Nagasima Electronic Engineering v APH Trading: Design Infringement of Electrical Isolator

Nagasima Electronic Engineering Pte Ltd sued APH Trading Pte Ltd in the High Court of Singapore, alleging infringement of its registered design for an electrical isolator. APH Trading denied infringement and counterclaimed for invalidation of the design registration. Lai Kew Chai J. dismissed Nagasima's claim, finding the design lacked novelty and was functionally dictated, thus invalidating the registration. The court also found no infringement because APH Trading's product was substantially different.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Claim dismissed. Counterclaim allowed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Nagasima sued APH Trading for design infringement of its electrical isolator. The court dismissed the claim, finding the design invalid and no infringement.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Nagasima Electronic Engineering Pte LtdPlaintiffCorporationClaim DismissedDismissed
APH Trading Pte LtdDefendantCorporationCounterclaim AllowedWon

3. Judges

Judge NameTitleDelivered Judgment
Lai Kew ChaiJudgeYes

4. Counsels

Counsel NameOrganization
Sarbjit Singh ChopraLim and Lim
Muna Mohamad TalibLim and Lim
Toh Kok SengLee and Lee
Tung Yang ThongLee and Lee

4. Facts

  1. The plaintiff claimed the defendant's electrical isolator infringed its registered design.
  2. The defendant denied infringement and alleged the design registration was invalid.
  3. The electrical isolator splits TV and FM input into TV/FM ports and is embedded in the wall.
  4. The design was registered in the UK and deemed a registered design in Singapore.
  5. The statement of novelty excluded the L-shaped jack plug.
  6. The plaintiff and defendant are leading manufacturers of electrical isolators in Singapore.
  7. HDB decided in 2000 to embed electrical isolators in walls of flats.

5. Formal Citations

  1. Nagasima Electronic Engineering Pte Ltd v APH Trading Pte Ltd, Suit 158/2004, [2005] SGHC 59

6. Timeline

DateEvent
Design registered in the UK with registration date of 2 August 2000
Design registered in the UK on 11 August 2000
Suit filed (Suit 158/2004)
Judgment reserved

7. Legal Issues

  1. Design Infringement
    • Outcome: The court found no infringement because the defendant's product was substantially different from the plaintiff's registered design.
    • Category: Substantive
  2. Novelty of Design
    • Outcome: The court found that the registered design was not novel over the prior art.
    • Category: Substantive
  3. Functional Exclusion of Design
    • Outcome: The court found that the features of the design were dictated solely by the function which the article had to perform, thus excluding it from registration.
    • Category: Substantive
  4. "Must Fit" Exclusion of Design
    • Outcome: The court found that the design was shaped in a way to fit the casing box and the face plate, thus subject to the 'must fit' exclusion.
    • Category: Substantive

8. Remedies Sought

  1. Injunction
  2. Delivery up
  3. Accounts
  4. Damages
  5. Order that the registration be declared invalid

9. Cause of Actions

  • Design Infringement

10. Practice Areas

  • Intellectual Property Litigation
  • Design Infringement

11. Industries

  • Electronics
  • Manufacturing
  • Construction

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Hunter Manufacturing Pte Ltd v Soundtex Switchgear & Engineering Pte LtdCourt of AppealYes[2000] 1 SLR 401SingaporeCited regarding the approach to determining design infringement and assessing essential features of a registered design.
Amp Incorporated v Utilux Proprietary LimitedHouse of LordsYes[1971] FSR 572United KingdomCited regarding the interpretation of 'dictated solely by the function' in design law, specifically rejecting a narrow interpretation.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Registered Designs Act (Cap 266, 2001 Rev Ed)Singapore
s 5(2) Registered Designs Act (Cap 266, 2001 Rev Ed)Singapore
s 2(1) Registered Designs ActSingapore
s 2(1)(b)(i) Registered Designs Act (Cap 266, 2001 Rev Ed)Singapore
s 2(1)(b)(iii) Registered Designs Act (Cap 266, 2001 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Electrical isolator
  • Registered design
  • Design infringement
  • Statement of novelty
  • Prior art
  • Functional exclusion
  • Must fit exclusion
  • Face plate
  • Jack plug
  • TV/FM ports

15.2 Keywords

  • design
  • electrical isolator
  • infringement
  • registered design
  • novelty
  • functional exclusion
  • must fit

17. Areas of Law

Area NameRelevance Score
Design Infringement90
Registered Designs85
Intellectual Property Law75
Trademarks30
Property Law20
Contract Law15
Breach of Contract15

16. Subjects

  • Design Registration
  • Design Infringement
  • Intellectual Property