Law doesn’t punish lawful design-arounds but doesn’t spare passing off, says SG lawyer
06 February 2026
In December 2025, Singapore’s High Court ruled in favour of local inventor Say Keong Ng, a businessman engaged in designing and marketing doors, who filed a case against Jia Le Aluminum and 9 Power Aluminum & Glass, his competitors in the industry.
Ng owns S & K Solid Wood Doors, which has sold approximately 350,000 units of its SK Door product in Singapore. The door system is designed to slide and swing, catering to small spaces.
According to Ng, the two companies passed off their own slide and swing door called SD Door as their own design. Jia Le Aluminum and 9 Power Aluminum & Glass were found to have displayed Ng’s SK Door in their showroom, yet gave customers their own product, SD Door, whenever a purchase was made. The Intellectual Property Office of Singapore granted a patent for Ng’s product in 2015 and for SD Door in 2024.
Ng filed the case for passing off and patent infringement.
The High Court’s ruling favoured Ng in his passing off claim. However, it rejected the inventor’s patent infringement claim. Based on statements by an expert witness, an important component of the patented SK Door was missing in the defendants’ product, indicating the absence of infringement.
Sanil Khatri | a local principal @ Baker McKenzie, Singapore
“The split outcome is a good reminder that while the law does not punish lawful design-arounds to avoid patent infringement, it also does not let off flagrant acts of passing off,” said Sanil Khatri, a local principal at Baker McKenzie in Singapore.
“By rejecting the notion that dependent claims fail merely because they now appear simple or straightforward in retrospect, the court was careful to avoid any hindsight bias. Specifically, in relation to the ‘inventive step’ requirement, the inquiry is one of obviousness, not simplicity. It was an apt reminder that the ‘hallmark of many true remarkable inventions is precisely their simplicity,’ and that retrospective analysis will often be unfair to inventors,” Khatri said.
The High Court’s decision also underscores the critical role of claim drafting when it comes to enforcement. It must be precise; otherwise, a lawful design-around may occur. “The defendants escaped infringement not because the court was unsympathetic to the patent owner,” explained Khatri, “but because the claim language required a very specific structural arrangement that the competing product deliberately avoided. This is a textbook example of a lawful design-around.”
Another takeaway is how strategic decisions for naming a registered trademark may affect a passing off action. The claimant must establish the existence of misrepresentation. “Under this limb, the issue of distinctiveness of the claimant’s mark is a threshold inquiry in determining whether the defendant has committed an actionable misrepresentation. If the claimant’s mark is not distinctive, there can be no misrepresentation even when the defendant uses an identical or similar mark. In this case, the claim was ultimately made out because the court found that the ‘SK’ mark had acquired distinctiveness in Singapore’s door industry by virtue of extensive use,” remarked Khatri.
Lastly, the case shows that avoiding patent infringement does not insulate one from liability if one’s market conduct misleads customers.
“This was not a case of mere similarity or accidental confusion. The evidence showed intentional conduct – via oral and contextual misrepresentations that could not be justified – designed to trade on the claimant’s goodwill. The judgment sends a clear signal that the courts will not tolerate riding off on a competitor’s coattails even if clever design-arounds are not inherently problematic from a patent law perspective,” Khatri pointed out.
- Espie Angelica A. de Leon
