1 YONG PUNG HOW CJ

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3  The facts

4 At present, a design may not be registered in Singapore. A proprietor must register his design in the United Kingdom (the UK). Once registered, the proprietor enjoys a 25-year monopoly in the registered design, and, pursuant to the local Act, he is automatically accorded, for same period, the exclusive rights and privileges in the registered design in Singapore. Under s 4 of the local Act, nevertheless, the High Court may, on any of the grounds upon which a registration may be cancelled in the UK, deny him exclusive rights in the design in Singapore.

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8  (ii). Whether the photographic evidence shows that the registered design differs from designs published in Singapore only in immaterial details or features which are variants commonly used in the trade and accordingly, whether this is sufficient ground for the High Court to declare under s 4 of the local Act that exclusive privileges and rights in the registered design have not been acquired in Singapore.

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10  The relevant statutory context

11 It would be appropriate, at this juncture, to set out the three statutory provisions which were fundamental to the issue at hand.

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15  The decision of the learned judge in the court below

16 In deciding that prior use in Singapore was not a valid ground for the exercise of the High Court`s power under s 4 of the local Act, the learned judge premised his judgment on the words of s 1(4) of the UK Act, which only specify prior publication in the UK, and the UK Interpretation Act 1978, which does not include Singapore within its definition of the `United Kingdom`. He concluded from this that `the wording of s 4 of our Act and s 1(4) of the UK Act, as amended is clear and unambiguous.`

17 Mem Co Inc v Cussons (International) Ltd [1974] RPC 7 in which Sedgwick J considered the Bermuda Patents, Designs and Trade Marks Act. This Act contained a `deeming provision` which specifically mentioned that the use of the trade mark in Bermuda prior to its registration in the UK was valid as a ground for the cancellation of a trade mark in Bermuda. The learned judge read the case thus: `The learned judge was of the view that but for the deeming provision in the subsection all matters affecting the validity of the mark had to be judged according to the position in UK under UK law.`

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20  The appeal

21 On the appeal before us, the appellants advanced five arguments: first, that there is no single plain and literal interpretation of s 4 of the local Act; secondly, that a tracing of the legislative history of design legislation in Singapore shows a legislative intent to include prior publication in Singapore as a ground upon which the High Court could declare that exclusive rights and privileges were not acquired in Singapore; thirdly, that the interpretation taken by the learned judge would lead to bizarre results; fourthly, a purposive interpretation should be preferred and that if necessary, the court should imply the phrase mutatis mutandis to s 4 of the local Act after the word `grounds` in the fifth line; and finally, pursuant to the provisions of the Constitution and the Republic of Singapore Independence Act 1965, all laws existing at that date ought to be interpreted with such necessary modifications and changes in recognition of Singapore`s independent status.

22  Whether the statutory provisions are ambiguous

23 Our first task was to consider the natural and ordinary meaning of s 4 of the local Act, and ss 11 and 1(4) of the UK Act. Upon a careful consideration of the three statutory provisions, we were unable, with respect, to agree with the learned judge that the import of these provisions are `plain and unambiguous`. As mentioned above, s 4 of the local Act specifies that a registration may be ignored on `any of the grounds upon which the United Kingdom registration might be cancelled under the law for the time being in force in the United Kingdom`. One of the grounds introduced by s 11 of the UK Act is that the design is not `new` and for this purpose, s 1(4) of the UK Act only explains that which `shall not be regarded as new`. From s 11 and s 1(4) of the UK Act it is plain that s 1(4) is not exhaustive: it only isolates that for which it is mandatory for the registrar to regard as not new, it does not specify that a design must be new in all other circumstances. It follows from this that the fact that Singapore is not part of the UK does not conclude the debate. It must be open, both to the local court as well as a UK court, to decide other instances in which the design is not to be regarded as new.

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25  expressio unius est exclusio alterius , that is, to express one thing is impliedly to exclude another. Of this maxim, Cross has said ( Statutory Interpretation , 3rd Ed): `it is doubtful whether the maxim does any more than draw attention to a fairly obvious linguistic point, viz that in many contexts the mention of some matters warrants an inference that other cognate matters were intentionally excluded`. In each case, the context in which a clause is included or excluded ought to be examined and weighed against other interpretive factors. In the present case, the deeming provisions were found not within the local Act itself, but in the the Registration of United Kingdom Patents Act (Cap 271), now repealed, and the legislation of Nigeria and Hong Kong. In our opinion, caution ought to be exercised where it is sought to apply this maxim to different statutes. Not all drafters take the same view in respect of whether a matter ought to be specified or to be left to implication. In Re Wilson [1985] AC 750, for example, the House of Lords overruled a previous decision of the divisional court, R v Clerkenwell Stipendiary Magistrate, ex p Mays [1975] 1 WLR 52, where Lord Bridge decided - in view of an express power contained in the Maintenance Orders Act 1958 - that the same power could not be implied into the Magistrates` Courts Act 1952, because the divisional court had overlooked a general power conferred by the Interpretation Act 1889. A matter could be specified in one statute but not another through a mere abundance of caution. Moreover, where the statute containing the expressio is found in another jurisdiction altogether, we doubt any implication may be inferred at all from its absence in local legislation.

26  Mem Co Inc v Cussons (International) Ltd . In that case, there followed after a subsection which is in pari materia with s 4 of the local Act (referred to in the extract below as `sub-s 1`), the following `deeming provision`: `such grounds shall be deemed to include the use of the trade mark in these islands prior to the date of registration in the United Kingdom` (referred to in the extract below as `sub-s 2`). Sedgwick J read the subsection in pari materia with s 4 of the local Act to mean that all matters affecting the validity of the mark had to be judged according to the position in the UK under UK law. His remarks were made, however, in the context of the presence of the deeming provision, and not its absence. He in fact stated that in the absence of that provision, he would have interpreted the subsection which is in pari materia with s 4 of the local Act to mean that one merely adapted the legal causes available in the UK to like circumstances in Bermuda. This was made clear at p 18 of his judgment:

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29  The argument premised on the Constitution and the Republic of Singapore Independence Act

30 Counsel for the appellants referred us to art 162 of the Constitution and s 13(1) of the Republic of Singapore Independence Act. Article 162 of the Constitution provides as follows:

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34  The argument premised on legislative intent

35 Counsel for the appellants pointed out that the first design statute was the Registration of United Kingdom Designs Ordinance 1932. Pursuant to this ordinance, designs registered in the UK could be re-registered in Singapore within three years of the initial registration. Significantly, in 1933, a new subsection was added by the Registration of United Kingdom Designs (Amendment) Ordinance 1933 (the 1933 Ordinance) which deemed prior publication of a design to include publication of the design in Singapore. Later, when the Registration of United Kingdom Patents Ordinance 1937 was passed, this ordinance followed the scheme of the 1933 Ordinance and also contained a similar deeming provision. However, when the Designs Ordinance 1938 (the 1938 Ordinance) was introduced by a subsequent Attorney General to obviate the inconvenience of re-registration and to accord automatic recognition to UK-registered designs, the deeming provision was omitted. The 1938 Ordinance is almost identical with the local Act.

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38  The argument in favour of a purposive construction

39 Counsel for the appellants contended that a purposive construction ought to be adopted, and that the words mutatis mutandis ought to be read into s 4 of the local Act. In support, he furnished many examples of cases where courts had adopted such construction. He did not suggest anything, however, from which the court could deduce that one of the purposes of passing the local Act was to exclude from protection designs which were not novel in Singapore prior to their registration in the UK. In a sense, counsel`s argument here followed upon his argument on legislative intent: as it was the intent of Parliament that local user ought to be included, the court ought to adopt a construction to comply with that intent. As we did not agree with counsel for the appellants` arguments on legislative intent, we could not draw the necessary purpose therefrom. We could not find any other clue, either, that implied that one of the purposes behind the local Act included the prevention of commonplace Singapore designs from being granted a design monopoly. As pointed out by the learned judge and the respondents, the parliamentary debates and the explanatory note to the Act imply that the immediate purpose of the Act was merely to accord automatic protection in Singapore of designs registered in the UK and to avoid the need for re-registration. To the extent that counsel`s comments could have been taken to be advocating a construction that promoted, rather than detracted from, the underlying object of design legislation, our views are more appropriately set out in the next section.

40  The argument in favour of a construction to prevent absurdity

41 The appellants` counsel advanced what he termed as `bizarre consequences` that would result from the learned judge`s interpretation of the statute. These were various, but may be conveniently summarised into two broad categories. The first was that it would lead to the registration and subsequent protection in Singapore of commonplace local designs which happen to be novel in the UK. The second was that it would lead to inconsistency with the treatment of other branches of intellectual property law in Singapore. He argued that such consequences could not have been intended by Parliament.

42 Gramophone Co Ltd v Magazine Holder [1911] 28 RPC 221, the defendant in infringement proceedings admitted novelty, but the House of Lords considered the issue and held that the design was not novel. Lord Loreburn LC, at p 225, explained the reason as follows:

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46  mutatis mutandis be imported into s 4 of the local Act. We think that s 4 of the local Act is ambiguous and we construe it to include the appropriate local equivalents of grounds that give rise to the cancellation of registrations in the UK.

47  Conclusion

48 In the present appeal the sole issue before us was whether the lack of novelty of a design in Singapore, as opposed to the lack of novelty of the same design in the UK, would be sufficient ground for the High Court to declare under s 4 of the local Act that exclusive privileges and rights in the registered design have not been acquired in Singapore. On this issue, s 4 of the local Act is ambiguous. While it may be suspect whether the legislature could have intended or possessed the purpose to include the lack of local novelty as a ground for cancellation, Parliament could not possibly have intended the registration and subsequent protection in Singapore, through registration in the UK, of designs commonplace in Singapore. Such a result would strike at the core object of design legislation and introduce undesirable counter-mischiefs. The grounds, therefore, upon which the High Court`s powers pursuant to s 4 of the local Act are to be exercised must be read to include the local equivalents of the grounds applicable to the cancellation of registrations in the UK.

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