FUJI XEROX ASIA PACIFIC PTE LTD & 2 Ors v PTC BUSINESS SYSTEMS PTE LTD

"On 30 July 2021, I allowed the plaintiffs’ claims in respect of trade mark infringement, passing off, secondary copyright infringement and rights management information infringement under s 260 of the Copyright Act. I rejected the plaintiffs’ claim for primary copyright infringement." — Per Mavis Chionh Sze Chyi J, Para 2

Case Information

• Citation: [2021] SGHC 272 (Para 0)
• Court: General Division of the High Court of the Republic of Singapore (Para 0)
• Date of Judgment: 30 November 2021; hearing dates: 14–17 July 2020, 4–7 January, 30 July 2021 (Para 0)
• Coram: Mavis Chionh Sze Chyi J (Para 0)
• Case Number: Suit No 1252 of 2018 (Para 0)
• Area of Law: Intellectual Property, including Copyright, Trade marks and trade names, Passing off, and Parallel imports (Para 0)
• Counsel: Not answerable from the extraction (Para 0)
• Judgment Length: Not answerable from the extraction (Para 0)

What Was the Dispute About in Fuji Xerox Asia Pacific Pte Ltd & 2 Ors v PTC Business Systems Pte Ltd?

This case concerned a dispute over six photocopiers that had originally been manufactured outside Singapore and later appeared in Singapore bearing Fuji Xerox-related marks, including “ApeosPort”, “DocuCentre”, and “Fuji Xerox”. The plaintiffs alleged that the defendant, an unauthorised dealer in office equipment, had sold modified machines that infringed trade marks, amounted to passing off, and involved copyright and rights management information violations. The court’s central task was to determine whether the defendant could rely on a parallel imports defence, whether the marks had been used in a way that infringed the plaintiffs’ rights, and whether the alterations to the machines also engaged copyright law. (Para 1, Para 2, Para 7, Para 41)

"The plaintiffs sued the defendant for trade mark infringement under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“Trade Marks Act”), passing off, and copyright infringement under the Copyright Act (Cap 63, 2006 Rev Ed) (“Copyright Act”)." — Per Mavis Chionh Sze Chyi J, Para 1

The judgment makes clear that the dispute was not a simple resale case. The plaintiffs specifically focused on six photocopiers that had originally been manufactured by the third plaintiff or its subsidiaries in countries other than Singapore and were not intended for any market outside those countries. The court accepted that the machines were being investigated over a period of years, and that the evidence included investigative reports, letters, website screenshots, invoices, and witness testimony. (Para 1, Para 28, Para 47)

The court ultimately found that the plaintiffs succeeded on trade mark infringement, passing off, secondary copyright infringement, and rights management information infringement, but failed on primary copyright infringement. The judgment therefore sits at the intersection of trade mark exhaustion, product alteration, and the legal consequences of dealing in modified imported goods. (Para 2, Para 66, Para 81)

How Did the Court Summarise the Core Holding?

The court’s summary of the outcome is concise but important. It states that the plaintiffs succeeded on the trade mark, passing off, secondary copyright, and rights management information claims, while the primary copyright claim failed. That outcome is the backbone of the judgment and frames the detailed reasoning that follows. (Para 2)

"I was satisfied that the plaintiffs had made out their case of infringement of the ‘ApeosPort’ mark under section 27(2)(a) of the Trade Marks Act." — Per Mavis Chionh Sze Chyi J, Para 58

The court also made clear that the defendant could not rely on the parallel imports defence under s 29(1) of the Trade Marks Act. The judge rejected the defendant’s assertion that the relevant machines had been put on the market with the plaintiffs’ consent, and in any event held that the condition of the goods had been changed. That meant the statutory exhaustion defence did not assist the defendant. (Para 2, Para 81, Para 82, Para 83)

In practical terms, the case shows that a defendant cannot simply invoke “parallel imports” as a label and expect immunity. The court examined the provenance of the machines, the state of the goods, and the credibility of the supplier evidence before concluding that the defence failed. The judgment therefore demonstrates a fact-intensive approach to exhaustion and to the authenticity of imported goods. (Para 69, Para 81, Para 82, Para 83)

What Were the Key Facts and How Did the Machines End Up in Dispute?

The plaintiffs were Fuji Xerox-related entities, and the defendant was a Singapore company selling office equipment and stationery. The dispute concerned six photocopiers that had originally been manufactured outside Singapore and were not intended for any market outside those countries. The machines were later found in Singapore, and the plaintiffs’ case was that they had been altered in ways that mattered legally. (Para 1, Para 7)

"The defendant, PTC Business Systems Pte Ltd, is a company incorporated in Singapore selling, inter alia, office equipment and stationery." — Per Mavis Chionh Sze Chyi J, Para 7

The court noted that all six offending machines continued to be stored at SG Investigators under constant video surveillance. That factual detail matters because it shows that the machines were preserved as physical evidence and were not merely described abstractly in the pleadings. The court’s analysis depended on the condition of the machines, their markings, and the evidence gathered from inspection and investigation. (Para 28)

"All six Offending Machines continue to be stored at SG Investigators under constant video surveillance." — Per Mavis Chionh Sze Chyi J, Para 28

The plaintiffs’ case was built around the proposition that the machines were not genuine in the relevant legal sense because their serial numbers, product names, firmware, and other features had been altered. The court’s reasoning later shows that these alterations were central both to the trade mark analysis and to the copyright-related claims. (Para 1, Para 36, Para 81, Para 83)

How Did the Court Frame the Issues for Determination?

The court expressly identified the issues it had to decide. Those issues were whether the defendant had infringed the registered “ApeosPort” mark, whether it had passed off the “ApeosPort”, “DocuCentre” and “Fuji Xerox” marks as its own, and whether it had infringed copyright under ss 32, 33 and/or 260 of the Copyright Act. That framing is important because it shows the court’s structure: trade mark first, then passing off, then copyright. (Para 41)

"The following issues arose for my determination: (a) Whether the defendant had infringed the registered trade mark ‘ApeosPort’; (b) Whether the defendant had passed off the ‘ApeosPort’, ‘DocuCentre’ and ‘Fuji Xerox’ marks as its own marks; and (c) Whether the defendant had infringed copyright under ss 32, 33 and/or 260 of the Copyright Act." — Per Mavis Chionh Sze Chyi J, Para 41

The court’s sequencing is also revealing. It first addressed whether the defendant’s use of “ApeosPort” amounted to infringement under s 27(1) or s 27(2), then considered the statutory exhaustion defence in s 29, and only then moved to the passing off and copyright issues. That order reflects the way the judge treated the trade mark question as the gateway issue for the broader dispute. (Para 43, Para 55, Para 66, Para 81)

For practitioners, the framing matters because it shows that a defendant dealing in imported goods may face multiple overlapping causes of action. A successful defence on one statutory route does not necessarily defeat claims under another, especially where the goods have been altered and the evidence suggests a lack of consent or authenticity. (Para 41, Para 66, Para 81, Para 2)

Why Did the Court Reject Trade Mark Infringement Under Section 27(1) but Accept Section 27(2)?

The court first considered s 27(1) of the Trade Marks Act and concluded that the “double identity” requirement was not met. The judge stated that the goods were not identical, so the strict conditions for infringement under s 27(1) failed. This is a significant distinction because s 27(1) is narrower than s 27(2) and requires complete identity rather than mere similarity. (Para 43, Para 45)

"Similarity in either aspect is not enough: anything less than complete identity will fail to satisfy the strict requirement of ‘double identity’ under s 27(1)" — Per Mavis Chionh Sze Chyi J, Para 43

The court then turned to s 27(2), which applies where the mark and the goods are similar rather than identical and where confusion is likely. The judge found that the plaintiffs had established that their registered “ApeosPort” mark was identical with the mark used by the defendant, that the machines were similar even if not identical, and that the defendant was using the mark in the course of trade. On that basis, the court was satisfied that the statutory elements of s 27(2) were met. (Para 47, Para 58)

"On the evidence adduced, including the various investigative reports put forward by the plaintiffs, I was satisfied that the plaintiffs were able to prove that their registered ‘ApeosPort’ mark was identical with the mark used by the defendant; that the machines in question were similar, even if not identical; that the defendant was using its mark in the course of trade…" — Per Mavis Chionh Sze Chyi J, Para 47

The judge’s reasoning shows a careful separation between the two infringement provisions. The failure of s 27(1) did not help the defendant once the court found that the more flexible s 27(2) test was satisfied. The court therefore treated the defendant’s use of the mark as infringing even though the goods were not identical in the strict sense required by the “double identity” rule. (Para 43, Para 45, Para 47, Para 58)

How Did the Court Assess Likelihood of Confusion Under Section 27(2)?

In assessing confusion, the court relied on the established three-part framework: similarity between the marks, similarity or identity between the goods or services, and the relevant segment of the public. The judge expressly set out those elements and then applied them to the facts before her. (Para 55)

"These are: (i) the similarity between the registered mark and the allegedly infringing mark; (ii) the similarity or identity between the goods or services in relation to which the marks are used; and (iii) the relevant segment of the public in relation to whom the court must consider the likelihood of confusion." — Per Mavis Chionh Sze Chyi J, Para 55

The court found that the likelihood of confusion would be high. That conclusion followed from the identity of the mark, the similarity of the goods, and the way the machines were presented in the market. The judge did not require proof of actual confusion; rather, the issue was whether confusion was likely on the evidence. (Para 56)

"I found that the likelihood of confusion would be high." — Per Mavis Chionh Sze Chyi J, Para 56

The court also referred to the principle that once the relevant identity or similarity is established, it is not permissible to dilute the analysis by relying on extraneous considerations. The judge used that principle to reinforce the conclusion that the defendant’s use of the mark was infringing. The result was a straightforward finding of infringement under s 27(2)(a). (Para 57, Para 58)

"it would not be permissible" — Per Mavis Chionh Sze Chyi J, Para 57

Why Did the Parallel Imports Defence Fail Under Section 29?

The defendant argued that the machines bearing the “ApeosPort” mark were parallel imports and that it was therefore entitled to rely on s 29(1) of the Trade Marks Act. The court rejected that position. The judge held that the defendant had not shown that the goods had been put on the market with the plaintiffs’ express or implied consent, and in any event the condition of the goods had been changed after they were put on the market. (Para 38, Para 66, Para 81, Para 82, Para 83)

"The defendant claimed that those of its photocopiers, printers and facsimile machines which bore the mark ‘ApeosPort’ were imported into Singapore as parallel imports and that it was therefore entitled to rely on s 29(1) of the Trade Marks Act." — Per Mavis Chionh Sze Chyi J, Para 38

The court set out the statutory text of s 29 and then applied it to the facts. The judgment explains that goods are “put on the market” when an independent third party acquires the right of disposal of the goods bearing the trade mark. The judge then found that the defendant had not established that this had happened with the plaintiffs’ consent. (Para 66, Para 69, Para 81)

"Under section 29(1) of the Trade Marks Act, goods are ‘put on the market’ when an ‘independent third party has acquired the right of disposal of the goods bearing the trade mark’" — Per Mavis Chionh Sze Chyi J, Para 69

The court also relied on the statutory exception in s 29(2). Even if the goods had been put on the market, the defence would not apply where the condition of the goods had been changed or impaired and the use of the mark had caused dilution in an unfair manner of the distinctive character of the mark. The judge found that the condition of the goods had been changed, which independently defeated the defence. (Para 66, Para 83)

"(2) Subsection (1) does not apply where — (a) the condition of the goods has been changed or impaired after they have been put on the market; and (b) the use of the registered trade mark in relation to those goods has caused dilution in an unfair manner of the distinctive character of the registered trade mark." — Per Mavis Chionh Sze Chyi J, Para 66

The judge’s treatment of the defence was also shaped by credibility findings. The court did not accept the defendant’s supplier narrative and found the evidence of one witness, Poh, to be unreliable. Those findings mattered because the defence depended on a coherent account of how the goods entered the market and in what condition they were sold. (Para 74, Para 81, Para 82, Para 83)

"I found Poh to be a shifty and deceitful witness." — Per Mavis Chionh Sze Chyi J, Para 74

How Did the Court Deal with Passing Off?

The court held that the plaintiffs succeeded in passing off. Although the extraction does not reproduce the full step-by-step analysis in the same detail as the trade mark discussion, the judgment’s outcome makes clear that the court accepted the plaintiffs’ case that the defendant’s conduct misrepresented the origin or authenticity of the goods and caused the relevant legal harm. The passing off claim was pleaded alongside the trade mark claim and was resolved in the plaintiffs’ favour. (Para 1, Para 2, Para 41)

"The plaintiffs sued the defendant for trade mark infringement under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“Trade Marks Act”), passing off, and copyright infringement under the Copyright Act (Cap 63, 2006 Rev Ed) (“Copyright Act”)." — Per Mavis Chionh Sze Chyi J, Para 1

The significance of the passing off finding lies in the court’s acceptance that the defendant’s use of the marks and presentation of the machines went beyond mere resale of genuine goods. The altered condition of the machines, together with the evidence of investigation and the court’s adverse credibility findings, supported the conclusion that the defendant’s conduct was legally misleading. (Para 28, Para 74, Para 81, Para 83)

For lawyers, the case illustrates that passing off can succeed even where a defendant tries to characterise its conduct as parallel importing. If the goods are altered, the provenance is unclear, or the presentation suggests a false connection with the brand owner, passing off remains a potent cause of action. (Para 2, Para 41, Para 81, Para 83)

Why Did the Copyright Claim Succeed Only in Part?

The plaintiffs pleaded primary infringement under s 26(1)(a)(v), as well as claims under ss 32, 33 and 260 of the Copyright Act. The court rejected the primary copyright infringement claim but accepted the claims for secondary copyright infringement and rights management information infringement under s 260. That split outcome shows that the court distinguished between direct copying and other forms of unlawful dealing with protected material. (Para 2, Para 36)

"The plaintiffs pleaded:68 (a) primary infringement pursuant to s 26(1)(a)(v) of the Copyright Act…" — Per Mavis Chionh Sze Chyi J, Para 36

The judgment’s final order confirms that the plaintiffs succeeded on secondary copyright infringement and rights management information infringement, but not on primary infringement. The extraction does not provide the full copyright reasoning in the same granularity as the trade mark analysis, so the safest statement is that the court accepted the plaintiffs’ evidence and submissions on the secondary and rights-management aspects while rejecting the primary copying allegation. (Para 2)

"I rejected the plaintiffs’ claim for primary copyright infringement." — Per Mavis Chionh Sze Chyi J, Para 2

This distinction is important because it shows that the court was willing to parse the copyright claims carefully rather than treating them as a single bundle. The defendant’s conduct could be unlawful in relation to the handling of software, firmware, or rights management information even if the plaintiffs did not prove the elements needed for primary infringement. (Para 2, Para 36)

What Evidence Did the Court Find Persuasive, and Why Was Credibility So Important?

The court relied on investigative reports and other documentary material to assess the condition and provenance of the machines. The judge expressly referred to the plaintiffs’ investigative reports when explaining why she was satisfied that the plaintiffs had established the elements of trade mark infringement. The evidence was therefore not merely background; it was central to the court’s findings. (Para 47)

"On the evidence adduced, including the various investigative reports put forward by the plaintiffs, I was satisfied that the plaintiffs were able to prove that their registered ‘ApeosPort’ mark was identical with the mark used by the defendant; that the machines in question were similar, even if not identical; that the defendant was using its mark in the course of trade…" — Per Mavis Chionh Sze Chyi J, Para 47

The court also made a strong adverse credibility finding against Poh, describing him as “a shifty and deceitful witness”. That finding is significant because the defendant’s account of the machines’ origin and condition depended heavily on witness testimony. Once the court rejected that testimony, the defendant’s parallel imports narrative became much less credible. (Para 74, Para 81, Para 82, Para 83)

"I found Poh to be a shifty and deceitful witness." — Per Mavis Chionh Sze Chyi J, Para 74

The evidence also included the fact that the machines were preserved under constant video surveillance at SG Investigators. That detail suggests the court had access to physical exhibits in a controlled evidential setting, which would have assisted in assessing markings, serial numbers, and other alterations. The judgment therefore reflects a classic commercial-IP evidentiary pattern: documents, physical inspection, and witness credibility all mattered. (Para 28, Para 47, Para 74)

What Legal Principles Did the Court Apply to the Trade Mark and Parallel Imports Questions?

The court applied the strict “double identity” requirement under s 27(1), the confusion-based test under s 27(2), and the exhaustion rule under s 29. The judgment makes clear that these are distinct inquiries and that a defendant cannot collapse them into a single argument that the goods were imported from elsewhere. (Para 43, Para 55, Para 66, Para 69)

"Similarity in either aspect is not enough: anything less than complete identity will fail to satisfy the strict requirement of ‘double identity’ under s 27(1)" — Per Mavis Chionh Sze Chyi J, Para 43

The court also drew on prior authorities on confusion and on the meaning of “put on the market”. The extraction identifies City Chain Stores, Sarika Connoisseur Cafe, Hai Tong, Staywell Hospitality, The Audience Motivation Company Asia, and Samsonite IP Holdings as the cases referred to. Those authorities were used to support the court’s analysis of identity, similarity, confusion, honest practices, and exhaustion. (Para 43, Para 49, Para 55, Para 57, Para 64, Para 69)

"The defendant claimed that those of its photocopiers, printers and facsimile machines which bore the mark ‘ApeosPort’ were imported into Singapore as parallel imports and that it was therefore entitled to rely on s 29(1) of the Trade Marks Act." — Per Mavis Chionh Sze Chyi J, Para 38

In practical terms, the court’s approach means that a parallel importer must prove more than foreign origin. It must show that the goods were put on the market with the proprietor’s consent, and it must also overcome any statutory exception where the goods’ condition has been changed or impaired. The defendant failed on both fronts. (Para 66, Para 69, Para 81, Para 83)

Why Does This Case Matter for Intellectual Property Practitioners?

This case matters because it demonstrates how trade mark, passing off, and copyright claims can operate together against a seller of modified imported equipment. The court did not treat the defendant’s conduct as a routine resale issue; instead, it examined whether the goods had been altered, whether the marks were used in a confusing way, and whether the defendant could prove lawful exhaustion. (Para 1, Para 2, Para 41, Para 66)

"The plaintiffs sued the defendant for trade mark infringement under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“Trade Marks Act”), passing off, and copyright infringement under the Copyright Act (Cap 63, 2006 Rev Ed) (“Copyright Act”)." — Per Mavis Chionh Sze Chyi J, Para 1

The case is also important because it shows that alterations to serial numbers, product names, firmware, and other features can be legally consequential. Those alterations were not treated as trivial cosmetic changes; they were part of the factual matrix that defeated the parallel imports defence and supported the plaintiffs’ broader claims. (Para 1, Para 81, Para 83)

Finally, the judgment is a useful reminder that credibility findings can be outcome-determinative in IP disputes involving supply chains and imported goods. Where the defendant’s account is not believed, the court may be far more willing to accept the plaintiffs’ evidence of infringement and unlawful dealing. (Para 47, Para 74, Para 81)

Cases Referred To

Legislation Referenced

• Trade Marks Act (Cap 332, 2005 Rev Ed): ss 27(1), 27(2), 28(1), 29(1), 29(2) (Para 1, Para 36, Para 41, Para 66)
• Copyright Act (Cap 63, 2006 Rev Ed): ss 26(1)(a)(v), 32, 33, 260 (Para 1, Para 2, Para 36)

Source Documents

• Original Judgment — Singapore Courts
• Archived Copy (PDF) — Litt Law CDN

This article analyses [2021] SGHC 272 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.