Singsung Pte Ltd v LG 26 Electronics: Passing Off, Copyright Infringement, Groundless Threats

Singsung Pte Ltd and See Lam Huat commenced proceedings against LG 26 Electronics Pte Ltd and See Lam Seng in the Court of Appeal of Singapore, alleging passing off, copyright infringement, and defamation. LG 26 Electronics Pte Ltd and See Lam Seng counterclaimed for malicious falsehood and groundless threats of copyright infringement. The Court of Appeal allowed Singsung Pte Ltd's appeal against the High Court's decision to dismiss its claim in passing off and for copyright infringement in respect of the White Get-Up Picture and the TV Sticker, and allowing the respondent’s counterclaim for groundless threats of copyright proceedings in respect of the same three works. The court dismissed the appeal against the Judge’s decision in respect of the Blue Get-Up Picture.

1. Case Overview

1.1 Court

Court of Appeal of the Republic of Singapore

1.2 Outcome

Appeal allowed in part.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Singsung sues LG for passing off, copyright infringement. Court allows appeal on passing off, some copyright claims, groundless threats.

1.7 Decision Date

22 May 2016

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Singsung Pte Ltd	Appellant	Corporation	Appeal allowed in part	Partial	Ong Pei Ching of Morgan Lewis Stamford LLC Adrian Tan Gim Hai of Morgan Lewis Stamford LLC Joel Goh Chee Hsien of Morgan Lewis Stamford LLC Loh Jien Li of Morgan Lewis Stamford LLC
LG 26 Electronics Pte Ltd (trading as L S Electrical Trading)	Respondent	Corporation	Appeal dismissed in part	Partial	Philip Ling Daw Hoang of Wong Tan & Molly Lim LLC Kam Kai Qi of Wong Tan & Molly Lim LLC

3. Judges

Judge Name	Title	Delivered Judgment
Sundaresh Menon	Chief Justice	Yes
Chao Hick Tin	Justice of the Court of Appeal	No
Andrew Phang Boon Leong	Justice of the Court of Appeal	No

4. Counsels

Counsel Name	Organization
Ong Pei Ching	Morgan Lewis Stamford LLC
Adrian Tan Gim Hai	Morgan Lewis Stamford LLC
Joel Goh Chee Hsien	Morgan Lewis Stamford LLC
Loh Jien Li	Morgan Lewis Stamford LLC
Philip Ling Daw Hoang	Wong Tan & Molly Lim LLC
Kam Kai Qi	Wong Tan & Molly Lim LLC

4. Facts

Singsung and LG 26 Electronics are competitors in the export of electrical appliances.
Singsung claims LG 26 Electronics' products have get-ups identical or confusingly similar to Singsung's.
LG 26 Electronics' products bear the “LS” mark, while Singsung's products bear the “SINGSUNG” mark.
LG 26 Electronics targeted the same export markets as Singsung.
LG 26 Electronics copied the Singsung Catalogue, including the Swahili Phrase.
Seng admitted to deliberately sourcing and producing items similar to Singsung's goods.
Seng represented to customers that he used to be associated with Singsung.

5. Formal Citations

Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading), Civil Appeal No 135 of 2015, [2016] SGCA 33

6. Timeline

Date	Event
2000-01-01	Johnny and Seng became business partners
2005-01-01	Relationship between Johnny and Seng broke down
2006-04-12	Singsung Pte Ltd incorporated
2007-10-01	Seng registered his business as a sole proprietorship
2011-01-01	LG 26 Electronics Pte Ltd incorporated
2011-04-11	Drew & Napier LLC sent letter to LG 26 Electronics Pte Ltd
2015-07-19	Johnny passed away
2016-02-24	Judgment reserved
2016-05-23	Judgment delivered

7. Legal Issues

Passing Off
- Outcome: The court found that the respondent had engaged in passing off by deliberately copying the appellant's get-up and intending to deceive customers.
- Category: Substantive
- Sub-Issues:
  - Goodwill
  - Misrepresentation
  - Damage
  - Instruments of Deception
  - Distinctiveness
- Related Cases:
  - [1979] 1 AC 731
  - [1990] WLR 491
  - [2009] 3 SLR(R) 216
Copyright Infringement
- Outcome: The court found copyright infringement in the White Get-Up Picture and the TV Sticker, but not in the Blue Get-Up Picture.
- Category: Substantive
- Sub-Issues:
  - Authorship
  - Ownership
  - Subsistence
  - Infringement
  - Originality
  - Substantiality
- Related Cases:
  - [2012] EWPCC 1
  - (1890) 25 QBD 99
  - [2001] 3 SLR(R) 610
Groundless Threats of Legal Proceedings
- Outcome: The court allowed the appeal against the Judge’s decision allowing the respondent’s counterclaim for groundless threats of legal proceedings in respect of the White Get-Up Picture and the TV Sticker, and set aside the Judge’s order on in relation to the respondent’s counterclaim for groundless threats of legal proceedings in respect of the Blue Get-Up Picture.
- Category: Substantive
- Sub-Issues:
  - Justifiable Threats
  - Damages
  - Injunctions
- Related Cases:
  - [2011] 1 SLR 830
  - [2000] FSR 686
  - [1893] RPC 1
  - [2014] FCA 568

8. Remedies Sought

Injunction
Damages
Delivery up or destruction of infringing products
Declaration that the threats are unjustifiable

9. Cause of Actions

Passing Off
Copyright Infringement
Groundless Threats of Legal Proceedings

10. Practice Areas

Intellectual Property Litigation
Commercial Litigation

11. Industries

Electronics
Retail

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Singsung Pte Ltd and another v LG 26 Electronics Pte Ltd (trading as LS Electric Trading) and another	High Court	Yes	[2015] SGHC 148	Singapore	Refers to the High Court decision being appealed.
Erven Warnink Besloten Vennootschap and another v J Townend & Sons (Hull) Ltd and another	House of Lords	Yes	[1979] 1 AC 731	United Kingdom	Cited for the five characteristics of a cause of action in passing off.
Reckitt & Colman Products Ltd v Borden Inc and others	House of Lords	Yes	[1990] WLR 491	United Kingdom	Cited for the classical trinity of goodwill, misrepresentation and damage in passing off.
Novelty Pte Ltd v Amanresorts Ltd and another	Court of Appeal	Yes	[2009] 3 SLR(R) 216	Singapore	Cited for the elements of passing off and the need to show a real tangible risk of substantial damage.
Nation Fittings (M) Sdn Bhd v Oystertec plc and another suit	High Court	Yes	[2006] 1 SLR(R) 712	Singapore	Cited for the elements of the tort of passing off.
The Singapore Professional Golfers’ Association v Chen Eng Waye and others	Court of Appeal	Yes	[2013] 2 SLR 495	Singapore	Cited for the definition of goodwill as the state of the trader’s relationship with his customers.
The Commissioners of Inland Revenue v Muller & Co’s Margarine, Limited	House of Lords	Yes	[1901] AC 217	United Kingdom	Cited for the description of goodwill as the benefit and advantage of the good name, reputation, and connection of a business.
AG Spalding & Bros v A W Gamage Ld	House of Lords	Yes	(1915) 32 RPC 273	United Kingdom	Cited for the principle that the right invaded in passing off actions is a right of property in the business or goodwill likely to be injured by the misrepresentation.
CDL Hotels International Ltd v Pontiac Marina Pte Ltd	High Court	Yes	[1998] 1 SLR(R) 975	Singapore	Cited for the principle that goodwill relevant to a passing off action is not goodwill in the mark, logo or get-up.
Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd (trading as ONE.99 SHOP)	High Court	Yes	[2000] 1 SLR(R) 687	Singapore	Cited for the principle that goodwill, in the context of passing off, is concerned with goodwill in the business as a whole, and not specifically in its constituent elements.
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal	Court of Appeal	Yes	[2014] 1 SLR 911	Singapore	Cited for the principle that goodwill in the law of passing off can be generated by pre-trading activity.
The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd	Court of Appeal	Yes	[2016] SGCA 25	Singapore	Cited for the analysis of distinctiveness in the context of the inquiry into misrepresentation.
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal	Court of Appeal	Yes	[2013] 2 SLR 941	Singapore	Cited for the analysis of distinctiveness in the context of the inquiry into misrepresentation.
T Oertli AG v E J Bowman (London) Ld	House of Lords	Yes	(1959) RPC 1	United Kingdom	Cited for the principle that proof that the name has become distinctive of the plaintiff’s goods is a “condition precedent” to the success of a passing off action.
Starbucks (HK) Limited and another v British Sky Broadcasting Group PLC and others	Supreme Court	Yes	[2015] UKSC 31	United Kingdom	Cited for the principle that customers must be physically located within the court’s jurisdiction before goodwill sufficient to ground an action in passing off may be found.
Singer Manufacturing Company v Loog	Court of Appeal	Yes	(1878 S 148) 18 Ch D 395	United Kingdom	Cited for the principle that no man is entitled to represent his goods as being the goods of another man.
Re: Telmak Teleproducts (Australia) Pty Limited v Coles Myer Limited	Federal Court of Australia	Yes	[1989] FCA 272	Australia	Cited for the principle that distinctiveness of the plaintiff’s mark, get-up or logo may be inferred from proof of an intention on the defendant’s part to deceive consumers by adopting or using a similar mark, get-up or logo.
Australian Woollen Mills Limited v F S Walton and Company Limited	High Court of Australia	Yes	[1937] HCA 51; (1937) 58 CLR 641	Australia	Cited for the principle that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse.
Claudius Ash, Sons & Co Ld v Invicta Manufacturing Company Ld	Court of Appeal	Yes	(1912) 29 RPC 465	United Kingdom	Cited for the principle that where an intention to deceive is found, the court will not be astute to find that the defendant has failed in its purpose.
Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd	Federal Court of Australia	Yes	[2002] FCAFC 157	Australia	Cited for the principle that where a trader, having knowledge of a particular market, borrows aspects of a competitor's get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing.
RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd and others	Court of Appeal	Yes	[2011] 1 SLR 830	Singapore	Cited for allowing a counterclaim for groundless threats of legal proceedings as a form of natural consequential relief where it was found that the plaintiff’s action for copyright infringement failed.
L’Oréal (UK) Ltd and another v Johnson & Johnson and another	High Court	Yes	[2000] FSR 686	United Kingdom	Cited for the principle that the groundless threat provision in each of these Acts is a statutory tort and substantive cause of action that allows a party aggrieved by the threats to bring an action against the threatening party.
Reckitt Benkiser UK v Home Pairfum Ltd and others	High Court	Yes	[2004] EWHC 302 (Pat)	United Kingdom	Cited for the history of groundless threats provisions.
Skinner & Co v Perry	Court of Appeal	Yes	[1893] RPC 1	United Kingdom	Cited for the rationale for providing a remedy for groundless threats.
Leah v Two Worlds Publishing Co Ld	High Court	Yes	[1951] 1 Ch 393	United Kingdom	Cited for the definition of portrait.
Flamelite (S) Pte Ltd and others v Lam Heng Chung and others	High Court	Yes	[2001] 3 SLR(R) 610	Singapore	Cited for the principle that where “rudimentary drawings” are concerned, infringement of copyright would only result if there was “almost an exact reproduction”.
Temple Island Collections Ltd v New English Teas Ltd and another	Patents County Court	Yes	[2012] EWPCC 1	United Kingdom	Cited for the proposition that copyright infringement in a photograph does not require a facsimile reproduction.
Kenrick & Co v Lawrence & Co	Queen's Bench Division	Yes	(1890) 25 QBD 99	United Kingdom	Cited for the principle that the mere choice of subject can rarely, if ever, confer upon the author of the drawing an exclusive right to represent the subject.
Biogen Inc v Scitech Medical Products Pte Ltd and another	High Court	Yes	[1994] SGHC 188	Singapore	Cited for the point that Skinner v Perry has been cited in Singapore in the context of the patents legislation in force at that time.
Skinner & Co v Shew & Co	Court of Appeal	Yes	[1894] 2 Ch 581	United Kingdom	Cited for the facts of Skinner v Perry.
Telstra Corporation Limited v Phone Directories Company Pty Ltd	Federal Court of Australia	Yes	[2014] FCA 568	Australia	Cited for the principle that the grant of relief under s 202(1) by the court is discretionary.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Copyright Act (Cap 63, 2006 Rev Ed) s 200	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 194(3)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Passing off
Copyright infringement
Groundless threats
Goodwill
Misrepresentation
Instruments of deception
Singsung Get-Up
LS Get-Up
Distinctiveness
White Get-Up Picture
Blue Get-Up Picture
TV Sticker

15.2 Keywords

Passing off
Copyright
Infringement
Singapore
Electronics
Trade
Competition

17. Areas of Law

Area Name	Relevance Score
Intellectual Property Law	95
Passing Off	90
Copyrights	85
Groundless threats of infringement proceedings	80
Trademark Infringement	70
Contract Law	30
Civil Practice	20

16. Subjects

Intellectual Property
Copyright
Passing Off
Litigation