Calvin Klein, Inc and another v HS International Pte Ltd and others

• Jurisdiction: Singapore
• Court: High Court (Singapore)
• Judge: Chan Seng Onn J
• Judgment Date: 03 October 2016
• Neutral Citation: [2016] SGHC 214
• Citation: [2016] SGHC 214
• Date: 03 October 2016
• Subject Matter: Internet,Summary judgment,Civil procedure,Double identity,Defence,Online sale and purchase,Use of a sign,Trade marks and trade names,Infringement,Offering goods for sale
• Plaintiff Counsel: Sukumar s/o Karuppiah and Jaswin Kaur Khosa (Ravindran Associates)
• Defendant Counsel: Chidambaram Selvaraj and Jonathan Ow (Apex Law LLP)
• Published date: 14 January 2017
• Docket Number: Suit No 1102 of 2015 (Summons No 388 of 2016)
• Hearing Date: 25 July 2016,23 May 2016,18 March 2016

Chan Seng Onn J: Introduction

New technologies often present new business opportunities. Access to the Internet, which is now ubiquitous in highly-connected Singapore, has opened up fresh markets for entrepreneurs keen to connect sources of demand with sources of supply. The reach and availability of the Internet, coupled with the efficiency and low cost of modern freight transport, has facilitated the sale and purchase of goods online and the corresponding success of international shopping websites and online marketplaces, such as eBay, Amazon, Taobao and 65daigou. Concurrently, there is a pressing need for intellectual property law to keep up with technological advances in order to ensure that the law continues to protect intellectual property and rights-owners in real and relevant ways. As observed in a leading local textbook, “[n]ever in the field of trade mark law has a technical development caused so much concern to so many people as the Internet” (Tan Tee Jim SC, Law of Trade Marks and Passing Off in Singapore vol 2 (Sweet & Maxwell, 3rd Ed, 2014) at para 20.001).

In the present dispute, the Plaintiffs have sued the Defendants for trade mark infringement carried out on a website, sgbuy4u.com (“the SGbuy4u Website”). When a user in Singapore selects and makes payment for a desired good on the SGbuy4u Website, the operators of the business then place a corresponding order on the well-known Chinese online shopping website Taobao.com (“the Taobao Website”), make payment for the good on the Taobao Website, receive delivery in the People’s Republic of China (“PRC”) and thereafter freight the good to Singapore. After carrying out two sample purchases on the SGbuy4u Website, the Plaintiffs commenced an action against the Defendants, claiming that trade mark infringing goods were offered for sale on the SGbuy4u Website. Many of the material facts concerning the manner in which the business was carried out through the SGbuy4u Website are undisputed. The crux of the dispute lies in the proper characterisation of the business, and the involvement of each of the Defendants in those business activities.

The Plaintiffs have filed an application for summary judgment against the Defendants, and this is my judgment on the application. I will begin with the facts.

Facts The Plaintiffs

Calvin Klein, Inc (“the First Plaintiff”) is a corporation organised and existing under the laws of the State of New York. It has its place of business at 205 West 39th Street, New York, New York, 10018, United States of America.¹ The First Plaintiff is a leading fashion design and marketing company. It designs and markets women’s and men’s designer collection apparel and a range of other goods worldwide.²

Calvin Klein Trademark Trust (“the Second Plaintiff”) is a business trust organised under the laws of the State of Delaware. It is located at Rodney Square North, 110 North Market Street, Wilmington, Delaware, 19890, United States of America, and has its mailing address at the place of business of the First Plaintiff.³ The Second Plaintiff is the registered proprietor in Singapore of, inter alia, the following trade marks:⁴

No	Trade Mark	Trade Mark No	Class
1		T9508647F	16
	Goods: Patterns; paper, stationery; printed materials; gift wraps; drawer and shelf liners; all included in class 16.
2		T9601574B	16
	Goods: Patterns for making clothes; paper; stationery; printed material; gift wrap; drawer and shelf liners of paper; all included in Class 16.
3		T9508648D	18
	Goods: Articles made of leather; women’s handbags, wallets, key cases, change purses, cosmetics bags and pouches, portfolios, suit bags, trunks, suit cases, toiletry bags, umbrellas, billfolds, duffle bags, tote bags, brief cases and attache cases, luggage, overnight cases, credit card holders, business card holders, and eye glass cases.
4		T9601575J	18
	Goods: Handbags, wallets, key cases, change purses, cosmetics bags and pouches, portfolios, suit bags, trunks, suit cases, toiletry bags, umbrellas, billfolds, duffel bags, tote bags, briefcases and attache cases, luggage, overnight cases, credit card holders, business card holders, eyeglass cases; all included in Class 18.
5		T9508652B	25
	Goods: Clothing, Jump suits; shirts; blouses; jackets; bathing suits; pants; shorts; warm-up suits; capes; jeans; suits; rainwear, ties; socks; stockings/tights; hats; over coats; sweaters; skirts; coats; coats; furs (clothing); vests; t-shirts; beach and swimming wraps; ponchos; tops (clothing); shoes; sport shoes; boots, slippers, blazers, belts, gloves, dresses, scarves, shawls, underclothing, underwear, sleepwear, briefs, boxer shorts, robes, pyjamas, wraps, negligees, corsets (underclothing), foundation garments, brassieres, girdles, garters, corselets, body stockings, camisoles, leotards, culottes, bikinis, slips, chemises, teddies (undergarment), nightwear, rompers, caftans, dressing gowns, kimonos, housecoats, leggings; all included in class 25.
6		T9601579C	25
	Goods: Women’s, men’s, boys and girls wearing apparel, namely, shirts, T-shirts, jump suits, tank tops, blouses, jackets, bathing suits, beach and swimming cover-ups, pants, dresses, shorts, walking shorts, skirts, jeans, gloves, suits, sports jackets, blazers, dinner jackets, belts, socks, stockings, tights, hats, jackets, coats, and vests, sweaters, fur coats, fur trimmed coats, shearling coats, shearling jackets, rainwear, raincoats, capes, ponchos, shoes, boots, slippers, tennis and golf dresses, tennis and golf shorts, warm-up suits, scarves, shawls, ties and handkerchiefs.

I will refer to these trade marks collectively as “the CK Marks”.

The Second Plaintiff has appointed the First Plaintiff as its agent to take any and all action as may be deemed necessary to enforce the legal title in the trade marks owned by the Second Plaintiff, including the CK Marks.⁵

The Defendants

HS International Pte Ltd (“the First Defendant”) is a Singapore-incorporated company bearing company registration number 200909445C. It was registered by Tan Keng Hiang Jeffrey (“the Third Defendant”) on 28 May 2009⁶ and its registered address is No. 48 Toh Guan Rd East, #09-116, Enterprise Hub, Singapore 608586. According to the Defendants, the First Defendant is a freight forwarding company providing business-to-business logistic services for various types of business entities.⁷

Global PSM Pte Ltd (“the Second Defendant”) is also a Singapore-incorporated company and was registered by the Third Defendant on 12 July 2012.⁸ It bears the company registration number 201217291W and has its registered address at No. 48 Toh Guan Rd East, #09-138, Enterprise Hub, Singapore 608586. The Defendants claim that the Second Defendant provides customer-to-customer logistic services.⁹

The Third Defendant is the sole shareholder and director of both the First and Second Defendants.¹⁰

The SGbuy4u Website

The SGbuy4u Website was registered by the Third Defendant. It is undisputed that the Third Defendant is the registrant as well as the administrative and technical contact of the SGbuy4u Website.¹¹

The SGbuy4u Website is the central feature in the Plaintiffs’ suit against the Defendants (and in this summary judgment application) and thus its purpose and functions bear closer examination. The Plaintiffs have tendered screenshots of the SGbuy4u Website in their affidavits,¹² from which the layout and operation of the SGbuy4u Website can be observed. The Defendants have not challenged the accuracy or legitimacy of these screenshots and have in fact tendered further screenshots of their own,¹³ which I will also refer to. At this juncture, it suffices for me to provide a general overview of the SGbuy4u Website. I will describe in greater detail the relevant features of the SGbuy4u Website and the parties’ submissions thereon when considering the disputed issues.

Searching for desired goods on the SGbuy4u Website

The SGbuy4u Website is an e-commerce platform on which users can search for and purchase a wide variety of goods. The goods available range from apparel, bags, shoes and health products to electronic goods, toys and games.¹⁴ Users can enter descriptions of desired goods into the search bar or they can browse categories of goods using a drop-down menu at the top of the webpage. At first glance, the SGbuy4u layout and interface resembles those of online marketplaces such as eBay and Amazon. Anyone who is familiar with such websites will likely have no difficulty navigating the SGbuy4u interface.

Once the user runs a search for a desired good, the user is then brought to a results page. The following screenshot provides an illustration:¹⁵ Figure 1: Example of results page

After the user selects a result, he is brought to another page that gives him more information and photographs of the chosen good. This page also provides the user the option to purchase the product by clicking on the buttons “Buy Now” or “Add to Cart”, after he selects the desired specifications such as colour, size, quantity and delivery method. The following screenshot provides an example of such a product page:¹⁶ Figure 2: Example of product page

Payment for goods by user

Before the user can purchase the desired good, he must first be registered as a member on the SGbuy4u Website.¹⁷ Once the item has been added to the user’s cart, he can then checkout his order and make payment either through PayPal or an “E-Wallet” provided on the SGbuy4u Website.

The “E-Wallet” option enables the user to make payment by cash deposit or inter-bank transfer.¹⁸ To make payment out of the user’s “E-Wallet”, the user will need to top up his available balance by logging in to the “Member Center” on the SGbuy4u Website, accessing...