Vicplas v Allfit: Copyright Infringement, Passing Off, Conspiracy in Solvent Cement Market
Vicplas Holdings Pte Ltd sued Allfit International Market Pte Ltd, Loh Chin Leong Patrick, and Splendour Corporation Pte Ltd in the High Court of Singapore on December 24, 2010, for copyright infringement, passing off, and conspiracy related to its 'P&S' brand of solvent cement. The court heard an appeal by the third defendant against the Assistant Registrar's decision. The High Court allowed the appeal, finding that the plaintiff did not establish goodwill in Singapore, a necessary element for a passing-off claim.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeal Allowed
1.3 Case Type
Civil
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Vicplas sued Allfit for copyright infringement and passing off. The court allowed the appeal, finding no goodwill in Singapore for the product.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Vicplas Holdings Pte Ltd | Plaintiff | Corporation | Claim Dismissed | Lost | |
| Allfit International Market Pte Ltd | Defendant | Corporation | Judgment for Defendant | Won | |
| Loh Chin Leong Patrick | Defendant | Individual | Judgment for Defendant | Won | |
| Splendour Corporation Pte Ltd | Defendant | Corporation | Appeal Allowed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Lai Siu Chiu | Judge | Yes |
4. Counsels
4. Facts
- Vicplas sued Allfit for copyright infringement, passing off, and conspiracy.
- Vicplas manufactures and sells solvent cement under the brand name Vicplas.
- Vicplas also manufactures and sells solvent cement under the brand name P&S, primarily for export.
- The P&S product was sold in Malaysia and Bangladesh but not in Singapore.
- The plaintiff exported the product to its two Bangladeshi customers.
- The defendant was selling a cheaper product with similar packaging.
- Cans labelled with the words “P&S” and/or packaged in a get-up similar to the plaintiff’s get-up for the product were found at the third defendant’s premises.
5. Formal Citations
- Vicplas Holdings Pte Ltd v Allfit International Market Pte Ltd and others, Suit No 204 of 2010 (Registrar's Appeal No 276 of 2010), [2010] SGHC 370
6. Timeline
| Date | Event |
|---|---|
| Allfit International Marketing Pte Ltd incorporated | |
| Vicplas decided to manufacture and sell solvent cement under the brand name 'P&S' | |
| Khurseed stopped ordering the product from the plaintiff | |
| Mahmood received a complaint about cheaper product availability | |
| Plaintiff lodged a complaint under s 133(1) of the Criminal Procedure Code | |
| Search order executed at the third defendant’s premises | |
| Plaintiff’s solicitors wrote cease and desist letters to the first and third defendants | |
| First and third defendants instructed solicitors to ask for time to consider the matter | |
| Defendants’ solicitors denied the plaintiff’s claim | |
| Plaintiff filed suit and obtained ex parte injunction | |
| First and second defendants applied for determination under O 14 r 12 of the Rules of Court | |
| Third defendant applied for prayers under O 18 r 19 of the Rules | |
| Court heard and allowed the Appeal |
7. Legal Issues
- Copyright Infringement
- Outcome: The court found that the artistic work had been industrially applied and therefore no copyright protection.
- Category: Substantive
- Passing Off
- Outcome: The court held that the plaintiff did not have goodwill in Singapore and therefore the claim for passing off could not succeed.
- Category: Substantive
- Conspiracy
- Outcome: The court did not explicitly rule on the conspiracy claim but dismissed the overall action.
- Category: Substantive
8. Remedies Sought
- Injunction
- Damages
9. Cause of Actions
- Copyright Infringement
- Passing Off
- Conspiracy
10. Practice Areas
- Intellectual Property Litigation
- Commercial Litigation
11. Industries
- Manufacturing
- Construction
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Momentum Creations Pte Ltd v Tan Eng Koon t/a De Angeli | High Court | Yes | [2003] 1 SLR(R) 342 | Singapore | Cited regarding overseas goodwill in the product being insufficient for copyright protection in Singapore. |
| JC Penny Co Inc v Punjabi Nick | N/A | Yes | [1979] FSR 26 | N/A | Cited regarding goodwill in Singapore. |
| RH Macy & Co Inc v Trade Accents | N/A | Yes | [1991] 2 SLR(R) 98 | Singapore | Cited regarding goodwill in Singapore. |
| Tiffany & Co v Fabriques de Tabac Reunies SA | N/A | Yes | [1999] 2 SLR(R) 541 | Singapore | Cited regarding goodwill in Singapore. |
| Novelty Pte Ltd v Amanresorts Ltd and Anor | Court of Appeal | Yes | [2009] 3 SLR(R) 216 | Singapore | Cited regarding goodwill existing in a small section of the public being sufficient. |
| Future Enterprises Pte Ltd v Tong Seng Produce Pte Ltd | N/A | Yes | [1997] 3 SLR(R) 797 | Singapore | Cited as authority for the proposition that the product must be available in Singapore and have a local reputation in order to prove that the plaintiff has goodwill in Singapore. |
| The Commissioners of Inland Revenue v Muller & Co’s Margarine Limited | N/A | Yes | [1901] AC 217 | United Kingdom | Cited for the definition of goodwill. |
| Trade Facilities Pte Ltd & Others v Public Prosecutor | N/A | Yes | [1995] 2 SLR(R) 7 | Singapore | Cited regarding sale of product not in Singapore but in Bangladesh sufficing for purposes of establishing goodwill. |
| Alteco Chemical Pte Ltd v Chong Yean Wah | N/A | Yes | [1999] 2 SLR(R) 915 | Singapore | Cited regarding an injunction being granted notwithstanding that there were no trading activities in Singapore. |
| Gabriel Peter & Partners (suing as a firm) v Wee Chong Jin & Others | Court of Appeal | Yes | [1997] 3 SLR(R) 649 | Singapore | Cited regarding when a court would exercise its powers to strike out pleadings under O 18 r 19 of the Rules. |
| Reckitt & Colman Products Ltd v Borden Inc | N/A | Yes | [1990] 1 WLR 491 | N/A | Cited regarding the requirements for passing off. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Criminal Procedure Code (Cap 68, 1980 Rev Ed) s 133(1) | Singapore |
| Rules of Court (Cap 322, R 5, 2006 Rev Ed) O 14 r 12 | Singapore |
| Rules of Court (Cap 322, R 5, 2006 Rev Ed) O 18 r 19 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 30(5) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 7 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 70 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 74 | Singapore |
| Trade Marks Act (Cap 332, 1992 Rev Ed) s 73 | Singapore |
| Registered Designs Act (Cap 266, 2005 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Solvent cement
- P&S brand
- Vicplas brand
- Passing off
- Copyright infringement
- Goodwill
- Artistic work
- Industrial application
- Bangladesh market
15.2 Keywords
- Copyright
- Passing off
- Solvent cement
- Singapore
- Bangladesh
- Goodwill
- Infringement
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Passing Off | 95 |
| Copyrights | 90 |
| Trademarks | 60 |
| Conspiracy by Unlawful Means | 50 |
| Commercial Disputes | 40 |
16. Subjects
- Intellectual Property
- Copyright
- Passing Off
- Trade Law