Bee Cheng Hiang v Fragrance: Copyright Infringement, Fair Dealing & Trademark Act Defence
Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd (BCH) appealed a High Court summary judgment finding them liable for copyright infringement against Fragrance Foodstuff Pte Ltd (Fragrance). The Court of Appeal of Singapore, on 01 November 2002, allowed the appeal, setting aside the summary judgment. The primary legal issues were whether BCH could invoke the defences of honest practices under section 27(6) of the Trademarks Act and fair dealing under section 37 of the Copyright Act. The court found that these issues raised triable questions of fact and law requiring further consideration.
1. Case Overview
1.1 Court
Court of Appeal1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Appeal against summary judgment for copyright infringement. Court of Appeal allowed appeal, finding triable issues on fair dealing and honest practices defences.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd | Appellant, Defendant | Corporation | Appeal Allowed | Won | |
| Fragrance Foodstuff Pte Ltd | Respondent, Plaintiff | Corporation | Summary Judgment Set Aside | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Chao Hick Tin | Judge of Appeal | Yes |
| Tan Lee Meng | Judge | No |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Wong Siew Hong | Infinitus Law Corporation |
| Tan Tee Jim | Allen & Gledhill |
| Elaine Tan | Allen & Gledhill |
4. Facts
- Bee Cheng Hiang (BCH) and Fragrance Foodstuff (Fragrance) are competitors in the 'Bakwa' (barbecue meat) business.
- BCH uses a trademark consisting of the Chinese character 'Xiang' in calligraphic form (mark 'X').
- Fragrance uses a trademark consisting of the Chinese character 'Xiang' in a graphical/stylized manner (mark 'Y').
- Fragrance's mark 'Y' was created in 1994 and registered as a trademark in 1995.
- BCH published a notice in newspapers stating that BCH and Fragrance are not related companies.
- The notice reproduced both mark 'X' and mark 'Y'.
- BCH claimed the notice was prompted by public confusion between the two companies.
5. Formal Citations
- Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd v Fragrance Foodstuff Pte Ltd, CA No 43 of 2002, [2002] SGCA 47
6. Timeline
| Date | Event |
|---|---|
| Bee Cheng Hiang's business started. | |
| Fragrance Foodstuff Pte Ltd incorporated. | |
| Mark 'Y' created by Chionh Cher Tin. | |
| Fragrance registered mark 'Y' as a trade mark under class 30. | |
| Advertisement of notice appeared in newspapers. | |
| Lianhe Zaobao ran a news report on the notice. | |
| Chionh formally assigned his copyright in the work to Fragrance. | |
| Court of Appeal allowed the appeal. |
7. Legal Issues
- Copyright Infringement
- Outcome: The court found that there were triable issues regarding the defence of fair dealing under section 37 of the Copyright Act.
- Category: Substantive
- Fair Dealing Defence
- Outcome: The court held that the question of whether the publication of the notice was fair dealing for the purpose of reporting current events raised issues of fact and law that should not be determined summarily.
- Category: Substantive
- Related Cases:
- [1972] 2 QB 84
- [1998] FSR 43
- [1991] 21 IPR 503
- Honest Practices Defence
- Outcome: The court found that the applicability of section 27(6) of the Trademarks Act to copyright infringement actions raised complex issues requiring mature consideration.
- Category: Substantive
- Related Cases:
- 6 IPR 279
- (1986) 6 IPR 102
- Summary Judgment
- Outcome: The court determined that summary judgment was inappropriate because there were triable issues of fact and difficult questions of law requiring mature consideration.
- Category: Procedural
- Related Cases:
- (1880) 41 LTR 720
- [1983] 1 WLR 642
- [1990] 1 WLR 153
8. Remedies Sought
- Injunction
- Damages
9. Cause of Actions
- Copyright Infringement
10. Practice Areas
- Intellectual Property Litigation
- Copyright Infringement
- Trademark Infringement
11. Industries
- Food and Beverage
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| RA & A Bailey & Co Ltd v Boccaccio Pty Ltd & Ors | Supreme Court of New South Wales | Yes | 6 IPR 279 | Australia | Discusses the interaction between copyright and trademark law, but distinguished on the facts. |
| British Leyland Motor Corporation Ltd & Ors v Armstrong Patents Co Ltd & Ors | House of Lords | Yes | (1986) 6 IPR 102 | United Kingdom | Discusses the principle of non-derogation from grant and implied license in the context of copyright. |
| Hubbard v Vosper | N/A | Yes | [1972] 2 QB 84 | N/A | Discusses the defence of fair dealing in copyright law. |
| Pro Sieben Media AG v Carlton UK Television Ltd | N/A | Yes | [1998] FSR 43 | United Kingdom | Discusses the scope of 'reporting current events' in the context of fair dealing. |
| BBC v British Sky Broadcasting Ltd | N/A | Yes | [1991] 21 IPR 503 | United Kingdom | Discusses the application of the fair dealing defence to commercial rivals. |
| Thompson v Marshall | N/A | Yes | (1880) 41 LTR 720 | N/A | Cited for the principle that the main object of summary judgment is to prevent delay and to enable a plaintiff to obtain a quick judgment where there is plainly no defence to the claim. |
| European Asian Bank AG v Punjab and Sind Bank (No. 2) | N/A | Yes | [1983] 1 WLR 642 | N/A | Cited for the principle that the main object of summary judgment is to prevent delay and to enable a plaintiff to obtain a quick judgment where there is plainly no defence to the claim. |
| Home and Overseas Insurance Co Ltd v Mentor Insurance Co (UK) Ltd (In Liquidation) | N/A | Yes | [1990] 1 WLR 153 | N/A | Cited for the principle that the main object of summary judgment is to prevent delay and to enable a plaintiff to obtain a quick judgment where there is plainly no defence to the claim. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Tradmarks Act (Cap 332), section 27(6) | Singapore |
| Copyright Act (Cap. 63), section 37 | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Bakwa
- Copyright Infringement
- Fair Dealing
- Honest Practices
- Summary Judgment
- Trade Mark
- Xiang
15.2 Keywords
- copyright infringement
- trademark
- fair dealing
- summary judgment
- intellectual property
- Bee Cheng Hiang
- Fragrance Foodstuff
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Copyrights | 90 |
| Trademarks | 85 |
| Civil Procedure | 70 |
| Contract Law | 30 |
16. Subjects
- Intellectual Property
- Copyright
- Trademark
- Civil Procedure