NG SAY KEONG v JIA LE ALUMINIUM PTE. LTD. & Anor

Facts

Ng Say Keong trades as S & K Solid Wood Doors, a business registered in 2006 that sells slide-and-swing doors known as SK Doors. He owns a Singapore patent for a sliding door system, filed on 27 March 2014 and granted on 29 October 2015. Jia Le Aluminium Pte Ltd and 9 Power Aluminium & Glass Pte Ltd share directors and premises and sell aluminium doors. Since 2023 they have sold slide-and-swing "SD Doors" made by a Malaysian company, Supreme Door, set up by Mr Goh, a former supervisor in Mr Ng's business; 9 Power had earlier bought and resold SK Doors.

In Originating Claim No 155 of 2024, tried on liability only, Mr Ng alleged that the SD Door infringed his patent and that the defendants passed off their doors as his. He relied in part on a private investigator's visit to the defendants' showroom on 1 August 2023, where a 9 Power salesman showed him a door described as an SK Door and later sold him a door that turned out to be an SD Door. The defendants denied any misrepresentation and counterclaimed that the patent was invalid for lack of novelty and inventive step over a Japanese patent published on 24 February 2005. The parties appointed a joint neutral patent expert, who considered the main claim valid but the dependent claims invalid, and found the SD Door did not infringe.

Issues

1. Whether the patent was valid over the Japanese prior art, both as to novelty and inventive step.
2. Whether the SD Door infringed the patent.
3. Whether the defendants were liable in passing off for misleading customers into thinking their doors came from or were connected with Mr Ng's business.

Holding

The High Court allowed the claim in part: it held that the patent was valid but not infringed, and found both defendants liable for passing off. It granted an injunction restraining them from passing off doors by reference to the SK names or representing a connection with Mr Ng, refused delivery up or destruction, and left damages or an account of profits for a later assessment, with costs to be heard separately.

Reasoning

On validity, the parties agreed claim 1 was novel and inventive, and the court agreed, as the Japanese patent did not disclose the interlocking top and bottom bar features. The court rejected the expert's view on claims 2 to 5: each incorporates every feature of the valid claim 1, so each is also novel and inventive. The patent examiner's earlier view could not bind the court, which must assess validity for itself.

On infringement, the court accepted the expert's reading that the claim requires an elongated slot in the bottom bar of both panels and abutments extending from one end of each base. The SD Door had a slot in only one panel's bar, and its abutments ran along the bars instead of extending from one end. Mr Ng's competing readings strained the claim language, so claim 1, and with it the dependent claims, was not infringed.

On passing off, goodwill was not disputed. Though "SK" is a common letter pair, it had acquired distinctiveness through nearly two decades of use and promotion. The court preferred the investigator's evidence to the salesman's. It found that an SK Door covered with labelled finish samples was being used as a showroom sample, that "SK" appeared on order forms given to customers, and that the choice of "SD", which matched Mr Ng's own product codes, was not a coincidence. This showed an intention to confuse, and the conduct was attributable to both companies. The lack of evidence from confused customers was not fatal, and hearsay about a customer's relative was disregarded. Damage was inferred from direct competition, though tarnishment was not proved.

From the judgment