Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd v Fragrance Foodstuff Pte Ltd [2002] SGCA 47

Sushant Shukla

Case Details

Citation: [2002] SGCA 47
Case Number: CA No 43 of 2002
Date of Decision: 01 November 2002
Court: Court of Appeal of the Republic of Singapore
Coram: Chao Hick Tin JA; Tan Lee Meng J
Judges: Chao Hick Tin JA, Tan Lee Meng J
Plaintiff/Applicant (Appellant): Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd (“BCH”)
Defendant/Respondent (Respondent): Fragrance Foodstuff Pte Ltd (“Fragrance”)
Counsel for Appellant: Wong Siew Hong (Infinitus Law Corporation)
Counsel for Respondent: Tan Tee Jim SC and Elaine Tan (Allen & Gledhill)
Legal Areas: Civil Procedure — Summary judgment; Copyright — Infringement
Key Statutes Referenced: Copyright Act (Cap 63, 1999 Rev Ed), s 37; Trade Marks Act (Cap 332, 1999 Rev Ed), s 27(6)
Related/Other Legislation Mentioned: Tradmarks Act / Trade Marks Act / Trademarks Act (as reflected in metadata)
Judgment Length: 7 pages, 4,256 words
Procedural Posture: Appeal against High Court summary judgment; Court of Appeal set aside summary judgment and granted unconditional leave to defend

Summary

This Court of Appeal decision concerns the threshold for setting aside a High Court’s summary judgment in a dispute involving alleged copyright infringement arising from a “notice” published by a competitor in the context of a high-demand festive period. Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd (“BCH”) and Fragrance Foodstuff Pte Ltd (“Fragrance”) both sell Bakwa, a sweet barbecue meat. Fragrance owned copyright in an artistic work used as part of its branding, while BCH published advertisements and pamphlets that reproduced Fragrance’s mark and stated that the two companies were not related.

The High Court granted summary judgment to Fragrance, finding that BCH infringed Fragrance’s copyright and issuing an injunction. On appeal, the Court of Appeal set aside the summary judgment and granted BCH unconditional leave to defend. The Court held that the defences raised—(i) the “honest practices” defence under s 27(6) of the Trade Marks Act and (ii) the “fair dealing” defence under s 37 of the Copyright Act—raised issues that were not suitable for determination on a summary basis. In particular, the Court emphasised that where the applicability of statutory defences involves complexity and requires “mature consideration”, the matter should proceed to trial with evidence and cross-examination.

Although the Court of Appeal did not finally decide whether the defences would succeed at trial, it made clear that the High Court had erred in effectively deciding contested factual and legal matters summarily. The decision is therefore significant both for copyright and trade mark practitioners and for those advising on summary judgment strategy in IP disputes.

What Were the Facts of This Case?

BCH and Fragrance are competitors in the manufacture and sale of Bakwa. BCH’s business began earlier (in 1930), while Fragrance was incorporated in April 1990. Both companies used Chinese character branding associated with “Xiang”, but in different artistic forms. BCH’s mark consisted of the Chinese character “Xiang” in a calligraphic form (referred to as mark “X”), while Fragrance’s mark (mark “Y”) was a stylised graphic representation of the Chinese character “Xiang” within an oval frame, featuring a tongue and licking lips, with the English word “FRAGRANCE” below.

Fragrance commissioned an artist, Chionh Cher Tin (“Chionh”), to create the artistic work in late 1994. On 5 February 2002, shortly before the action was commenced, Chionh assigned his copyright in the work to Fragrance. Fragrance also registered the work as a trade mark in July 1995 under class 30 (biscuits, cakes, pastry and confectionery) and applied under class 29 (dried minced pork, pork floss, chicken floss, snack foods, etc), though that application was opposed by BCH and remained pending.

The immediate trigger for the litigation was a notice published by BCH in early February 2002. Over two days, 2 and 3 February 2002, BCH placed a half-page advertisement in local English and Chinese newspapers. The notice reproduced both marks: it stated that mark “X” belonged to BCH and mark “Y” belonged to Fragrance, and it informed the public that the two companies were not related. BCH also distributed pamphlets containing the same notice. In addition, on 3 February 2002, Lianhe Zaobao ran a news report about the notice, stating that BCH might continue to publish it to dispel confusion.

At the time of publication, Lunar New Year (“LNY”) 2002 was imminent—falling on 12 February 2002—and it was common ground that public demand for Bakwa was extremely high during the pre-LNY period. BCH explained that it published the notice because it had evidence of confusion among members of the public. BCH pointed to two incidents: (1) in 1998, a gift and hamper company, Bloomdale (S) Pte Ltd, mistakenly advertised Fragrance’s pork and fish floss as BCH’s products, leading to an apology and correction; and (2) in the February 2002 issue of Singapore Women’s Weekly, BCH’s telephone number was mistakenly given as Fragrance’s number, which the publisher attributed to an intern’s error in checking the number using the Chinese character “Xiang” without realising that BCH used a similar logo.

After the notice was published, correspondence ensued between the parties’ solicitors. Fragrance demanded an apology and damages for copyright infringement. BCH rejected the claim and explained why it had published the notice. Fragrance then commenced proceedings for both copyright and trade mark infringement. In parallel, Fragrance sought an ex parte interim injunction, which was adjourned to be heard inter partes. After BCH entered appearance, Fragrance applied for summary judgment on the copyright infringement claim. The High Court granted summary judgment and issued an injunction restraining BCH from infringing Fragrance’s copyright, while noting that Fragrance would not take further steps or execution proceedings pending trial. BCH undertook not to further publish the notice until trial, and the High Court did not grant an interim injunction for the trade mark infringement.

What Were the Key Legal Issues?

The Court of Appeal identified the central issue as whether the High Court was correct to grant summary judgment and whether BCH should be given unconditional leave to defend. Summary judgment requires the court to be satisfied that there is no real prospect of successfully defending the claim (and that the case is suitable for determination without a full trial). Here, the Court of Appeal focused on whether the defences raised factual and legal issues that were properly triable and whether the questions of law were sufficiently complex to require “mature consideration”.

On the copyright infringement claim, two statutory defences were raised. First, BCH relied on s 27(6) of the Trade Marks Act, arguing that its use of Fragrance’s mark in the notice was for the purpose of identifying goods or services as those of the proprietor, and that any use was in accordance with “honest practices in industrial or commercial matters”. BCH contended that the High Court had misread the notice and had inferred improper motive from it.

Second, BCH relied on s 37 of the Copyright Act, which provides for a defence of fair dealing. BCH argued that the notice and related publication were fair dealing in the context of addressing confusion among consumers. The Court of Appeal therefore had to consider whether the fair dealing defence was arguable on the facts and whether the issues raised—such as whether the relevant event relied upon by BCH was “current”—were matters that should not be decided summarily.

How Did the Court Analyse the Issues?

The Court of Appeal began by addressing the summary judgment framework in the context of IP disputes. While the Court accepted that BCH had reproduced and published Fragrance’s trade mark in the notice without consent, it treated the existence of prima facie infringement as only the starting point. The key question was whether BCH’s defences raised triable issues. The Court stressed that where the applicability of statutory defences involves complexity, the court should not decide them summarily without the benefit of evidence and cross-examination.

On the s 27(6) Trade Marks Act defence, the Court of Appeal criticised the High Court for reading more into the notice than was warranted. The notice, as shown in Annex A, stated that mark “X” belonged to BCH and mark “Y” belonged to Fragrance, and it informed the public that the two companies were not related. The High Court had concluded that the notice contained a “subtle suggestion” of confusion and that BCH was responsible for such confusion, and it also considered BCH’s subsequent press statements as aggravating factors. The Court of Appeal observed that if any party wished to read more into the notice or attribute a motive to BCH, BCH should be allowed to explain and call witnesses, and be subject to cross-examination.

Importantly, the Court of Appeal also addressed the legal question of whether s 27(6) could apply in a copyright infringement action. It was not inconceivable, the Court said, that s 27(6) could apply to the situation. The Court further reasoned that it could not have been Parliament’s intention to authorise an act that would infringe a “related right”. On that basis, the Court indicated that s 27(6) might well apply to copyright infringement actions, meaning that the defence was not plainly unavailable as a matter of law.

The Court characterised the issues surrounding the applicability of s 27(6) as “of some complexity” and requiring “more mature consideration”. This language is significant: it signals that the Court of Appeal viewed the legal interplay between trade mark exceptions and copyright infringement claims as not straightforward. Consequently, the High Court’s approach—effectively deciding the defence against BCH at the summary stage—was not appropriate.

Turning to the s 37 Copyright Act fair dealing defence, the Court of Appeal emphasised that s 37 specifically provides for fair dealing to apply to an “artistic” work. The Court then examined BCH’s reliance on an event that occurred about a month before the alleged infringement act. BCH argued that the notice was connected to that earlier event and was intended to address confusion. The Court observed that one of the events relied upon by BCH occurred a month before the alleged infringement act, and therefore the question of whether that event was “current” was not clear cut. Whether the event was sufficiently contemporaneous to support a fair dealing characterisation was therefore a matter that involved both fact and law.

In addition, the Court considered whether there was confusion and whether the event reported was current. These were not purely legal questions; they required assessment of evidence and context. The Court held that these issues raised matters of fact and law that should not be determined summarily. In other words, the fair dealing defence could not be rejected on the basis of an incomplete record or without hearing evidence that would allow the court to evaluate the purpose and circumstances of BCH’s publication.

In reaching these conclusions, the Court of Appeal also implicitly reaffirmed the principle that summary judgment is not intended to resolve contested factual narratives or to decide complex legal questions without the procedural safeguards of a trial. The Court’s reasoning reflects a cautious approach to IP defences: where statutory exceptions depend on context, motive, contemporaneity, and consumer confusion, the evidential record matters.

What Was the Outcome?

The Court of Appeal allowed BCH’s appeal. It set aside the High Court’s summary judgment and granted BCH unconditional leave to defend the claim. Practically, this meant that Fragrance’s copyright infringement claim would proceed to trial rather than being determined on an expedited basis.

The effect of the decision is that Fragrance did not obtain the injunction on the basis of summary judgment. Instead, the parties would litigate the infringement and, crucially, the applicability of the asserted statutory defences under s 27(6) of the Trade Marks Act and s 37 of the Copyright Act, with the opportunity for BCH to explain its conduct and for witnesses to be called and cross-examined.

Why Does This Case Matter?

Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd v Fragrance Foodstuff Pte Ltd is important for two overlapping reasons. First, it clarifies that summary judgment is not appropriate where statutory defences raise complex legal questions and contested factual matters. The Court of Appeal’s emphasis on “mature consideration” underscores that courts should be slow to decide the availability of defences at the summary stage when the legal framework is intricate or when the factual context is disputed.

Second, the case is a useful authority on the interaction between trade mark exceptions and copyright infringement claims. While the Court did not finally rule that s 27(6) would succeed, it held that it was not inconceivable that the defence could apply and that Parliament could not have intended to authorise acts that infringe related rights. This reasoning provides practitioners with a framework for arguing that statutory exceptions should be interpreted purposively and consistently across IP regimes, particularly where the allegedly infringing act is tied to identification and commercial practice.

For copyright practitioners, the decision also highlights that fair dealing under s 37—especially for artistic works—may turn on contextual factors such as whether the dealing is connected to a sufficiently current event and whether confusion exists. These are often evidentially intensive questions. Accordingly, the case supports the strategic position that where fair dealing depends on purpose and contemporaneity, defendants should resist summary determination and seek a full trial.

Legislation Referenced

Cases Cited

RA & A Bailey & Co Ltd v Boccaccio Pty Ltd & Ors 6 IPR 279 (referred)
British Leyland Motor Corporation Ltd & Ors v Armstrong Patents Co Ltd & Ors (1986) 6 IPR 102 (referred)
Hubbard v Vosper [1972] 2 QB 84 (referred)
Pro Sieben Media AG v Carlton UK Television Ltd [1998] FSR 43 (referred)
BBC v British Sky Broadcasting Ltd [1991] 21 IPR 503 (referred)
Thompson v Marshall (1880) 41 LTR 720 (fully cited)
European Asian Bank AG v Punjab and Sind Bank (No. 2) [1983] 1 WLR 642 (fully cited)
Home and Overseas Insurance Co Ltd v Mentor Insurance Co (UK) Ltd (In Liquidation) [1990] 1 WLR 153 (fully cited)

Source Documents

This article analyses [2002] SGCA 47 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.

Written by Sushant Shukla

Topics

Singapore SLW Case Law Civil Procedure Copyright