FUJIFILM v PTC Business Systems: Trade Mark, Copyright, Passing Off

FUJIFILM Business Innovation Asia Pacific Pte Ltd, FUJIFILM Business Innovation Singapore Pte Ltd, and FUJIFILM Business Innovation Corp sued PTC Business Systems Pte Ltd in the General Division of the High Court of Singapore on 30 November 2021, for trade mark infringement, passing off, and copyright infringement. The plaintiffs alleged that the defendant modified and sold machines bearing the plaintiffs' marks without consent. The court allowed the plaintiffs’ claims in respect of trade mark infringement, passing off, secondary copyright infringement and rights management information infringement, rejecting the claim for primary copyright infringement.

1. Case Overview

1.1 Court

General Division of the High Court

1.2 Outcome

Judgment for Plaintiffs

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Fujifilm sued PTC for trade mark, copyright infringement, and passing off due to unauthorized modification and sale of machines. The court allowed claims for trade mark infringement, passing off, secondary copyright infringement, and rights management information infringement.

1.7 Decision Date

29 November 2021

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
FUJIFILM Business Innovation Asia Pacific Pte Ltd	Plaintiff	Corporation	Judgment for Plaintiff	Won	Lim Ying Sin Daniel of Joyce A. Tan & Partners LLC Ch’ng Chin Leong James of A. Ang, Seah & Hoe Tan Sher Meen of A. Ang, Seah & Hoe
FUJIFILM Business Innovation Singapore Pte Ltd	Plaintiff	Corporation	Judgment for Plaintiff	Won	Lim Ying Sin Daniel of Joyce A. Tan & Partners LLC Ch’ng Chin Leong James of A. Ang, Seah & Hoe Tan Sher Meen of A. Ang, Seah & Hoe
FUJIFILM Business Innovation Corp	Plaintiff	Corporation	Judgment for Plaintiff	Won	Lim Ying Sin Daniel of Joyce A. Tan & Partners LLC Ch’ng Chin Leong James of A. Ang, Seah & Hoe Tan Sher Meen of A. Ang, Seah & Hoe
PTC Business Systems Pte Ltd	Defendant	Corporation	Judgment against Defendant	Lost	Koh Chia Ling of OC Queen Street LLC Quek Yong Zhi Timothy of OC Queen Street LLC Tan Guodong of Ella Cheong LLC Bryan Soon Wei of Ella Cheong LLC

3. Judges

Judge Name	Title	Delivered Judgment
Mavis Chionh Sze Chyi	Judge	Yes

4. Counsels

Counsel Name	Organization
Lim Ying Sin Daniel	Joyce A. Tan & Partners LLC
Ch’ng Chin Leong James	A. Ang, Seah & Hoe
Tan Sher Meen	A. Ang, Seah & Hoe
Koh Chia Ling	OC Queen Street LLC
Quek Yong Zhi Timothy	OC Queen Street LLC
Tan Guodong	Ella Cheong LLC
Bryan Soon Wei	Ella Cheong LLC

4. Facts

Plaintiffs sued the defendant for trade mark infringement, passing off, and copyright infringement.
Defendant modified and sold machines bearing the plaintiffs’ marks without consent.
The plaintiffs sell multifunction photocopiers under the marks “DocuCentre” and “ApeosPort”.
Defendant is not an authorized dealer of Fuji Xerox Equipment in Singapore.
The defendant claimed that the machines were parallel imports.
The plaintiffs conducted various investigations into the defendant’s business from 2014.
The defendant sold Offending Machines 1, 2 and 3 bearing the “ApeosPort” mark to GMC.

5. Formal Citations

FUJIFILM Business Innovation Asia Pacific Pte Ltd and others v PTC Business Systems Pte Ltd, Suit No 1252 of 2018, [2021] SGHC --272
FUJIFILM Business Innovation Asia Pacific Pte Ltd and others v PTC Business Systems Pte Ltd, Suit No 1252 of 2018, [2021] SGHC 272

6. Timeline

Date	Event
2014-04-15	Offending Machine 4 acquired by 2nd plaintiff
2014-06-20	Letter sent to defendant by 2nd plaintiff
2014-07-03	Letter sent to defendant by 2nd plaintiff
2014-08-01	Letter sent to defendant by 2nd plaintiff
2014-10-21	Offending Machine 5 acquired by Focus Art
2014-11-05	Offending Machine 6 acquired by Raymond Ng & Associates
2014-11-01	Offending Machines 5 and 6 acquired by 2nd plaintiff
2015-05-22	Letter sent to defendant's solicitors by 2nd plaintiff's solicitors
2016-02-05	Defendant bought Offending Machines 1, 2 and 3
2016-03-04	Defendant bought Offending Machines 1, 2 and 3
2016-05-13	Defendant bought Offending Machines 1, 2 and 3
2017-06-01	2nd plaintiff engaged Covert Investigation Pte Ltd
2017-06-30	Covert Investigation Report prepared
2017-07-25	Parallel Import Investigation Report prepared
2017-11-01	Offending Machines 1, 2 and 3 acquired by 1st plaintiff
2017-12-12	2nd plaintiff took possession of Offending Machines 1, 2 and 3
2018-06-04	1st plaintiff granted leave to commence proceedings against defendant
2018-08-28	Offending Machines 1, 2 and 3 inspected
2018-09-03	Offending Machines 4, 5 and 6 transported to SG Investigators office
2018-09-07	Parallel Import Investigation Report prepared
2018-12-11	Plaintiffs filed Suit 1252
2020-06-22	AEIC of Caron Batchelor Veronica dated
2020-06-29	Agreed Bundle of Documents dated
2020-07-14	Transcript
2020-07-14	Trial began
2020-07-17	Trial
2020-07-28	Supplementary AEIC of Poh dated
2021-01-04	Trial
2021-01-07	Trial
2021-07-30	Court allowed the plaintiffs’ claims
2021-08-30	Defendant filed Notice of Appeal
2021-11-30	Reasons for decision given

7. Legal Issues

Trade Mark Infringement
- Outcome: The court found that the defendant infringed the registered trade mark 'ApeosPort' under section 27(2)(a) of the Trade Marks Act.
- Category: Substantive
- Sub-Issues:
  - Use of identical mark
  - Similarity of goods
  - Likelihood of confusion
  - Descriptive use defence
  - Parallel imports defence
Passing Off
- Outcome: The court found that the defendant had passed off the 'ApeosPort', 'DocuCentre', and 'Fuji Xerox' marks.
- Category: Substantive
- Sub-Issues:
  - Goodwill
  - Misrepresentation
  - Damage
  - Parallel imports defence
Copyright Infringement
- Outcome: The court rejected the claim for primary copyright infringement but found the defendant liable for secondary infringement and infringement of rights management information.
- Category: Substantive
- Sub-Issues:
  - Primary infringement
  - Secondary infringement
  - Adaptation of software/firmware
  - Rights management information

8. Remedies Sought

Injunction
Delivery up and forfeiture or destruction
Inquiry as to damages
Account of profits
Statutory damages

9. Cause of Actions

Trade Mark Infringement
Passing Off
Copyright Infringement

10. Practice Areas

Intellectual Property Litigation
Commercial Litigation

11. Industries

Office Equipment

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier	Court of Appeal	Yes	[2010] 1 SLR 382	Singapore	Cited for the strict requirement of 'double identity' under s 27(1) of the Trade Marks Act.
Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA	Unknown	Yes	[2013] 1 SLR 531	Singapore	Cited for the purpose of determining similarity of goods under section 27(2)(b) of the Trade Marks Act.
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 principle that evidence of actual confusion is not required to prove likelihood of confusion in trade mark infringement cases.
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 it is not permissible to have regard to extraneous considerations that might diminish the likelihood of confusion where the competing marks are identical and the competing goods sufficiently similar.
The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd	Court of Appeal	Yes	[2016] 3 SLR 517	Singapore	Cited for the elements of passing off and the 'honest practices' proviso under s 28(1) of the Trade Marks Act.
Samsonite IP Holdings Sarl v An Sheng Trading Pte Ltd	Unknown	Yes	[2017] 4 SLR 99	Singapore	Cited for the definition of 'put on the market' under section 29(1) of the Trade Marks Act and the requirements for establishing the parallel imports defence.
Novelty Pte Ltd v Amanresorts Ltd and another	Court of Appeal	Yes	[2009] 3 SLR(R) 216	Singapore	Cited for the principle that goodwill can be limited to particular sections of the public.
Allergan, Inc and another v Ferlandz Nutra Pte Ltd	Unknown	Yes	[2016] 4 SLR 919	Singapore	Cited for the principle that a likelihood of blurring is readily inferred where parties are in direct competition with each other.
Harvard Club of Singapore v President and Fellows of Harvard College	Unknown	Yes	[2020] 4 SLR 1378	Singapore	Cited for the principle that one must have regard to the full factual matrix of a case to determine ownership in an implied licence situation.
Han’s (F&B) Pte Ltd v Gusttimo World Pte Ltd	Unknown	Yes	[2015] 2 SLR 825	Singapore	Cited for the principle that Xerox Corporation and the plaintiffs were part of the same group of companies, and the goodwill in the “DocuCentre” and “Fuji Xerox” marks was associated with the business of the group.
QB Net Co Ltd v Earnson Management (S) Pte Ltd and others	Unknown	Yes	[2007] 1 SLR(R) 1	Singapore	Cited for the principle that goodwill could be jointly owned by the foreign licensor and the domestic licensee.
Sin Heak Hin Pte Ltd and another v Yuasa Battery Singapore Co Pte Ltd	Unknown	Yes	[1995] 3 SLR(R) 123	Singapore	Cited for the principle that the parallel importation of genuine goods does not constitute passing off.
Global Yellow Pages Ltd v Promedia Directories Pte Ltd and another matter	Unknown	Yes	[2017] 2 SLR 185	Singapore	Cited for the principle that copyright in published editions of works, under s 86 and s 91 of the Copyright Act, is popularly known as a publisher’s right or a copyright in the layout or typeset of a published work.
Nanofilm Technologies International Pte Ltd v Semivac International Pte Ltd and others	Unknown	Yes	[2018] 5 SLR 956	Singapore	Cited for the principle that the 3rd plaintiff’s Katsumi Kizaki had also filed an affidavit stating that the 3rd plaintiff was the owner of the software/firmware, and this stood as prima facie proof of the matters stated therein (s 130(1B) of the Copyright Act.
Public Prosecutor v Teo Ai Nee and another	High Court	Yes	[1995] 1 SLR(R) 450	Singapore	Cited for the meaning of the phrase “knows, or ought reasonably to know” in the context of s 136 of the Copyright Act.
Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading)	Court of Appeal	Yes	[2016] 4 SLR 86	Singapore	Cited for the principle that the relevant knowledge for this purpose “is not knowledge, as a matter of legal conclusion, that [the defendant] might be infringing copyright but knowledge, as a matter of fact, that [the defendant] might be using something that belonged to [the plaintiff] without its consent”.
Lotus Development Corp and another v Ong Seow Pheng and others	Unknown	Yes	[1996] 2 SLR(R) 514	Singapore	Cited for the principle that the aim of an award of additional damages is punishment and deterrence, rather than to benefit the plaintiff, and such an award should not translate into an extraordinary profit for the plaintiff.
New Line Productions, Inc and another v Aglow Video Pte Ltd and others and other suits	Unknown	Yes	[2005] 3 SLR(R) 660	Singapore	Cited for the principle that the aim of an award of additional damages is punishment and deterrence, rather than to benefit the plaintiff, and such an award should not translate into an extraordinary profit for the plaintiff.
Ong Seow Pheng and others v Lotus Development Corp and another	Court of Appeal	Yes	[1997] 2 SLR(R) 113	Singapore	Cited for the principle that the CA reduced the additional damages awarded to the plaintiffs after finding that, although the defendants had dealt in 6,720 infringing copies of the plaintiffs’ manuals and 31 infringing copies of their software programmes, there was no evidence of the defendants having further authorised retailers to make copies of the plaintiffs’ computer programmes.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act	Singapore
Copyright Act	Singapore

15. Key Terms and Keywords

15.1 Key Terms

ApeosPort
DocuCentre
Fuji Xerox
Trade mark infringement
Passing off
Copyright infringement
Parallel imports
Rights management information
Software/firmware
Offending Machines
GMC Machines
Adaptation
Serial number
Product code

15.2 Keywords

Trade mark
Copyright
Passing off
Infringement
Intellectual property
Parallel import

17. Areas of Law

Area Name	Relevance Score
Copyrights	90
Trademarks	85
Rights Management Information	75
Unfair Competition	70
Parallel Imports	60
Commercial Law	30

16. Subjects

Intellectual Property
Trade Marks
Copyright
Passing Off