRIPS Agreement (requiring the importation and application of
Article 6bis of the Paris Convention mutatis mutandis) has been
54
interpreted in Singapore to also require this confusion requirement.
This explains why the confusion requirement was explicitly included in
55
the wording of section 55(2) of the Trade Marks Act since 1999, given
that this statutory regime was intended to give effect to the legal
56
standards articulated in the TRIPS Agreement.
27
However, the next two links in this chain of legislative
antecedents are less straightforward. First, the WIPO Joint
Recommendation was the result of further developments following the
57
TRIPS Agreement and incorporated elements of American and
58
European trade mark anti-dilution legislation. Second, when Singapore
adopted Article 4(1)(b) of the WIPO Joint Recommendation as a model
53
54
55
56
57
58
Article 6bis of the Paris Convention for the Protection of Industrial Property
requires member states to, inter alia, prohibit the use, of a trademark which
constitutes a reproduction, imitation, or a translation, liable to create confusion, of a
mark considered to be well known and used for identical or similar goods
[emphasis added].
Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property
Rights extends the scope of Art 6bis of the Paris Convention for the Protection of
Industrial Property, mutatis mutandis, to include goods and services [that] are not
similar to those in respect of which a trade mark is registered, provided that use of
that trade mark in relation to those goods or services would indicate a connection
between those goods or services and the owner of the registered trade mark and
provided that the interests of the owner of the registered trademark are likely to be
damaged by such use [emphases added]. See also Ng-Loy Wee Loon, The IP
Chapter in the USSingapore Free Trade Agreement (2004) 16 SAcLJ 42 at 52,
which was cited with approval by the Court of Appeal in Novelty Pte Ltd v
Amanresorts Ltd [2009] 3 SLR(R) 216 at [170].
Cap 332, 2005 Rev Ed.
See n 51 above and accompanying text.

1038
(2012) 24 SAcLJ
59
for section 55(3)(b) of the Trade Marks Act, the grafting exercise was
60
not perfect in so far as there were minor linguistic differences and the
definition of dilution was drawn separately from the trade mark laws
61
of the US. It is thus helpful to look at the language used in
Article 4(1)(b) of the WIPO Joint Recommendation and compare it
against the corresponding language found in section 55(3)(b) of the
62
Trade Marks Act.
Article 4(1)(b) of the WIPO Joint
Recommendation
Section 55(3)(b) of the Trade Marks Act

(Cap 332, 2005 Rev Ed)
Irrespective of the goods and/or

services for which a mark is used that
mark shall be deemed to be in conflict
with a well-known mark where the
mark constitutes a reproduction, an
imitation, a translation, or a
transliteration of the well-known mark,
and where at least one of the following
conditions is fulfilled:
(i) the use of that mark would
indicate a connection between the
goods and/or services for which the
mark is used, is the subject of an
application for registration, or is
registered, and the owner of the
well-known mark, and would be
likely to damage his interests;
(ii) the use of that mark is likely to
impair or dilute in an unfair manner
the distinctive character of the
well-known mark;
(iii) the use of that mark would take
unfair advantage of the distinctive
character of the well-known mark.
[T]he proprietor of a well known [sic]

trade mark shall be entitled to restrain
by injunction the use in Singapore, in
the course of trade and without the
proprietors consent, of any trade mark
which, or an essential part of which, is
identical with or similar to the
proprietors trade mark, in relation to
any goods or services, where the use of
the trade mark
(a) would indicate a connection
between those goods or services and
the proprietor, and is likely to
proprietor; or
(b) if the proprietors [sic] trade
mark is well known to the public at
large in Singapore
(i)
would cause dilution in an
unfair manner of the distinctive
character of the proprietors trade
mark; or
(ii) would take unfair
advantage of the distinctive
character of the proprietors trade
mark.
Table 3: Comparison between Article 4(1)(b) WIPO Joint Recommendation and

Section 55(3)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed)
59
60
61
62
Cap 332, 2005 Rev Ed.

See Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 at [164].
More specifically, 4 of the US Federal Trademark Dilution Act of 1995
Pub L No 104-98, 109 Stat 985 (1996) (codified at Commerce and Trade
15 USC (US) 1125(c) and 1127).
Cap 332, 2005 Rev Ed.

(2012) 24 SAcLJ

in Singapore
1039
28
Starting from the premise that [Article] 4(1)(b)(i) is based on
63
[Article] 16(3) of the TRIPS Agreement, the Court of Appeal in
Amanusa went on to analyse, in considerable detail, Article 4(1)(b)
of the WIPO Joint Recommendation to reach the conclusion that the
confusion requirement was implicit in Article 4(1)(b)(i) even though
no mention was made of such a requirement, in contrast to
64
Article 4(1)(a) and that this provided a basis for imputing a similar
confusion requirement into section 55(3)(a) of the Trade Marks
65
Act.
29
However, the Court of Appeals starting premise was, with
respect, flawed to the extent that it is not apparent why Article 4(1)(b)(i)
of the WIPO Joint Recommendation ought to be regarded as nothing
more than a faithful transplantation of Article 16(3) of the TRIPS
Agreement. After all, as was observed by the court itself in its judgment,
the standards for the protection of well-known marks set out in the
Joint Recommendation are even higher than those contained in the
TRIPS Agreement (the standards set by the Joint Recommendation are
66
the so-called TRIPS-plus standards). While Article 16(3) of the
TRIPS Agreement and Article 6bis of the Paris Convention, may have
been originating provisions for Article 4(1)(b)(i) of the WIPO Joint
Recommendation, there is no reason why the latter should be limited in
its scope by an implicit confusion requirement that is associated with its
antecedents. If it is understood that the WIPO Joint Recommendation
was intended, as a whole, to provide proprietors of well-known trade
marks with higher standards of legal protection above what was
articulated in the TRIPS Agreement and Paris Convention, then it
stands to reason that the non-inclusion of any explicit reference to
confusion in the text of Article 4(1)(b)(i) must have been a deliberate
omission intended to enlarge the scope of infringement beyond
situations where confusion arose from the unauthorised use of the
67
well-known trade mark.
63
64
65
66
67
See Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 at [201] and [206]. No
further reasons were given to support the assertion that Art 4(1)(b)(i) of the Joint
Recommendation is derived directly from Art 16(3) of the TRIPS Agreement.
Article 4(1)(a) of the World Intellectual Property Organization Joint
Recommendation Concerning Provisions on the Protection of Well-Known Marks
reads: A mark shall be deemed to be in conflict with a well-known mark where
that mark constitutes a reproduction, an imitation, a translation, or a
transliteration, liable to create confusion, of the well-known mark, if the mark is
used in respect of goods and/or services which are identical or similar to the
goods and/or services to which the well-known mark applies. [emphasis added]
Cap 332, 2005 Rev Ed.
In contrast, Art 16(3) of the Agreement on Trade-Related Aspects of Intellectual
Property Rights makes it clear that it imports the legal standards found in Art 6bis
of the Paris Convention for the Protection of Industrial Property mutatis
mutandis, which provides a clear basis for implying the words liable to create

1040
(2012) 24 SAcLJ
30
Second, the Court of Appeal referred to the Explanatory Notes
on Article 4(1)(b)(i) of the WIPO Joint Recommendation to support its
view that the drafters of the Joint Recommendation considered the
68
likelihood of confusion to be a requirement:
Under [Article 4(1)(b)(i)], a connection between a well-known mark
and a third partys goods or services may be indicated, for example, if
the impression is created that the owner of the well-known mark is
involved in the production of those goods, or the offering of those services,
or that such production or offering was licensed or sponsored by him. The
interests of the owner of the well-known mark could be damaged if
the goods and/or services with which the connection is established
have a down-market image, thereby reflecting negatively on the
goodwill of the well-known mark. [emphasis added]
69
31
Disagreeing with the authors views expressed elsewhere that
Article 4(1)(b)(i) should be read broadly to confer protection in all
situations where a negative connection is made with the proprietor of
the well-known trade mark, regardless of whether there is any public
confusion involved the Court of Appeal interpreted this explanatory
statement to mean that confusion could result in tarnishment as a form
70
of damage under this heading and that confusion was still an essential
element of the misconduct contemplated in this provision. It is
submitted that this is an unduly narrow reading of the explanatory
statement behind Article 4(1)(b)(i), which seems plainly capable of
covering both situations where the well-known trade mark is
tarnished in the absence of confusion and where the tarnishment occurs
as a result of origin-related confusion created. Two crucial words that
are found just before the excerpt italicised by the Court of Appeal for
example support this broader interpretation of Article 4(1)(b)(i).
32
Third, the Court of Appeal noted that the connection required
in Article 4(1)(b)(i) of the WIPO Joint Recommendation involves a
connection between the defendants goods or services and the plaintiff
itself, as distinguished from a connection between the defendants sign
71
and the plaintiff s trade mark. Since connection in the latter sense
between two marks was part of Article 5(2) of the EU Trade Marks
Directive, and has been interpreted by the European Court of Justice not
68
69
70
71
confusion into the former, even though no reference to confusion is made in the
legal text of Art 16(3).
See Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 at [208], referring to
Burton Ong, Protecting Well-Known Trade Marks: Perspectives from Singapore
(2005) 95 TMR 1221 at 1248.

(2012) 24 SAcLJ

in Singapore
1041
72
to require proof of confusion, the fact that a differently expressed

connection requirement was inserted into Article 4(1)(b)(i) meant
that some element of confusion should be infused into this Article. The
logic of this proposition is hard to grasp. Just because Article 4(1)(b)(i)
did not use the same connection language found in the European trade
mark regime, where there is no requirement of a likelihood of public
confusion between the plaintiff s trade mark and the defendants
trade mark, it does not follow that a requirement of public confusion
should be implicit in the connection element actually used of
Article 4(1)(b)(i). A connection between the defendants goods or
services and the proprietor of the well-known trade mark, as set out in
Article 4(1)(b)(i), may arise with or without some form of confusion being
present. The presence or absence of public confusion depends on the
specific factual circumstances such as the context of the unauthorised
use of the well-known trade mark, the perception of the people who
make this connection and so forth. It is not difficult to envisage
situations where, when negative associations or connotations arise in
the minds of members of the public who make such a connection, the
unauthorised use of the well-known trade mark is likely to damage the
interests of the proprietor regardless of whether the connection
results from confusion or not.
33
A well-known trade marks reputation can be tarnished even if
there is no origin-related confusion about the defendants goods or
services. If, for example, an escort agency and a waste management
services provider were to use Mercedes Benz as part of their business
names, while making it very clear in their advertising materials that they
are not related to, licensed by, or in any way affiliated with, the German
car-maker, there may still be members of the public who continue to
make a connection between these escort and waste treatment services
and the proprietor of the well-known trade mark. Even if the public was
not confused into thinking that the Mercedes Benz high-class escorts
and Mercedes Benz portable potties were in any way authorised by the
German car-maker to make use of the well-known trade mark, it is
entirely plausible for members of the public to still make a connection
between the escort services and the makeshift lavatories and the
proprietor of the well-known trade mark, which could tarnish the
branding and corporate image surrounding the German car-makers
MERCEDES BENZ trade mark.
34
Fourth, the Court of Appeal reasoned that since
Articles 4(1)(b)(ii) and 4(1)(b)(iii) were clearly expressed in the
language of anti-dilution legislation, and clearly did not require
confusion to be proved before the well-known trade mark is protected,
72
Adidas-Salomon AG v Fitnessworld Trading Ltd [2004] ETMR 10.

1042
(2012) 24 SAcLJ
Article 4(1)(b)(i) should be read as implicitly requiring a likelihood of

73
confusion as one of its elements, otherwise:
If [Article] 4(1)(b)(i) does not require confusion to be shown in this
regard, it is very likely to swallow up [Article] 4(1)(b)(ii) and
[Article] 4(1)(b)(iii). Article 4(1)(b)(i), if interpreted in this manner,
would essentially incorporate the link requirement in AdidasSalamon (ECJ), which applies to both dilution by blurring and freeriding.
35
This argument is difficult to follow as well. It is hard to see how
reading Article 4(1)(b)(i) literally without any implicit confusion
requirement could swallow up Articles 4(1)(b)(ii) and 4(1)(b)(iii),
since each of these limbs is concerned with very different forms of
misconduct tarnishment (a species of trade mark dilution), blurring
(another species of trade mark dilution) and freeriding (a species of
unjust enrichment). One is concerned with conduct that damages the
positive appeal of the well-known trade mark, another is concerned
with a diminution of the distinctiveness of the well-known trade mark,
while the last is concerned with the misappropriation of the
attractiveness of the well-known trade mark for profit. The first two
focus on the harm or loss suffered by the proprietor as a result of the
effects of the misconduct on the value of his well-known trade mark,
while the last focuses on the gains reaped by the defendant as a result of
his unauthorised use of the well-known trade mark.
36
Thus the Court of Appeals conclusion in Amanusa, that
[Article] 4(1)(b)(i) of the WIPO Joint Recommendation requires the
likelihood of confusion to be shown unlike [Article] 4(1)(b)(ii) and
74
[Article] 4(1)(b)(iii) raises a number of doubts, especially since there
is absolutely no mention of the confusion requirement anywhere in
Article 4(1)(b) unlike the explicit reference to conduct that is liable to
create confusion in Article 4(1)(a) and it is entirely possible that the
objective of this international legal document was to broaden the scope
of legal protection conferred upon well-known trade marks above and
beyond what was provided for in Article 16(3) of the TRIPS
75
Agreement.
73
74
75
Contrary to the position taken in Singapore (see n 54 above and the accompanying
text), Art 16(3) of the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS Agreement) has been analysed to mandate protection from
dilution even in cases where there is no likelihood of confusion (protecting
well-known trade marks to a higher degree than Art 6bis of the Paris Convention
for the Protection of Industrial Property). See Daniel Gervais, The TRIPS
Agreement: Drafting History and Analysis (Sweet & Maxwell, 3rd Ed, 2008) at
paras 2.1622.163. Such an interpretation of this provision of the TRIPS
Agreement would reinforce the argument that Art 4(1)(b) of the World Intellectual

(2012) 24 SAcLJ
B.

in Singapore
1043
A purposive and holistic construction of the legislative

framework
37
Regardless of how the language in Article 4(1)(b) of the WIPO
Joint Recommendation is understood, what mattered most in Amanusa,
ultimately, was how the actual statutory provisions of the Trade Marks
Act as enacted by Parliament was interpreted by the Court of Appeal.
It was clear that section 55(3) had been introduced into the Trade Marks
Act in 2004 in order to give effect to Article 4(1)(b) of the WIPO Joint
Recommendation, and that the purpose of these amendments was to
make anti-dilution rights available to proprietors of well-known trade
marks. It was also clear that there were three types of anti-dilution
rights, not dependent on proof of confusion, which were contemplated
by these amendments a right of protection against tarnishment
(or dilution by tarnishment), a right of protection against blurring
(or dilution by blurring) and a right to enjoin acts that take unfair
advantage of the well-known trade mark. The question of statutory
construction before the Court of Appeal was where these new
anti-dilution rights were located within the newly enacted section 55(3)
within sections 55(3)(a) and 55(3)(b), or just confined to
76
section 55(3)(b) of the Trade Marks Act?
38
Following from its analysis of Article 4(1)(b)(i) of the
WIPO Joint Recommendation, the Court of Appeal interpreted
77
section 55(3)(a) of the Trade Marks Act as implicitly incorporating a
likelihood of confusion requirement. In other words, the court
decided that the newly introduced section 55(3)(a) should not be
regarded as a part of the suite of anti-dilution rights that was
contemplated by the Trade Marks (Amendment) Act 2004 to the Trade
Marks Act. This meant that the scope of section 55(3)(a) was limited to
only addressing instances of tarnishment caused by confusion, and did
not deal with other situations of dilution by tarnishment. Instead,
dilution by tarnishment was regarded as a form of harm, which was
covered by section 55(3)(b)(i), prohibiting the unauthorised use of a
well-known trade mark that would cause dilution in an unfair manner.
In doing so, the Court of Appeal had to give the word dilution a
meaning that was wider than how the concept is statutorily defined in
78
section 2(1) of the Trade Marks Act, a definition that appears to be
76
77
78
Property Organization Joint Recommendation Concerning Provisions on the

Protection of Well-Known Marks was correspondingly intended to confer stronger
protection upon well-known trade marks even in the absence of public confusion.
Cap 332, 2005 Rev Ed.
Cap 332, 2005 Rev Ed.
Section 2(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) provides that
dilution means the lessening of the capacity of the trade mark to identify and
distinguish goods or services [emphasis added].

1044
(2012) 24 SAcLJ
confined to instances of dilution by blurring. Though clearly departing

from the literal wording used in these legislative provisions, the Court of
Appeal justified its interpretation of the statute on the basis that it was
79
entitled to do so by virtue of section 9A of the Interpretation Act,
which mandates the court to take a purposive rather than literal
interpretation of the definition of dilution in [section] 2(1) of the
current [Trade Marks Act] until such time when Parliament may see fit
80
to effect the necessary amendments.
39
This attempt at giving the term dilution a purposive
construction was explained on the basis that Parliament had intended to
incorporate the American legal definition of trade mark dilution,
81
located within the Federal Trademark Dilution Act (FTDA) of 1995,
82
into the Trade Marks (Amendment) Act 2004. While there was
evidence to show that the US House of Congress had intended to cover
83
both blurring and tarnishment as protectable forms of dilution, the
actual wording of the FTDA of 1995 reflected a narrower definition of
84
dilution to only encompass dilution by blurring. It took a 2003 US
79
80
81
82
83
84
Cap 1, 2002 Rev Ed.

See Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 at [221]. At the Second
Reading of the Trade Marks (Amendment) Bill 2004 (No 18/2004), the then
Minister for Law explained that additional rights were needed to better protect
proprietors of marks which are famous and known to many people against
situations where the reputation and value of the well known [sic] mark is diluted by
blurring or tarnishment, even though there may not be consumer confusion. See
Singapore Parliamentary Debates, Official Report (15 June 2004) vol 78 at col 108
(S Jayakumar, Minister for Law). These statements were relied upon by the Court
of Appeal in Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 at [224], to
surmise that [d]ilution in the context of the current [Trade Marks Act] clearly
refers to both dilution by blurring and dilution by tarnishment. It is submitted
that this conclusion is difficult to support, not least because it involves rewriting a
key provision in the statute. The Ministers Parliamentary statements simply
disclose an intention to protect well-known trade marks from both types of harm
(blurring and tarnishment) they do not provide a basis for enlarging the statutory
definition of dilution if the draftsman has chosen to limit this concept to
blurring. Blurring and tarnishment are distinct ways in which the value of a
well-known trade mark may be diminished and to conflate them together under
the banner of dilution, which has been defined in narrow terms, is unjustifiable.
More specifically, 4 of the Federal Trademark Dilution Act of 1995
Pub L No 104-98, 109 Stat 985 (1996) (US) (codified at Commerce and Trade
15 USC (US) 1125(c) and 1127).
Act 20 of 2004.
See Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 at [182], citing the
House Report (No 104-374) on the Federal Trademark Dilution Act of 1995
(HR 1295), that the objective of the Federal Trademark Dilution Act of 1995 was
to protect famous trademarks from subsequent uses that [blurred] the
distinctiveness of the mark or tarnish[ed] or disparage[d] it, even in the absence of
a likelihood of confusion.
45 of the Lanham Act (1946) (US) (Commerce and Trade 15 USC (US) 1127) is
amended via 4 of the Federal Trademark Dilution Act of 1995 Pub L No 104-98,

(2012) 24 SAcLJ

in Singapore
1045
85
Supreme Court decision, in Victor Moseley v V Secret Catalogue Inc

(Victorias Secret), where the court was only prepared to give the words
of the FTDA their literal meaning and confined dilution under US trade
mark law to dilution by blurring only (and not encompassing dilution
by tarnishment), to prompt the US Congress to amend the FTDA in
2006 to explicitly include dilution by tarnishment as an additional
grounds on which injunctive relief might be sought by proprietors of
86
famous trade marks.
40
In other words, what the Court of Appeal in Amanusa did was
to interpret the concept of trade mark dilution broadly to encompass
both dilution by blurring and dilution by tarnishment, because this was
how it was understood within the trade mark jurisprudence of the US.
In amending the Trade Marks Act, the Singapore Parliament must have
intended to introduce a concept of trade mark dilution that was
identical to what the House of Congress had intended to introduce
when the FTDA was enacted in 1996. Upon closer scrutiny, however, two
difficulties emerge from this purported purposive construction given by
the Court of Appeal to the definition of the dilution concept.
41
First, when attempting a purposive construction of the Trade
Marks (Amendment) Act 2004, the court should have focused on what
Parliament intended the law to be at the date of enactment itself, rather
than relying on legislative reforms made subsequently by the US House
of Congress in 2006. In 2003, the law on dilution was authoritatively
pronounced upon by the apex court of the US judiciary in Victorias
Secret and the narrower definition of trade mark dilution was securely
fastened to the specific wording used by the draftsmen of the FTDA
87
dilution only meant dilution by blurring. That Parliament had
intended, in 2004, to transplant this particular definition of dilution
into Singapores trade mark law regime should thus have been inferred
88
from express wording found in section 2(1) of the Trade Marks Act
85
86
87
88
109 Stat 985 (1996) (US), provided that [t]he term dilution means the lessening
of the capacity of a famous mark to distinguish goods or services, regardless of the
presence or absence of (1) competition between the owner of the famous mark and
other parties, or (2) likelihood of confusion, mistake or deception.
537 US 418 (2003).
The US Trademark Dilution Revision Act of 2006 Pub L No 109-312, 120 Stat 1730
(2006) introduced legislative amendments to the Lanham Act 60 Stat 427 (1946)
(US) to make it clear that injunctive relief was available in cases of dilution by
blurring or dilution by tarnishment, and the term dilution by tarnishment was
expressly defined as an association arising from the similarity between a mark or
trade name and a famous mark that harms the reputation of the famous mark.
These legislative developments in the US were discussed in some detail in Novelty
Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 at [181][187].
Victor Moseley v V Secret Catalogue Inc 537 US 418 at 432 (2003).
Cap 332, 2005 Rev Ed.

1046
(2012) 24 SAcLJ
dilution means the lessening of the capacity of the trade mark to

identify and distinguish goods or services.
42
Second, it seems illegitimate for the Court of Appeal to arrogate
to itself the power to expand the legal definition of trade mark
dilution a fundamental legal concept underpinning the new scheme
of anti-dilution rights introduced by Parliament via the Trade Marks
(Amendment) Act 2004 by adding a species of misconduct (dilution
by tarnishment) with a distinct juridical basis to the meaning of a legal
concept that has been unambiguously couched in narrower terms
within the wording of the statute (dilution by blurring). In stark
contrast, when faced with essentially the same legal issue whether or
not dilution by tarnishment should be read into a statute that defines
dilution solely in terms of dilution by blurring the US Supreme
Court thought it should confine its construction of the statutory
language to what lawmakers had actually enacted despite being
presented with evidence from the reports of the US legislature,
indicating that the FTDA was intended to protect famous trademarks
from subsequent uses that blur the distinctiveness of the mark or
89
tarnish or disparage it. If the definition of dilution crafted by
lawmakers in the trade mark statute does not correspond to the full
breadth of their legislative intentions, then surely it must be for
Parliament to change the laws they have written to accurately capture
what they had meant to address. This was precisely what the US
lawmakers did in 2006, when the FTDA of 1995 was amended with the
Trademark Dilution Revision Act of 2006 and an authoritative legislative
definition assigned to the concept of dilution by tarnishment something
that the courts could not have legitimately accomplished. So while the
Court of Appeal chose to interpret the concept of dilution beyond the
limits of its statutory definition of dilution by blurring, it was not in a
position to supplement the statute with a definitive verbal formulation
90
of what exactly dilution by tarnishment entails.
43
By tweaking the definition of dilution in the Trade Marks Act
so as to expand its scope beyond dilution-by-blurring to include
89
90
See Victor Moseley v V Secret Catalogue Inc 537 US 418 at 431 (2003), where the US
Supreme Court referred to explanatory statements made by Senator Hatch before
the bill was passed by the Senate (141 Cong Rec 3855938561 (1995)).
In contrast, the amendments of the Trademark Dilution Revision Act of 2006 to
the Federal Trademark Dilution Act of 1995 defined dilution by tarnishment as
the association arising from the similarity between a mark or trade name and a
famous mark that harms the reputation of the famous mark. See Commerce and
Trade 15 USC (US) 1125(c)(2)(C). This should be contrasted with the separate
statutory definition given to dilution by blurring, in Commerce and Trade
15 USC (US) 1125(c)(2)(B), as an association arising from the similarity
between a mark or trade name and a famous mark that impairs the distinctiveness
of the famous mark.

(2012) 24 SAcLJ

in Singapore
1047
dilution-by-tarnishment as well, the Singapore Court of Appeal in

Amanusa ventured where the US Supreme Court had feared to tread.
While both blurring and tarnishment may be regarded as related forms
of harm that undermine the strengths of a well-known trade mark, they
are nevertheless distinct from each other and what Parliament has
enacted has defined dilution only in terms of blurring (dilution
means the lessening of the capacity of the trade mark to identify and
91
distinguish goods or services). To import the concept of tarnishment
into the statutory definition of dilution adds significantly to the
legislatively assigned meaning of this legal concept and clearly goes
beyond mere purposive interpretation. Table 4 sets out the disparity
between the literal wording of the Trade Marks Act and the judicial
additions made to the statute by the Court of Appeal.
What the Trade Marks Act
(Cap 332, 2005 Rev Ed)
provides
The Court of Appeals

interpretation of these
provisions in Novelty Pte
Ltd v Amanresorts Ltd [2009]
3 SLR(R) 216
Section 55(3)(a):
the damaging
connection
condition
Section 55(3):
known [sic] trade mark shall
be entitled to restrain by
Singapore, in the course of
trade of any trade mark
in relation to any goods or
services, where the use of the
trade mark
(a) would indicate a
connection between those
goods or services and the
proprietor, and is likely to
proprietor.
At [218]:
The similarity between [this
provision] and those in the
WIPO Joint Recommendation
means, naturally, that the
arguments as to why the
confusion requirement is part
and parcel of Art 4(1)(b)(i) of
the Joint Recommendation
also support the same
conclusion in relation to the
damaging connection
condition in
[section] 8(4)(b)(i) and
[section] 55(3)(a) of the
current [Trade Marks Act]
[that is,] confusion must
likewise be proved before
these two provisions can be
invoked.
Section 55(b)(i):
the unfair
dilution
condition
Section 55(3):
known [sic] trade mark shall
be entitled to restrain by
Singapore, in the course of
trade of any trade mark
At [226]:
non-confusing connection
is covered by the unfair
dilution condition in
[section] 8(4)(b)(ii)(A) and
[section] 55(3)(b)(i).
91
Trade Marks Act (Cap 332, 2005 Rev Ed) s 2(1).

1048
(2012) 24 SAcLJ
in relation to any goods or

services, where the use of the
trade mark
(b) if the proprietors

trade mark is well known
to the public at large in
Singapore
(i)
would cause
dilution in an unfair
manner of the
distinctive character of
the proprietors trade
mark.
Section 2(1): the
statutory
definition of
dilution
Section 2(1):
[D]ilution, in relation to a
trade mark, means the
lessening of the capacity of
the trade mark to identify and
distinguish goods or services,
regardless of whether there
is
(a) any competition
between the proprietor of
the trade mark and any
other party; or
(b) any likelihood of
confusion on the part of
the public. [emphasis
added]
At [224]:
Dilution in the context of the
current [Trade Marks Act]
clearly refers to dilution by
blurring and dilution by
tarnishment.
Table 4: Judicial Interpretation of the Anti-Dilution Provisions in the

Trade Marks Act (Cap 332, 2005 Rev Ed)
44
Three other reasons were offered by the Court of Appeal in
Amanusa for reading a requirement of public confusion into
section 55(3)(a), the damaging connection condition, and importing
dilution-by-tarnishment into the definition of dilution in section 2(1)
92
of the Trade Marks Act. First, it was thought that the two forms of
confusion-free dilution harm ought to be available to the same category
of trade marks that is, trade marks that are well known to the public at
large. Section 55(3)(a) of the Trade Marks Act was available to trade
mark proprietors of merely well known [sic] trade marks, whereas,
section 55(3)(b) was limited to trade marks that were well known to
the public at large in Singapore. The court could not accept that one
form of anti-dilution protection (dilution by tarnishment) could be
available to all well-known trade marks but the other form (dilution by
92
Cap 332, 2005 Rev Ed.

(2012) 24 SAcLJ

in Singapore
1049
blurring) was only available to a smaller class of extremely well-known

93
trade marks.
45
Second, the Court of Appeal took the view that the protection
offered to well-known trade marks in section 55(3)(a) of the Trade
Marks Act had to be dependent on proof of public confusion, so as to
maintain consistency with the other confusion-dependent trade mark
infringement provisions elsewhere in the Trade Marks Act available to
proprietors of well-known trade marks. They reasoned that anomalous
situations would arise if confusion were not read into section 55(3)(a)
of the Trade Marks Act. A plaintiff who relied on section 27(3) of the
Trade Marks Act to sue for trade mark infringement would have to
prove confusion (as required by under that statutory provision), but
would not need to show a likelihood on confusion if he chose to seek an
injunction under section 55(3)(a) instead. In the Court of Appeals view,
[t]here is no reason why the confusion requirement should not apply
94
across the board to all these sections.
2005 Rev Ed)
Section 27(3)
A person infringes a registered trade mark which is

well known in Singapore if
(a) [unauthorised use of identical/similar mark
on dissimilar goods];
(b) the use of the trade mark in relation to
those goods or services would indicate a connection
between those goods or services and the proprietor;
(c)
there exists a likelihood of confusion on the
part of the public because of such use; and
(d) the interests of the proprietor are likely to be
damaged by such use. [emphases added]
Section 55(2)
the proprietor of a well known [sic] trade mark

shall be entitled to restrain by injunction the use in
Singapore, in the course of trade and without the
proprietors consent, of any trade mark which, or an
essential part of which, is identical with or similar to
the proprietors trade mark, in relation to identical or
similar goods or services, where the use is likely to
cause confusion. [emphasis added]
93
94

1050
Section 55(3)(a)
(2012) 24 SAcLJ
the proprietor of a well known [sic] trade mark

shall be entitled to restrain by injunction the use in
Singapore, in the course of trade and without the
proprietors consent, of any trade mark which, or an
essential part of which, is identical with or similar to
the proprietors trade mark, in relation to any goods
or services, where the use of the trade mark
(a) would indicate a connection between those
goods or services and the proprietor, and is likely to
damage the interests of the proprietor. [emphases
added]
Table 5: Well-Known Trade Mark Infringement Provisions in the

Trade Marks Act (Cap 332, 2005 Rev Ed)
46
Third, as a matter of public policy, the Court of Appeal took the
view that the anti-dilution rights introduced by the Trade Marks
(Amendment) Act 2004 should be available only to the most elite class
of trade marks that were well known to the public at large in Singapore
those trade marks that qualified for protection under section 55(3)(b) of
95
the Trade Marks Act. For trade marks that were regarded as well
known in Singapore and hence eligible for protection under
section 55(3)(a), proof of confusion had to be shown because it was
not too difficult for a trade mark to be regarded as well known in
Singapore [as it] need only be recognised or known by any relevant
sector of the public in Singapore, which sector could in certain cases
96
be miniscule. Thus, in order for non-confusion-based anti-dilution
97
protection to be the preserve of a rare a privileged few, it was thought
necessary to exclude dilution by tarnishment from the scope of
section 55(3)(a) and to shunt this form of misconduct into the unfair
98
dilution limb of section 55(3)(b)(i) of the Trade Marks Act.
47
Taking the first and third reason together, it is plainly debatable
whether anti-dilution rights should only be available to the smaller class
of well-known trade marks (those that are well known to the public at
large) than all well-known trade marks. All well-known trade marks are
vulnerable to tarnishment, and this could take place with or without the
public being confused into associating the defendants goods or services
with the proprietor of the well-known trade mark. Even where it is not
part of the elite class of trade marks that are well known to the public at
large, a well-known trade mark may still be harmed by the tarnishing
acts of third parties using the same or similar marks that do not
engender public confusion. For example, a trade mark used on infant
formula and powdered milk that is well known amongst mothers of
95
96
97
98
Cap 332, 2005 Rev Ed.

Cap 332, 2005 Rev Ed.

(2012) 24 SAcLJ

in Singapore
1051
newborn babies could very plausibly suffer tarnishment, if the same or

similar mark were used by third parties on insecticide or ant traps, and
if these mothers started making mental associations (without being
confused in any way) between these pest-control poisons and the
proprietor of the well-known trade mark. Why should such non-elite
well-known trade marks be denied protection from dilution by
tarnishment?
48
Furthermore, it is not entirely illogical to make protection
against dilution by tarnishment available to all well-known trade marks,
but to confine protection against dilution by blurring to the smaller
class of trade marks that are well known to the public at large. This is
because tarnishment is a form of harm that can be realistically
contemplated in any case involving a well-known trade mark that has
built up a reputation around itself. On the other hand, blurring is a
form of harm that should only be associated with the most elite
well-known trade marks, simply because the mark needs to have
acquired such an extreme degree of distinctiveness that it becomes
vulnerable to this type of dilution. This goes back to a point made
earlier that, while they may be related, dilution by tarnishment and
dilution by blurring are legally and conceptually distinct forms of
misconduct and their availability to proprietors of well-known trade
marks should be evaluated independently of each other.
49
As for the second reason which is based on an argument of
consistency it is submitted that more attention should have been paid
to the linguistic differences between section 55(3)(a) and sections 27(3)
99
and 55(2) of the Trade Marks Act, bearing in mind the bigger picture
behind the Trade Marks (Amendment) Act 2004, which introduced
anti-dilution rights into the Singapore trade marks regime. An
insistence on complete symmetry between these provisions, which
resulted in the reading of a confusion requirement into section 55(3)(a)
by the court, seems unwarranted, given that the broader objective
underlying the introduction of section 55(3)(a) was to enhance the
position of well-known trade mark proprietors by adding to the suite of
pre-existing statutory provisions (which are confusion-dependent) that
protect this special class of trade marks. Seen in this light, the lack of an
explicit reference to the confusion requirement in section 55(3)(a),
which was inserted into the statute when the Trade Marks
(Amendments) Act 2004 was enacted, strikingly differentiates it from
the sections 27(3) and 55(2) of the Trade Marks Act. More significance
ought to have been given to the absence of the confusion requirement in
section 55(3)(a), in contrast with the elements of confusion explicitly
required under sections 27(3) and 55(2)(a), and this new statutory
99
Cap 332, 2005 Rev Ed.

1052
(2012) 24 SAcLJ
provision could have been interpreted in a way that gave it a meaningful

role that was not performed by the pre-existing sections 27(3) and 55(2)
of the Trade Marks Act.
V.
Copyright Incorporated bodies as authors
50
In Pioneers & Leaders (Publishers) Pte Ltd v Asia Pacific
100
Publishing Pte Ltd (Pioneers & Leaders), the plaintiff company, who
was the publisher of a popular horse racing publication known as
Punters Way, had sued the defendant, a rival publisher of a very
similar magazine entitled Racing Guide, for both copyright
infringement and under the tort of passing off. The plaintiff succeeded
in both actions before the High Court, but these decisions were
101
subsequently overturned by the Court of Appeal. The plaintiff asserted
copyright in the tables of information, as literary compilations, found in
Punters Way, which the defendant had reproduced in Racing Guide.
One of the key issues litigated was the plaintiff s claim to be entitled, as
a corporate entity, to sue for copyright infringement as author of these
literary works. The defendant challenged the plaintiff s claim to
authorship on the basis that only natural persons and not an
incorporated entity [was allowed] to be an author of copyright
102
protected works. The High Court held that the plaintiff, as an
incorporated body, could qualify as an author for the purposes of
103
copyright law, while the Court of Appeal reached the opposite
104
conclusion.
51
In this case, the courts had to determine if non-human legal
entities such as corporations could qualify as authors entitled to
copyright protection under the Copyright Act. As the statute did not
provide a specific definition of who was, or could be, an author for the
105
purposes of copyright infringement claims, the courts had to deduce
the answer to this fundamental legal issue by surveying the other
provisions in the statute that dealt with other matters related to
copyright subsistence. In essence, the task faced by the courts was to
100 [2010] 4 SLR 744 (HC).
101 Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011]
4 SLR 381 (CA).
102 Pioneers & Leaders (Publishers) Pte Ltd v Asia Pacific Publishing Pte Ltd [2010]
4 SLR 744 (HC) at [16].
4 SLR 744 (HC) at [31].
4 SLR 381 (CA) at [82] and [95].
105 The only guidance offered by the statute is s 7 of the Copyright Act (Cap 63,
2006 Rev Ed), which states that an author, in relation to a photograph, means the
person who took the photograph.
(2012) 24 SAcLJ

in Singapore
1053
interpret the meaning and scope of a specific word (author) used

throughout the Copyright Act to address a very basic legal question:
whether a company, as non-human legal entity, can be regarded as the
author of a copyright work. Unlike the patent and trade mark cases
discussed above, this case did not involve the construction of any
particular statutory provision; neither did it involve the courts
deliberately adding to, ignoring or changing the literal wording found in
the legislative framework. However, in divining the meaning of the
author within the context of the copyright statute, the courts in this
copyright case were ultimately engaged in the same kind of
interpretative exercise that was carried out in the patent and trade mark
cases discussed above: they were also trying to decipher the meaning of
the statutory language used in parts of an IP statute in a way that was
internally consistent with the other parts of the statute and which
cohered logically with the overall scheme underlying the legislative
framework.
52
The High Court based its decision that the plaintiff, an
incorporated body, could qualify as an author for copyright law
purposes on a number grounds. First, while section 27(2) of the
106
Copyright Act provided that one of the instances in which copyright
subsisted was when the author was a qualified person at the relevant
time, which is statutorily defined as a citizen of Singapore or person
107
resident in Singapore, this provision was only concerned with setting
out the connecting factors necessary to demonstrate a sufficient
connection between the copyright work and Singapore to warrant
108
protection under the Copyright Act. The High Court reasoned that
there was no statutory provision that exhaustively states that the only
author relevant for all purposes of the Copyright Act must be a
qualified person, so there was nothing in this provision that prevented
109
the court from regarding an incorporated body as an author.
Support for this view was drawn from section 2 of the Interpretation
110
Act, which defines person to include any company or association or
body of persons, corporate or unincorporated, in addition to the fact
that there was no statutory provision in the Copyright Act which stated
111
that an author must necessarily be a living person.
106 Cap 63, 2006 Rev Ed.
107 The other alternative connecting factor that could be used to justify copyright
subsistence was whether first publication of the work took place in Singapore. See
s 27(2)(c) of the Copyright Act (Cap 63, 2006 Rev Ed).
4 SLR 744 (HC) at [26].
4 SLR 744 (HC) at [25].
110 Cap 1, 2002 Rev Ed.
111 In response, the Court of Appeal expressed the view that this definition of a
person given by the Interpretation Act was only to be used to the extent that it
1054
(2012) 24 SAcLJ
53
Second, the High Court relied on an earlier decision, in Alteco
Chemical Pte Ltd v Chong Yean Wah (Alteco Chemical), to support the
view that non-living legal persons such as a parent company that
made the arrangements and paid for a design agency to create the
packaging for its products could also be regarded as authors as a
matter of common sense and the principles of common law as well as
112
equity. Alteco Chemical was relied on because it purported to
articulate a modern meaning to the word author [such that] the
term author should be widely interpreted to include the only person
113
whose interest it was intended to protect, a definition that was
therefore broad enough to include incorporated entities as well as
natural persons, thereby enabling the court to find that a company was
114
the author of a work made by its human employees.
54
Third, when faced with the public policy objection that
recognising incorporated companies as authors could result in perpetual
copyright because the duration of copyright protection was pegged to
70 years after the death of the author, and companies may exist
115
indefinitely, the High Court expressed the view that there was no
difficulty with the duration of the copyright owned by an incorporated
entity [because copyright duration would] run from the moment the
alleged Works had been published, and to be consistent with the regime
set by the statutory provisions in the Copyright Act, the relevant period
would be 70 years from the (expiration of the calendar) year in which
116
the work was first published. This proposition, that works with
112
113
114
115
116
was consistent with how this expression was interpreted within the internal
context of the relevant [Copyright] statute, that in interpreting statutes, the
general ordinarily gives way to the special or particular. See Asia Pacific Publishing
Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011] 4 SLR 381 (CA) at [53]. In
other words, for the purposes of the Copyright Act, an author must necessarily
be a person, and it was wrong to look outside the statute for definitions to
determine whether this could include non-human and non-living persons.
[1999] 2 SLR(R) 915 at [26].
Pioneers & Leaders (Publishers) Pte Ltd v Asia Pacific Publishing Pte Ltd [2010]
4 SLR 744 (HC) at [29], citing the Alteco Chemical Pte Ltd v Chong Yean Wah
[1999] 2 SLR(R) 915 decision at [26].
The Court of Appeal unequivocally rejected this line of reasoning, citing the chorus
of academics who have questioned the correctness of the decision, and finally
declared that Altecos innovative tailoring of the term author ought not to be
followed. See Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte
Ltd [2011] 4 SLR 381 at [69][70]. In Alteco Chemical Pte Ltd v Chong Yean Wah
[1999] 2 SLR(R) 915, what the court had tried to do was to make a company legally
entitled to ownership of the copyright work in question which could have been
achieved by way of a constructive trust or some other transfer of property rights to
the company. It had not been necessary for the court to tinker with the concept of
authorship to allow a company to qualify as an author.
See s 28(2) of the Copyright Act (Cap 63, 2006 Rev Ed).
Pioneers & Leaders (Publishers) Pte Ltd v Asia Pacific Publishing Pte Ltd [2010]
4 SLR 744 (HC) at [34].

(2012) 24 SAcLJ

in Singapore
1055
corporate authors would enjoy copyright protection for 70 years from

their date of first publication, was conjured up with reference to the
statutory provisions in the Copyright Act, which provided for 70-year
terms of protection for unpublished works of deceased authors
117
(section 28) and anonymous or pseudonymous works (section 29).
55
Finally, the High Court relied on section 131 of the Copyright
118
Act to support its view that there was a presumption that the plaintiff
was the author of the alleged Works as the plaintiff s name appeared in
the [Punters World] publications and that [t]he burden lies on the
119
defendant to prove otherwise. However, as pointed out by the Court
of Appeal subsequently, this statutory presumption was not applicable
to this case because the plaintiff s name appeared as publisher rather
120
than as author of Punters Way. What the plaintiff could have tried
to rely on was another statutory presumption in section 132 of the
121
Copyright Act, which provides that a named publisher was presumed
to be the owner of the copyright in the work at the time of publication,
but the Court of Appeal held that such a presumption had little or no
role to play where the question of subsistence of copyright in each of the
works is the central issue between the parties and that since
authorship is in dispute and the [plaintiff] has adduced evidence
that copyright does not subsist in the Tables since there is no author, the
122
[section] 132 statutory presumption has been displaced.
117 Copyright Act (Cap 63, 2006 Rev Ed). As the Court of Appeal was quick to point
out, these statutory provisions in the Copyright Act had nothing to do with the
case at hand because these provisions dealt with posthumous publications and
anonymous or pseudonymous works. Moreover, [s]uperimposing [these statutory
provisions] onto the factual matrix at hand would be wrong as these provisions
plainly do not contemplate scenarios where an incorporated body is an author.
See Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011]
4 SLR 381 at [62][63].
118 Section 131 of the Copyright Act (Cap 63, 2006 Rev Ed) (presumptions in relation
to authorship of work) provides that [w]here a name purporting to be that of the
author of a work appeared on copies of the work as published the person
whose name so appeared shall be presumed, unless the contrary is
established, to be the author of the work.
4 SLR 744 (HC) at [35][36].
120 See Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011]
4 SLR 381 (CA) at [85].
121 Cap 63, 2006 Rev Ed.
122 See Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011]
4 SLR 381 at [90][91]. The Court of Appeal relied on the Federal Court of
Australias decision in Telstra Corp Ltd v Phone Directories Co Pty Ltd [2010]
FCAFC 149 at [39], which held that [i]f an author or authors cannot be
identified at all, in contradistinction to a situation where the authors or authors
exact identity cannot be identified, copyright cannot subsist.
1056
(2012) 24 SAcLJ
56
On appeal, the High Courts attempt in Pioneers & Leaders to
interpret the meaning of author to include incorporated entities was
swiftly rejected by the Court of Appeal barely 12 months later. Looking
at the historical and legislative policy considerations undergirding this
issue, the Court of Appeal observed that the starting point of copyright
is a human author and since the duration of copyright protection has
always been based on the authors life expectancy it [was] patently
clear that incorporated bodies were never contemplated to have been
123
authors for the purposes of copyright. Allowing non-living legal
persons like companies to be regarded as authors of copyright works
opened up the possibility of a perpetual monopoly [that] would be
contrary to the underlying policy of the [Copyright] Act which is to
accord copyright protection for a limited duration that best strikes a
balance between the competing public and private interests, leading the
appellate court to conclude that an author must be a natural person
124
for the purposes of copyright law.
57
By promptly correcting the High Courts erroneous
interpretation of a fundamental legal concept who can be regarded as
an author the Court of Appeal restored order to the copyright realm
and avoided unsettling other closely related foundational principles
underpinning the Singapore copyright regime originality (a legal
criterion that is satisfied by demonstrating the exercise of authorial skill,
effort and labour) and works (subject matter that is produced by acts
of authorship). What Pioneers & Leaders illustrates is how unbridled
judicial creativity may result in the courts going too far when
constructing a statutorily undefined word that could have, but for the
intervention of the appellate court, shaken the conceptual foundations
of the copyright regime by departing from the natural, ordinary and
4 SLR 381 at [59][60].
4 SLR 381 at [59][60], [64] and [72]. By adopting this interpretation of the word
author and limiting its scope to only natural persons, the Court of Appeal has
aligned Singapores copyright law with the position implicitly taken by the
High Court of Australia. See IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009]
HCA 14 at [98] where it was observed, albeit in passing, that author should be
regarded as the person who brings the copyright work into existence in its
material form (citing Hugh Laddie, Peter Prescott & Mary Vitoria, The Modern
Law of Copyright (Butterworths, 1980) at p 243, para 6.6). For a more detailed
analysis of the authorship issues arising from the courts decisions in Pioneers &
Leaders (Publishers) Pte Ltd v Asia Pacific Publishing Pte Ltd [2010] 4 SLR 744 (HC)
and Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011]
4 SLR 381 (CA), see George Wei, Copyright 20062010: A Return to Basic
Principles and Issues in SAL Conference 2011: Developments in Singapore Law
between 2006 and 2010 Trends and Perspectives (Yeo Tiong Min, Hans Tjio &
Tang Hang Wu eds) (Academy Publishing, 2011) at para 37.
(2012) 24 SAcLJ

in Singapore
1057
commonly understood meaning of author a human being who

expresses himself through words, images or other media.
VI.
Interpreting intellectual property statutes sensibly

Some concluding thoughts
58
As the cases discussed above might suggest, judicial encounters
with Singapores IP statutes can yield statutory interpretations that
range from the mildly disquieting to the wildly disconcerting. Judicial
creativity with such statutory language has led the courts to disregard
the plain and ordinary meaning of the words used in a statutory
provision, to read in additional legal requirements to narrow the scope
of a statutory provision, to add to the statutory definition of a key legal
concept and to assign a problematic meaning to a statutorily undefined
term. These are all examples of the kinds of legal gymnastics that
125
Phang J (as he then was) explicitly cautioned against in Nation Fittings
and should not be encouraged as they stray beyond the boundaries of
purposive interpretation into the realm of lawmaking.
59
Judicial approaches towards interpreting IP statutes should seek
to give effect to the plain and ordinary meaning of the legislative
language actually expressed in the relevant statutory provision, unless
doing so would clearly contradict the underlying policy of the
legislation. Even so, care should be taken when assigning meaning to a
statutory provision that is not readily apparent from the actual wording
that Parliament has chosen to use, and serious thought ought to be
given to whether this is necessary in the first place or if the desired
126
result can be achieved by other means instead.
60
Given that IP statutes are relied upon to define the limits of the
proprietary rights conferred upon IP owners, the courts should avoid
generating unnecessary uncertainty by introducing additional subject
matter that has not been expressly drafted into the statutory provisions
under scrutiny, where doing so would substantially change the character
or scope of their contents. Reading additional elements into a statutory
provision that gives an IP owner a right of action should be avoided if
the outcome of doing so would significantly narrow the scope of legal
protection, which the original statutory text plainly purported to confer
upon the IP owner. Neither should a court take it upon themselves to
alter or expand the definition given to key legal terms used in a statute
125 See Nation Fittings (M) Sdn Bhd v Oystertec plc [2006] 1 SLR(R) 712 and the
accompanying text of n 12 above.
126 See paras 1819 above.
1058
(2012) 24 SAcLJ
in order to give effect to what it believes the legislature had intended to

127
say that function can only be performed legitimately by Parliament.
61
Finally, IP statutes should be interpreted in light of their
historical origins and sociolegal context, always bearing in mind the
centrality of the finely calibrated balancing process that needs to take
place between, on the one hand, the interests of IP owners and, on the
other hand, the interests of their rivals, IP users, other third parties and
the wider public interest at large. Courts that fail to appreciate this
bigger picture may inadvertently engage in acts of statutory
interpretation that could throw an IP regime into conceptual disarray
and produce an unsatisfactory state of affairs that may have to be
tolerated until, and unless, an appellate court is given the opportunity to
intervene and set things straight.
127 See paras 3839 above.


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premium placed on legal certainty that is eroded to some extent when

Purposive interpretation of statutory provisions in Singapore

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See Goh Yihan, Statutory Interpretation in Singapore: 15 Years on from

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Fittings (M) Sdn Bhd v Oystertec plc (Nation Fittings) where, in

[2006] 1 SLR(R) 712 at [27].

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An invention shall be taken to involve an inventive step if it is not

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the express prescription in section 15 to employ the same statutory

Definition of state of the

Definition of state of the

Cap 221, 2005 Rev Ed.

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The inventive step

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whether the claimed invention can already be found or if it is already a

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knowledge in the test for obviousness. It is submitted, with respect,

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of the normally skilled but unimaginative addressee in the art at the

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considered is obviousness, the circumstances of publication must be

[1995] RPC 287 at 313.

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The Windsurfing case established that an example of the prior art

Trade marks Anti-dilution rights and well-known

[2009] 3 SLR(R) 216.

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of Intellectual Property Rights (TRIPS Agreement). Between 1999

Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property

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rights available to proprietors of well-known trade marks, and had to

Between 1999 and 2004

After 2004 amendments

Between 1999 and 2004

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goods or services and the

Cap 332, 2005 Rev Ed.

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International developments and legislative antecedents