Case Details
- Citation: [2021] SGHC 272
- Title: FUJIFILM Business Innovation Asia Pacific Pte Ltd and others v PTC Business Systems Pte Ltd
- Court: High Court of the Republic of Singapore (General Division)
- Case Number: Suit No 1252 of 2018
- Decision Date: 30 November 2021
- Judge: Mavis Chionh Sze Chyi J
- Parties: FUJIFILM Business Innovation Asia Pacific Pte Ltd; FUJIFILM Business Innovation Singapore Pte Ltd; FUJIFILM Business Innovation Corp (collectively, “plaintiffs”) v PTC Business Systems Pte Ltd (“defendant”)
- Represented by (Plaintiffs): Lim Ying Sin Daniel (Joyce A. Tan & Partners LLC) (instructed); Ch’ng Chin Leong James and Tan Sher Meen (A. Ang, Seah & Hoe) for the plaintiffs
- Represented by (Defendant): Koh Chia Ling and Quek Yong Zhi Timothy (OC Queen Street LLC) (instructed); Tan Guodong and Bryan Soon Wei (Ella Cheong LLC) for the defendant
- Legal Areas: Intellectual Property — Copyright; Intellectual Property — Trade marks and trade names
- Claims (as pleaded): Trade mark infringement under the Trade Marks Act; passing off; copyright infringement under the Copyright Act (including primary and secondary infringement); infringement of rights management information under s 260 of the Copyright Act
- Key Allegations (in gist): The defendant modified and sold machines bearing the “ApeosPort”, “DocuCentre” and/or “Fuji Xerox” marks in Singapore without consent; the machines were originally manufactured for markets outside Singapore and were not intended for sale outside those territories.
- Procedural Posture: The High Court allowed key parts of the plaintiffs’ claims on 30 July 2021; the defendant filed a Notice of Appeal on 30 August 2021; the present decision provides the reasons for the earlier decision.
- Judgment Length: 63 pages; 29,071 words
- Outcome (headline): Trade mark infringement, passing off, secondary copyright infringement, and rights management information infringement under s 260 were allowed; primary copyright infringement was rejected.
Summary
This case concerned parallel imports and the extent to which intellectual property rights in branded multifunction photocopiers and their embedded software/firmware could be enforced against an unauthorised reseller in Singapore. The plaintiffs, part of the Fujifilm/Xerox corporate group, alleged that the defendant sold photocopiers bearing the plaintiffs’ “ApeosPort”, “DocuCentre” and “Fuji Xerox” trade marks, and that the defendant modified the machines in a way that infringed copyright and rights management information embedded in the software/firmware.
In a decision delivered by Mavis Chionh Sze Chyi J, the High Court upheld the plaintiffs’ claims for trade mark infringement, passing off, secondary copyright infringement, and infringement of rights management information under s 260 of the Copyright Act. However, the court rejected the plaintiffs’ claim for primary copyright infringement. The judgment is therefore particularly instructive for practitioners: it draws a careful line between (i) primary infringement by direct dealing with the copyrighted work and (ii) secondary infringement where the defendant’s conduct facilitates or enables infringement, including through dealing with modified copies and tampering with rights management information.
What Were the Facts of This Case?
The plaintiffs were engaged in manufacturing and importing printing and media equipment in the Asia Pacific region under the “Fuji Xerox” brand. The 1st plaintiff (incorporated in Singapore) and the 2nd plaintiff (also incorporated in Singapore and wholly owned by the 1st plaintiff) carried on business in Singapore using the “Fuji Xerox” mark, including importing and distributing multifunction photocopiers. The 3rd plaintiff, incorporated in Japan, was the joint venture between Fujifilm Holdings in Japan and Xerox Corporation in the United States, and later became wholly owned by Fujifilm Holdings after Xerox Corporation’s shares were acquired in 2019.
The defendant, PTC Business Systems Pte Ltd, sold office equipment and stationery in Singapore and claimed to operate in parallel importing and exporting. It was not disputed that the defendant was not an authorised dealer of Fuji Xerox equipment in Singapore. The plaintiffs’ case focused on six “offending” photocopiers which had been manufactured and branded by the 3rd plaintiff (or its subsidiaries) in countries other than Singapore. The plaintiffs alleged that these machines were not intended for any market outside those countries, and that the defendant nevertheless modified and sold them in Singapore bearing the relevant marks.
Trade mark evidence was central. The plaintiffs marketed two series of multifunction photocopiers under “DocuCentre” and “ApeosPort”. The machines carried both the “ApeosPort” or “DocuCentre” branding and the “Fuji Xerox” trade mark. The 3rd plaintiff was the registered proprietor of the trade mark “ApeosPort” (TM No. T0513649E) for goods in Class 9, and the 1st and 2nd plaintiffs were licensees of that registration. The plaintiffs also relied on the ownership of “DocuCentre” and “Fuji Xerox” marks by Xerox Corporation and the fact that the plaintiffs paid royalties for use of those marks.
Beyond the physical machines, the plaintiffs emphasised that the photocopiers were equipped with licensed software/firmware required to operate. The plaintiffs’ contractual documentation separated the machine from the “FXS Licensed Software” and imposed restrictions: the software remained the absolute property of the licensor, the licence was non-exclusive and non-transferable, and customers were prohibited from copying, reproducing, altering, modifying, reverse engineering, decompiling, or disassembling the software/firmware. The plaintiffs also provided dealership agreements for Singapore resellers that prohibited parallel import activities and restricted sales outside the territory. The court further considered that rights management information in electronic form was embedded in the software/firmware and was unique to each machine, including serial number, model, machine name, and product code, and that the plaintiffs could track machines using this information.
What Were the Key Legal Issues?
The High Court had to determine, first, whether the defendant’s conduct amounted to trade mark infringement and/or passing off. This required the court to consider how the defendant dealt with machines bearing the plaintiffs’ marks, including whether the defendant’s unauthorised importation and sale in Singapore could be characterised as infringing use in the course of trade, and whether the defendant’s conduct misrepresented source or goodwill to consumers.
Second, the court had to address copyright infringement. The plaintiffs pleaded both primary and secondary infringement. The key question was whether the defendant’s modification and sale of the machines involved the making or dealing with infringing copies of the embedded software/firmware, and whether the defendant’s conduct could properly be characterised as secondary infringement (for example, by dealing with infringing copies or enabling infringement) even if primary infringement was not made out.
Third, the court had to consider infringement of rights management information under s 260 of the Copyright Act. This issue turned on whether the rights management information embedded in the software/firmware (and/or affixed labels) constituted “rights management information” within the statutory meaning, and whether the defendant’s acts involved removing, altering, or otherwise dealing with such information in a manner prohibited by the Act.
How Did the Court Analyse the Issues?
The court’s analysis began with the commercial and legal structure of the plaintiffs’ rights. The judgment accepted that the Fuji Xerox equipment was manufactured and branded by the 3rd plaintiff with Xerox Corporation’s express or implied consent, and that the machines were installed with licensed software/firmware owned by the 3rd plaintiff. Importantly, the court treated the software/firmware as licensed intellectual property rather than something that automatically transferred with the physical media. This distinction mattered because the plaintiffs’ claims were not merely about the sale of branded hardware; they were about the defendant’s dealing with embedded copyrighted works and rights management information.
On trade marks and passing off, the court considered the defendant’s lack of authorisation and the territorial restrictions in the plaintiffs’ distribution and dealership arrangements. The dealership agreements expressly prohibited parallel import activities and restricted sales outside the territory. The court also took into account the practical reality that the defendant sold machines in Singapore bearing the plaintiffs’ marks, including “ApeosPort” and “Fuji Xerox” branding. In that context, the court found that the defendant’s conduct engaged the plaintiffs’ trade mark rights and also supported a finding of passing off, reflecting the risk of consumer confusion as to the origin or endorsement of the goods.
On copyright, the court drew a careful distinction between primary and secondary infringement. The plaintiffs argued that the equipment was inoperable without the embedded software/firmware and that the software/firmware became an “unlicensed copy” upon sale. However, the court rejected the primary copyright infringement claim. While the extracted text does not reproduce the full reasoning, the outcome indicates that the plaintiffs were unable to establish the elements required for primary infringement on the evidence and pleaded theory—particularly where the defendant’s acts did not amount to the direct act of reproducing the copyrighted work in the manner required for primary infringement.
Nevertheless, the court found secondary copyright infringement. This conclusion reflects a doctrinal approach commonly seen in copyright enforcement: even where primary infringement is not proven, a defendant may still be liable if the law captures dealing with infringing copies or facilitating infringement. Here, the court accepted that the defendant modified and sold machines in a way that implicated the embedded software/firmware and the unique rights management information. The court’s finding of secondary infringement therefore turned on the defendant’s role in the circulation of machines with infringing characteristics and the defendant’s conduct in enabling their operation and sale in Singapore.
Finally, the court addressed rights management information under s 260. The judgment treated the embedded electronic data (serial number, model, machine name, product code) as rights management information because it was used to identify and track each machine and to enforce licensing/traceability. The court also considered the physical label affixed to each machine as part of the rights management scheme. The defendant’s modifications and dealing with the machines were found to infringe s 260, indicating that the court considered the defendant’s conduct to involve prohibited dealing with rights management information—consistent with the policy of protecting technological measures and information that support copyright management.
What Was the Outcome?
The High Court allowed the plaintiffs’ claims for trade mark infringement, passing off, secondary copyright infringement, and infringement of rights management information under s 260 of the Copyright Act. The court rejected the plaintiffs’ claim for primary copyright infringement.
Practically, this meant that the defendant was held liable for key aspects of the plaintiffs’ intellectual property rights, particularly where the defendant’s conduct involved unauthorised dealing with branded machines and tampering with or otherwise affecting embedded rights management information and the operation of the machines’ licensed software/firmware. The decision also underscores that plaintiffs may succeed even if primary infringement is not established, provided secondary infringement and statutory protections for rights management information are properly pleaded and proven.
Why Does This Case Matter?
FUJIFILM Business Innovation Asia Pacific Pte Ltd v PTC Business Systems Pte Ltd is significant for Singapore IP practice because it addresses the intersection of parallel importation, trade mark enforcement, and copyright protection in embedded software/firmware. The case demonstrates that courts will look beyond the physical goods and examine the licensing architecture and technological measures that control how the goods operate. Where software/firmware is licensed and rights management information is embedded and used to track and manage rights, unauthorised modification and sale can trigger multiple layers of liability.
For trade mark practitioners, the decision reinforces that unauthorised importation and sale of branded goods can support findings of trade mark infringement and passing off, especially where distribution agreements impose territorial restrictions and where the defendant’s conduct creates a real risk of consumer confusion. For copyright practitioners, the judgment is a reminder that primary infringement is not the only route to liability. Secondary infringement can be established where the defendant’s conduct facilitates the circulation of infringing copies or infringing functionality, even if the evidence does not support primary infringement.
For counsel advising clients in the parallel import space, the case highlights the importance of due diligence not only on branding and packaging but also on embedded software/firmware, licensing terms, and rights management information. The court’s willingness to find s 260 liability indicates that tampering with or dealing with rights management information can be a decisive factor, and that statutory protections may be enforced even where the physical goods are otherwise lawfully acquired.
Legislation Referenced
- Copyright Act (Cap 63, 2006 Rev Ed) — section 260 (rights management information)
- Trade Marks Act (Cap 332, 2005 Rev Ed)
Cases Cited
- [2021] SGHC 272 (this case)
Source Documents
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.