Lee Thin Tuan v Louis Vuitton

• Jurisdiction: Singapore
• Judgment Date: 21 May 1992
• Date: 21 May 1992
• Docket Number: Civil Appeal No 79 of 1989
• Court: Court of Appeal (Singapore)

Lee Thin Tuan

Plaintiff

and

Louis Vuitton

Defendant

[1992] SGCA 39

Yong Pung How CJ

,

L P Thean J

and

F A Chua J

Civil Appeal No 79 of 1989

Court of Appeal

Evidence–Admissibility of evidence–Privilege against self-incrimination–Order requiring defendant to give information and produce documents–Whether compliance with order tending to incriminate and expose to criminal charge–Whether court has power to order that certain information or documents not be admitted if otherwise admissible under Evidence Act (Cap 97, 1990 Rev Ed) or other written law–Evidence Act (Cap 97, 1990 Rev Ed)–Trade Marks and Trade Names–Infringement–Order requiring defendant to give information and produce documents–Whether compliance with order tending to incriminate and expose to criminal charge–Trade Marks Act (Cap 332)–Consumer Protection (Trade Descriptions And Safety Requirements) Act (Cap 53, 1985 Rev Ed)

The respondent, the registered proprietor of the trade marks “Louis Vuitton” and “LV”, had commenced proceedings against the appellant alleging that he had infringed its trade marks. During the course of such proceedings, the High Court had, inter alia,ordered that the appellant file an affidavit within 14 days setting out information in relation to the receipt and supply of goods bearing the trade marks, and exhibiting documents that were in his possession which pertained to such transactions. On appeal, in arguing against the order, the appellant contended that compliance with such an order would tend to incriminate him and expose him to a criminal charge or charges under the Trade Marks Act (Cap 332) and the Consumer Protection (Trade Descriptions And Safety Requirements) Act (Cap 53, 1985 Rev Ed). In response, the respondents contended that the object of giving effect to the privilege against self-incrimination could be achieved by imposing restrictions on the use of the information and documents provided by the appellant and by requiring the respondent to give an undertaking not to use the information and documents for the purpose of any criminal prosecution against the appellant.

Held, allowing the appeal:

(1) There were three reasons why the court could neither impose a condition that the information provided and documents produced should not be admissible against the appellant in any prosecution relating to the infringement of the respondent's trademark, nor require the respondent to give an undertaking to restrict the use of any of the information or documents. First, as any undertaking binds only the respondent, such undertaking has but a limited effect since the question of prosecution lies with the Public Prosecutor and not the respondent. Second, in the conduct of any prosecution, the Public Prosecutor could not be constrained by such an order. Third, the question of admissibility of evidence is governed by the Evidence Act (Cap 97, 1990 Rev Ed) (“the Evidence Act”) and other written law and the courts, when exercising their civil jurisdiction, had no power to order that certain information or documents ought not to be admitted in evidence in a criminal prosecution which is otherwise admissible under the Evidence Act or any other written law: at [8].

(2) The order in question ought to be expunged as, on the facts of the case, it would tend to incriminate the appellant and expose him to criminal prosecution and there was no suggestion that such risk of prosecution was flimsy or remote: at [10].

Thorn EMI Video Programmes Ltd v Kitching & Busby [1984] 2 IPR 304 (not folld)

Guccio Gucci SpA v Sukhdav Singh [1991] 2 SLR (R) 823; [1992] 1 SLR 553 (refd)

PMK Rajah v Worldwide Commodities Sdn Bhd [1985] 1 MLJ 86 (refd)

Rank Film Distributors Ltd v Video Information Centre [1982] AC 380 (folld)

Riedel-de Haen AG v Liew Keng Pang [1989] 1 SLR (R) 417; [1989] SLR 460 (refd)

Consumer Protection (Trade Descriptions And Safety Requirements) Act (Cap 53,1985 Rev Ed)

Evidence Act (Cap 97,1990 Rev Ed)

Trade Marks Act (Cap 332)

S Pillai (Patrick Koh & Co) for the appellant/defendant

Jimmy Yim, Steven Seah and Toh Wee Jin (Drew & Napier) for the respondent/plaintiff.

Judgment reserved.

L P Thean J

(delivering the judgment of the court):

1 The respondents are registered proprietors of the trade marks “Louis Vuitton” and “LV”. On 15 April 1988, their private investigators, armed with a search warrant, conducted a raid at the appellant's premises and discovered certain goods which allegedly infringed the respondents' trade marks: 295 handbags, 155 wallets, 15 key cases and five briefcases, all bearing the trade marks. After the raid, there was correspondence between the parties in November and December 1988 relating to the alleged infringement. On 1 June 1989, the respondents issued a writ against the appellant, alleging that the appellant had infringed the respondents' trade marks, and claiming, among other things, an injunction to restrain him from infringing the trade marks and an order for the delivery up by the appellant of all...