Challenger Technologies Pte Ltd v Public Prosecutor

• Jurisdiction: Singapore
• Judge: Lai Kew Chai J
• Judgment Date: 22 March 1994
• Neutral Citation: [1994] SGHC 71
• Docket Number: Criminal Motion No 18 of 1993
• Date: 22 March 1994
• Published date: 19 September 2003
• Year: 1994
• Plaintiff Counsel: G Radakrishnan and Teresa O'Connor (Chu Chan Gan & Ooi)
• Citation: [1994] SGHC 71
• Defendant Counsel: Gilbert Leong and Julian Chin (Rodyk & Davidson)
• Court: High Court (Singapore)
• Subject Matter: False application of registered trade mark,Purposive approach,Construction of statute,Offence under s 73 of Trade Marks Act,Whether mark was falsely applied if goods were genuine,s 73B(5)Trade Marks Act (Cap 332, 1992 Ed),s 73B(5) Meaning of 'falsely applied' within,Trade Marks and Trade Names,Actual or implied assent of registered proprietor,Sale of genuine goods,Offences,ss 73, 73B(2), (4) & (5) Trade Marks Act (Cap 332, 1992 Ed),Statutory Interpretation

Cur Adv Vult

The first issue before the court is whether the complainant was justified in alleging an offence under s 73, Trade Marks Act (Cap 332, 1992 Ed) (as amended) (hereinafter referred to as `the Act`).

The applicants applied to the High Court by way of a criminal motion for, inter alia, the dismissal of a complaint filed by one Liew Wing Onn on behalf of the proprietor of registered trademark No 56317 alleging the commission of an offence contrary to s 73 of the Act.

Section 73 of the Act is reproduced as follows:

Any person who imports, sells or exposes or has in his possession for sale or for any purpose of trade or manufacture, any goods or thing to which a counterfeit trade mark is applied or to which a registered trade mark is falsely applied, shall, unless he proves that -

(a) having taken all reasonable precautions against committing an offence under this section, he had, at the time of the commission of the alleged offence, no reason to suspect the genuineness of the mark and on demand made by or on behalf of the prosecution, he gave all the information in his power with respect to the persons from whom he obtained the goods or things; or

(b) he acted innocently,

be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000 for each goods or thing to which the counterfeit trade mark is applied or the registered trade mark is falsely applied (but not to exceed in the aggregate $100,000) or to imprisonment for a term not exceeding 5 years or to both. [Emphasis added.]

Section 73 clearly sets out two types of offences:

(i) dealings in goods to which a counterfeit trade mark is applied; and

(ii) dealings in goods to which a registered trade mark is falsely applied.

The dealings referred to include importing, selling, exposing for sale and possession for trade or manufacture.

The second type of offence was inserted as part of an amendment to the Act in 1991, and is now before the court`s consideration. Both counsel have proceeded on the basis that the case before this court concerns the false application of a registered trade mark.

`Falsely applied`

By s 73B(2) of the Act, a trade mark is deemed to be applied to goods if it is applied to a covering, label, reel or thing in or with which the goods are sold or exposed or had in possession for a purpose of trade or manufacture. For the purposes of the section, s 73B(4) states that `covering` includes, inter alia, a box. On the facts of this case, there is no dispute that the registered trade mark in question was `applied` to the boxes containing the goods in question.

What then is meant by `falsely applied` for the purposes of the section? A deeming provision is set out in s 73B(5):

A registered trade mark shall be deemed to be falsely applied to goods or services if, without the assent of the registered proprietor of the trade mark or of a registered user of the trade mark, the trade mark or a mark substantially identical with it is applied to the goods or services. [Emphasis added.]

Counsel for the applicants argued that, for an offence to be proved under (ii) above, it must be shown that the goods are not the goods of the proprietor of the registered trade mark. Counsel for the respondent argued that, for the purposes of s 73, a person commits an offence if he applies the trade mark without the assent or agreement of the registered proprietor. It matters not whether the goods to which the registered trade mark was applied were genuine or otherwise.

Similar arguments were raised in Ng Chye Mong Pte Ltd v PP , concerning the construction of s 69D of the Act (subsequently amended in 1991 as s 73). This section covered the application of counterfeit trade marks on goods, the case of (i) above. Chan Sek Keong JC (as he then was) took the view that, for a charge to be made out under the then s 69D of the Act, the mere copying of a trade mark of another did not constitute the offence of possessing for sale goods with a counterfeit trade mark applied to them unless the prosecution proved that they were not genuine goods, that is, goods belonging to the owner of the trade mark.

In support of his contention, counsel for the applicants cited corresponding provisions in the trade mark laws of Australia, United Kingdom and India. I shall discuss them in turn.

Sections 106, 107 of Trade Marks Act 1955, Australia

It is stated in s 107(4) of the Trade Marks Act 1955 that a registered trade mark shall be deemed to be falsely applied to goods or services if, without the assent of the registered proprietor or of a registered user, or the authority of the Act, the trade mark or a mark substantially identical with it is applied to the goods or services. This is similar to the language of s 73B(5) of the Act. Examples of false application are O`Connell v Fuggl e and O`Connell v Winsor , where the defendants refilled bottles bearing the trade marks with different adulterated products.

`Assent`

For the purpose of construing the word `assent` within the Act, counsel for the applicants sought to argue the case of Condy v Taylor , where it was held that a manufacturer who sold to a dealer in bulk any article usually sold and used in small quantities should be taken to have authorized the dealer to sell the articles as being of the vendor`s manufacture. It was argued for the applicants that, where the packaged goods were genuine, an estoppel would operate against the proprietor from denying assent to the dealer.

Counsel for the applicants argued that, in the light of the existence of this concept of assent by estoppel, when goods are genuine, application of their registered trade mark is necessarily with the assent of the registered proprietor of the trade mark. With the necessary assent, coupled with genuine goods, there is no false application and, therefore, no offence committed under s 73 of the Act.

Section 58A(1) of Trade Marks Act 1938 (as amended), England

This is reproduced as follows:

It is an offence, subject to subsection (3) below, for a person -

(a) to apply a mark identical to or nearly resembling a registered trade mark to goods, or material used or intended to be used for labelling, packaging or advertising goods, or

(b) to sell, let for hire, or offer or expose for sale or hire, or distribute -

(i) goods bearing such a mark, or

(ii) material bearing such a mark which is used or intended to be used for labelling, packaging or advertising goods, or

(c) to use material bearing such a mark in the course of a business for...