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CASE OF THE WEEK

COPYRIGHT: Infringement - Ownership of copyright - Whether there was infringement of copyright - Photographs and design drawings advertised - Whether there was reproduction of substantial part of original in alleged infringing copy - Whether plaintiff established prima facie subsistence of copyright in drawings

PATENTS: Infringement - Whether defendants' product infringed patent - Patent combination of new features and prior art - Distinctive features - Validity - Whether defendants' product shared similarities


BT ENGINEERING SDN BHD v. TEAM UNITED RESOURCES SDN BHD & ANOR
HIGH COURT MALAYA, KUALA LUMPUR
HANIPAH FARIKULLAH JC
[SUIT NO: D-22IP-48-2010]
2 MAY 2012

The plaintiff and the first defendant were both involved in the business of automatic gates. The second defendant initially acted as the plaintiff's consultant before leaving to join the first defendant as its director and shareholder. The events unfolded when the plaintiff patented an improvised invention which aimed to rectify the problem of excessive weight carried by hinges of automatic gates. The essential features of the plaintiff's patent were hinges with horizontal and vertical adjustments, its folding nature and the usage of rollers. When the defendants came up with a design sharing similar characteristics, the plaintiff alleged that the first defendant had infringed the patent and its copyrights of photographs and design drawings. The plaintiff further claimed that the second defendant, as its former employee, had breached confidentiality over the information regarding its price, discount structure and manufacturing technique. The defendants, in turn, sought for an order to revoke the patent for its invalidity and lack of novelty and inventiveness while further contending that the invention was not new. In challenging the novelty of the plaintiff's patent, the second defendant claimed that the automatic folding gate had already existed and had been used in a housing project in 1995, prior to the plaintiff's patent. The issues for determination before the court were: (i) whether the patent was valid; (ii) if it was valid, whether there was infringement on the defendants' part; (iii) if copyright subsisted in the said drawings, whether the defendants infringed the said copyright; and (iv) whether the second defendant had breached the alleged confidential information of the plaintiff's business.

Held (allowing plaintiff's claim with costs; dismissing defendant's counterclaim with costs):

(1) The plaintiff's patent was a combination patent and what was protected was such combination of features. No one has put the features _ the adjustable hinges, the folding feature and the roller _ together on an automatic gate, as the plaintiff had and it was certainly not shown to have been done in any prior art presented by the defendants. Furthermore, no evidence was adduced to support the contention that the automatic folding gate had already existed in 1995. There was no basis in the defendant's contention that the patent should be revoked on the grounds that it was not new and it had been anticipated by prior arts. (paras 41, 43, 44 & 51)

(2) Evidence showed that the defendants' gate was substantively similar to the defendant's product. The essential features of the defendants' gate fell within the descriptions of the plaintiff's automatic folding gate as the integers of the plaintiff's which have been incorporated into the defendant's product. (paras 25, 26, 30 & 31)

(3) Through a statutory declaration, the plaintiff had established prima facie subsistence of copyright in the drawings. Applying the substantial reproduction test, it was found that the defendants' acts of publishing the photographs have infringed the plaintiff's copyright in the design drawings. (paras 58 & 62)

(4) It was clear from the evidence that the defendant had access to the pricing information, discount structure and the manufacturing technique of the plaintiff. The plaintiff had demonstrated that the lists of the plaintiff's sales agents, supplier and the pricing and costing information as confidential and it was evident that there was misuse of this information by the second defendant. (paras 78 & 81)

Case(s) referred to:

Coco v. AN Clark (Engineers) Ltd [1969] RPC 41 (refd)

Codex Corporation v. Racal-Milgo Limited [1983] RPC 369 (refd)

Electro Cad Australia Pty Ltd & Ors v. Mejati RCS Sdn Bhd & Ors [1998] 3 CLJ Supp 196 (refd)

Faccenda Chicken v. Fowler [1985] FSR 105 (refd)

General Tire & Rubber Co v. firestone & Rubber Co Ltd [1972] RPC 457 (refd)

General Tire & Rubber Co v. Firestone Tyre & Rubber Co Ltd [1972] RPC 457 (refd)

King Features Syndicate, Inc and Another v. O and M Kleeman, Limited [1941] AC 417 (refd)

Lim Choong Huat & Ors v. Syntlz Enterprise Sdn Bhd & Ors [2010] 1 CLJ 860 HC (refd)

Pope Appliance Corpn v. Spanish River Pulp and Paper Mills Ltd [1929] AC 269 (refd)

Regent Decorators (M) Sdn Bhd & Anor v. Michael Chee Keng Theng & Ors [1984] 2 CLJ 296; [1984] 2 CLJ (Rep) 441 HC (refd)

Rodi & Wienenberger AG v. Henry Showell Ltd [1969] 12 RPC 367 (refd)

Schmidt Scientific Sdn Bhd v. Ong Han Suan & Ors [1998] 1 CLJ 685 HC (refd)

SKB Shutters Manufacturing Sdn Bhd v. Seng Kong Shutter Industries Sdn Bhd & Anor [2011] 4 CLJ 93 HC (foll)

Svenson Hair Center Sdn Bhd v Irene Chin Zee Ling [2008] 8 CLJ 386 HC (refd)

Synthon BV v. SmithKline Beecham Plc [2005] UKHL 59 (refd)

The Allmanna Svenska Eletriska Aktiebolaget v. Burntisland Shipbuilding Company Ltd [1952] 69 RPC 63 (refd)

Worldwide Rota Dies Sdn Bhd v. Ronald Ong Cheow Joon [2010] 1 LNS 444 HC (refd)

Legislation referred to:

Copyright Act 1987, s. 13(1)(a)

Rules of the High Court 1980, O. 5 r. 6(2)

Other source(s) referred to:

Intellectual Property Law, 2nd edn, 2004, para 3.2.1, p 449

Counsel:

For the plaintiff - Rajendra Navaratnam (Choo Mun Wei with him); M/s Azman Davidson & Co

For the defendant - In person

Reported by Najib Thamby

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