Cigar Affair v Pacific Cigar Company
Jurisdiction | Singapore |
Judge | Woo Bih Li J |
Judgment Date | 01 July 2005 |
Neutral Citation | [2005] SGHC 108 |
Citation | [2005] SGHC 108 |
Defendant Counsel | Sharmilee Shanmugam (Citilegal LLC) |
Published date | 04 July 2005 |
Plaintiff Counsel | Kirpal Singh (Kirpal and Associates) |
Date | 01 July 2005 |
Docket Number | Criminal Motion No 23 of 2004 |
Court | High Court (Singapore) |
Subject Matter | Whether mens rea element required for establishing guilt under s 49 Trade Marks Act,Section 53A Trade Marks Act (Cap 332, 1999 Rev Ed), s 62 Criminal Procedure Code (Cap 68, 1985 Rev Ed),Offences,Applicant seeking to set aside search warrants issued and executed against it on grounds that seizure of items and documents on applicant's premises exceeding scope of warrants,Trade Marks and Trade Names,Search warrant,Section 49 Trade Marks Act (Cap 332, 1999 Rev Ed), s 136(1) Copyright Act (Cap 63, 1999 Rev Ed) |
Introduction
1 The applicant, Cigar Affair, applied under Criminal Motion No 23 of 2004 (“No 23”) and No 24 of 2004 (“No 24”) to set aside two search warrants which were issued against it on two complaints made by The Pacific Cigar Company (Singapore) Pte Ltd (“PCC Singapore”) which was the respondent in each of the motions. As can be seen, the name of the respondent used in the heading of the motions was not its complete name. As both motions were identical in nature and the background facts were similar, although involving different trade marks, the parties agreed that submissions would be made in respect of No 23 only and the outcome thereof would apply to both No 23 and No 24.
Background
2 PCC Singapore was the exclusive distributor in Singapore of Cuban cigars manufactured by Corporacion Habanos SA (“Habanos”), a corporation organised under the laws of Cuba. PCC Singapore said it had been given a power of attorney from Habanos to take all necessary steps to protect and enforce the rights of Habanos in respect of Habanos’ trade marks registered in Singapore. Habanos is the registered proprietor of two trade marks in Singapore. One was a mark with words and a device. The words were “cohiba habana cuba totalmente a mano” with the first word in bold capital letters. The description of the device was “girl’s face profile grid”. The other mark was for the words “COHIBA”. I will refer to them as “the Marks”. The Marks were in respect of various goods including cigars.
3 Due to certain emails sent by Cigar Affair to third parties, PCC Singapore engaged the services of private investigators to look into the possible sale of counterfeit cigars by Cigar Affair at its place of business at Novotel Apollo Hotel, Lobby #01-05, 405 Havelock Road, Singapore 169633 (“the Shop”).
4 The complaint was made by Nestor Juan Valera Callaba who was the business development manager of The Pacific Cigar Company Limited in Hong Kong, the parent company of PCC Singapore. On 10 August 2004, two operatives of the private investigators visited the Shop. They found a sign depicting “CIGAR AFFAIR” on the glass door of the Shop. They noticed four boxes of Cohiba cigars with limited edition labels on display. One of the persons manning the Shop, by the name of Esther, asked another person there, by the name of Jacob, to bring cigars from one of the wooden shelves at the rear of the premises. Jacob returned with three boxes of cigars in different sizes. Esther opened and showed one of the boxes which contained 25 sticks of Cohiba cigars. Upon further inquiry by the operatives, Esther showed a second box of Cohiba cigars to them. These were of a limited edition. Esther also later opened the third box and informed the operatives that the cigars therein were of a special edition and contained different mixes and sizes of Cohiba cigars. Eventually the operatives purchased a box of Cohiba cigars with the label “Edicion Limitada 2001”. This phrase means “Limited Edition 2001”. There was also another label on the box with the trade mark which had a device. Each cigar also had the COHIBA mark on it. The cigars in the box were of the “Robustos” size.
5 Mr Callaba set out various reasons in his Affidavit as to why he concluded that the cigars were counterfeit goods. He had been advised by solicitors that an offence had been committed under s 49 of the Trade Marks Act (Cap 332, 1999 Rev Ed) (“TMA”). Based on the complaint, a search warrant, No 133 of 2004, was issued on 18 August 2004 authorising the police to enter the Shop and to seize and take possession of goods and documents as set out in the schedule of the search warrant.
6 The search warrant was executed on the same day, ie, 18 August 2004. Following this, counsel for Cigar Affair and for PCC Singapore attended at the return hearing on 23 August 2004. Thereafter, No 23 was filed on 13 September 2004 to quash the search warrant. After hearing submissions, I dismissed No 23, as well as No 24, with costs. I now set out my reasons.
The court’s reasons
7 Before I deal with the main arguments, I should mention that counsel for PCC Singapore, Ms Sharmilee Shanmugam, had taken an objection to the form of the application before me. She submitted that the application should have been made by way of a petition and not a motion, relying on Heng Lee Handbags Co Pte Ltd v PP
8 Mr Singh raised three main arguments in support of the motion:
(a) that the complaint was defective in law;
(b) that the seizure included items which had not been set out and cited in Mr Callaba’s complaint; and
(c) that the seizure included documents which had not been set out and cited in Mr Callaba’s complaint as well as documents which ought not to come within the ambit of the power of seizure.
9 For the first main argument, what Mr Singh meant was that the complaint did not refer to the mens rea of Cigar Affair. Mr Singh relied on the judgment of Kan Ting Chiu JC (as he then was) in Lance Court Furnishings Pte Ltd v PP
Section 136(9) empowers a magistrate to issue search warrants to seize infringing copies of works or other matter in which copyright subsists by means of or in relation to which any offence under s 136(1), (2), (3) or (4) has been committed.
Section 136(1), (2), (3) and (4) create offences for different dealings with infringing material, eg making, hiring, selling, exhibiting, importing, and distributing. None of the offences are absolute offences. For each offence, a person dealing with infringing material is guilty only if he ‘knows, or ought reasonably to know’ of the infringement.
I asked counsel whether the ‘knows, or ought reasonably to know’ element is one for the prosecution to allege and prove, or whether it is a matter whose absence affords the defendant a defence. After reading their submissions, it appeared that this question has not been considered before.
A careful reading of s 136(1), (2), (3) and (4) where the words appear shows that for each offence, dealing with infringing material does not constitute an offence unless the person knows or ought reasonably to know that the material are infringing copies. Without this element, no offence is made out, and no defence is necessary.
This reflects more than a drafting preference. It means that a copyright owner cannot complain or prosecute under s 136 on the ground that someone is infringing his copyrights unless he can show that the other party knew or ought reasonably to know of the infringement. If he does not know if the other party knew or ought reasonably to know of the infringement, he can cure that by informing that party of it before taking action under the section.
Chua Soon Chye in his complaint said that:
I verily believe that Lance Court is infringing s 136 of the Copyright Act by possessing, distributing, selling and/or importing fabrics bearing artwork which infringe Anju/Woodridge Inc’s copyright.
without saying whether Lance Court knew or ought reasonably to know of the infringements. That did not establish any offence under s 136(1), (2), (3) or (4) and did not justify the issuance of the search warrants under s 136(9). The search warrants issued must therefore be set aside on this ground.
10 However, Lance Court was not dealing with the TMA but the Copyright Act (Cap 63, 1999 Rev Ed). The relevant provisions of the latter were materially different from those of the TMA.
11 For present purposes, I need only cite s 136(1) of the Copyright Act which states:
136. ―(1) A person who at a time when copyright subsists in a work —
(a) makes for sale or hire;
(b) sells or lets for hire, or by way of trade offers or exposes for sale or hire; or
(c) by way of trade exhibits in public,
any article which he knows, or ought reasonably to know, to be an infringing copy of the work shall be guilty of an offence …
Sections 136(2), (3) and (4) have the same requirements of “know, or ought reasonably to know” as s 136(1).
12 On the other hand, s 49 TMA states:
49. Any person who —
(a) …
(b) sells or offers or exposes for sale; or
(c) has in his possession for the purpose of trade or manufacture,
any goods to which a registered trade mark is falsely applied shall, unless he proves that —
(i) 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
(ii) he had acted innocently,
be guilty of an offence …
13 As can be seen, a person is guilty of an offence under s 136(1) of the Copyright Act if he has the requisite knowledge or ought to have such knowledge. Neither of these requirements apply to s 49 TMA where the offence is established without the mens rea and it is for the accused person to satisfy either of the provisos stated in s 49 TMA. It was clear to me that Mr Singh was applying Lance Court out of context. Accordingly, his submission about the defective complaint was not valid.
14 As for the second main argument of Mr Singh, his point was that other Cohiba...
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