Guccio Gucci SpA v Sukhdav Singh and other actions

• Jurisdiction: Singapore
• Judge: Chan Sek Keong J
• Judgment Date: 19 November 1991
• Neutral Citation: [1991] SGHC 169
• Docket Number: Suits Nos 584, 585 and 586 of 1990
• Date: 19 November 1991
• Published date: 19 September 2003
• Year: 1991
• Plaintiff Counsel: Steven Seah and Toh Wee Jin (Drew & Napier)
• Citation: [1991] SGHC 169
• Defendant Counsel: K Gopalan (Raja & Partners)
• Court: High Court (Singapore)
• Subject Matter: s 134 Evidence Act (Cap 97),Proof of evidence,Order requiring defendant to disclose past acts of infringement,Post-judgment discovery,Whether 'real or appreciable risk' of defendant being prosecuted for past acts of infringement if revealed,s 73 Trade Marks Act (Cap 332),Admissions,Whether plaintiffs' undertaking not to prefer new criminal charges sufficient to lift privilege,Order requiring defendant to disclose past acts of trade marks infringement,Infringement,Evidence,Whether court has power to impose condition that evidence of past infringements will not be admissible in criminal proceedings against the defendant,Trade Marks and Trade Names,Privilege against self-incrimination

Cur Adv Vult

In each of these three actions, the plaintiffs claimed, inter alia, injunctive relief and damages against the defendant for infringement of their respective registered trade marks.

Prior to the commencement of these actions, the plaintiffs caused to be issued against the defendant search warrants under the Criminal Procedure Code (Cap 68), which upon execution resulted in the plaintiffs seizing hundreds of bottles of perfumes bearing the relevant trade marks and other paraphernalia for their manufacture, bottling, and packing. The brand names involved were Christian Dior, Yves St Laurent, Polo, Gucci, Anais Anais, Charlie and Giorgio. Pursuant to these seizures, the plaintiffs have commenced private prosecutions against the defendant for offences under s 73 of the Trade Marks Act (Cap 332).

The three applications before me are for summary judgment against the defendant for the following orders: (1) a permanent injunction to restrain the defendant from further infringements; (2) the delivery-up of all infringing articles; (3) the defendant to disclose information relating to past infringements by means of an affidavit; (4) an affidavit setting out all information to be disclosed; (5) leave to the plaintiffs to destroy all infringing articles seized; (6) an inquiry as to damages; and (7) costs. At the first hearing before me on 2 September 1991, the defendant consented to, and judgment was given in respect of prayers (1), (2), (5), (6) and (7), such costs to be fixed by the registrar at the appropriate scale of fees by reference to the amount of damages so found in the inquiry. Prayers (3) and (4) are for discovery. The defendant resists these two prayers on the ground that the court cannot compel him to give information which tends to or will incriminate himself. In an ordinary case where such infringing acts do not expose the infringer to prosecution for criminal offences relating to or arising from such acts, it is established law that the successful plaintiff is entitled to post-judgment discovery as a means of proving his damages: see Draper v Hubert Trist ;1 The Leather Cloth Co (Ltd) v Hirschfeld ;2 Powell v The Birmingham Vinegar Brewery Co Ltd ;3 Murray v Clayton ;4 and Saccharin Corp v Chemicals & Drugs Co .5

Prayers (3) and (4) read as follows:

The defendant do disclose forthwith to the plaintiffs` solicitors the following:

(a) The names and addresses of all persons, firms, companies or otherwise to whom the defendant had sold, distributed, supplied or otherwise disposed of the counterfeit `Gucci` perfume and perfumery prior to the issue of the writ in this action.

(b) The full details of the date and quantities of each sale, distribution, supply or disposal referred to in (a).

(c) The full details of the value and description of each counterfeit item in each sale, distribution, supply or disposal referred to in (a).

(d) All the documents including invoices and receipts which are or have been at any time in his possession, custody or power relating to such sale, distribution, supply or disposal referred to in (a).

Within seven (7) days of the service on him of the order to be made herein the defendant do make and serve on the plaintiffs` solicitors an affidavit setting out all the information to be disclosed pursuant to this order and exhibiting thereto all relevant documents and/or articles.

The information sought under prayer (3) forms part of each of the plaintiffs` claim for damages for infringement. Paragraph 3 of each of the statements of claim refers to past acts of infringement, viz manufacturing, bottling, having in possession for sale, selling and/or offering for sale in the course of trade, perfume bearing the plaintiffs` trade mark but which is not the perfume manufactured by the plaintiffs or with their consent. Sub-paragraphs (i) to (iv) of the particulars refer to acts of infringement evidenced by the possession of the bottles and paraphernalia that were seized under the search warrant. Sub-paragraph (v) states that the plaintiffs `are unable to particularize all the infringing acts of the defenuntil after discovery or interrogatories but will claim to recover in respect of such claims`. The plaintiffs` claim for damages are therefore not limited to the acts of infringement particularized in the particulars but include those which are to be discovered.

Although the plaintiffs are seeking discovery to augment their damages, they are effectively seeking evidence to uncover past acts of infringement. Having regard to the terms of s 73 of the Trade Marks Act (Cap 332), which make infringement of a trade mark in the manner prescribed therein an offence, it cannot be disputed that the past acts of infringement of the defendant, if uncovered, would constitute offences under that section. The reason is that the bases of the civil action are substantially the same as those of the s 73 offence. It is therefore plain that the plaintiffs are seeking an order of court which, when obeyed, will have the effect of compelling the defendant to incriminate himself in relation to offences arising from the past acts of infringement. Not surprisingly, the defendant has claimed the privilege against self-incrimination in an affidavit filed in each of the three applications. He does not claim the privilege in respect of the particularized acts as he has already been charged under s 73 of the Trade Marks Act in relation to such acts, and to which he has also consented to judgment. He claims it in respect of the unparticularized, and therefore unproved, acts.

In Riedel-De-Haen A-G v Liew Keng Pang ,6 I held that the privilege against self-incrimination, being part of the common law, applied with full force in Singapore to pre-trial discovery by a plaintiff in an action for infringements of copyright, and that the privilege was not abrogated or affected by s 134 of the Evidence Act (Cap 97). Counsel for the plaintiffs accepts the correctness of the decision, but does not accept that the defendant in these three actions is entitled to claim the privilege. I shall examine his arguments later. Where the privilege is claimed and there is a basis for claiming it, `it is the paramount duty of the court to uphold it` (per du Parcq LJ in Triplex Glass Co 7 at p 617). However, the judge must consider whether it is a bona fides claim. The mere assertion by a party that he may or will criminate himself is not sufficient. The judge should be certain that the authority of the court is not being `trifled with`: see Pollock CB (at p 362) in Adams v Lloyd ,8 Triplex Safety Glass Co v Lancegaye Safety Glass (1934) Ltd 7 at p 617, and Sociedade Nacional de...