Creative Technology Ltd v Cosmos Trade-Nology Pte Ltd and Another

• Jurisdiction: Singapore
• Judgment Date: 26 August 2003
• Date: 26 August 2003
• Docket Number: Suit No 68 of 2003 (Summons in
• Court: High Court (Singapore)

Creative Technology Ltd

Plaintiff

and

Cosmos Trade-Nology Pte Ltd and another

Defendant

[2003] SGHC 188

Belinda Ang Saw Ean J

Suit No 68 of 2003 (Summons in Chambers No 1244 of 2003)

High Court

Trade Marks and Trade Names–Infringement–Defence–Second defendant claiming he did not consent to first defendant infringing plaintiff's registered marks–Whether second defendant personally liable for first defendant's acts–Trade Marks and Trade Names–Infringement–Defence–Whether innocence is valid defence in action for trade mark infringement–Whether s 49 (ii) of the Trade Marks Act (Cap 332, 1999 Rev Ed) applicable–Trade Marks and Trade Names–Infringement–First defendant selling counterfeit sound cards bearing plaintiff's registered marks–Whether plaintiff's trade marks infringed–Trade Marks Act (Cap 332, 1999 Rev Ed) s 27

The plaintiff applied for summary judgment against the first defendant and the second defendant (“Huang”) a director and a major shareholder of the first defendant for trade mark infringement. In his defence, Huang claimed that he did not consent to the infringement of the plaintiff's registered marks by the first defendant, and that the sales were without his knowledge or participation. Both defendants also sought to rely on s 49 (ii) of the Trade Marks Act (Cap 332, 1999 Rev Ed), maintaining that they had acted innocently and without knowledge.

Held, allowing the plaintiff's application:

(1) The plaintiff was entitled to the injunctive relief sought. It had established the requisite conditions under s 27 (1) of the Trade Marks Act: at [12].

(2) A person who procured and induced another to commit a tort becomes a joint tortfeasor. Huang had incurred personal liability as a joint tortfeasor by procuring or inducing the first defendant's infringement of the registered marks: at [15].

(3) Section 49 (ii) of the Trade Marks Act was specific to the offences and penalties laid down in that particular section, and was thus inapplicable. The innocence of the infringer was not relevant where injunctive relief and damages were separately sought in a civil action. In any case, on the evidence, Huang must have known of the first defendant's infringement of the plaintiff's registered marks: at [16] to [18].

Gillette UK Limited v Edenwest Limited [1994] RPC 279 (folld)

MCA Records Inc v Charly Records Limited [2000] EMLR 743 (folld)

Rules of Court (Cap 322, R 5, 1997 Rev Ed) O 14

Trade Marks Act (Cap 332, 1999 Rev Ed) ss 27, 49 (ii) (consd);ss 27 (1), 27 (4)

Daniel Chia (Wong & Leow LLC) for the plaintiff

Palanaippan Sundararaj (Straits Law Practice LLC) for the defendants.

Belinda Ang Saw Ean J

1 The plaintiff, Creative Technology Ltd, obtained summary judgment against Cosmos Trade-Nology Pte Ltd (“first defendant”) and Huang Wen-Lai (“second defendant”) for trade mark infringement on 5 May 2003. I granted restraining orders as well as an order for delivery up or destruction of all infringing reproductions and/or any article that has been predominantly used for making such copies. In addition, the plaintiff obtained an order directing...