Louis Vuitton Malletier v Megastar Shipping Pte Ltd (PT Alvenindo Sukses Ekspress, third party) and other suits

CourtHigh Court (Singapore)
JudgeGeorge Wei J
Judgment Date24 November 2017
Neutral Citation[2017] SGHC 305
Citation[2017] SGHC 305
Published date11 January 2019
Docket NumberSuit Nos 300, 306, 310, 322, 327 of 2013
Hearing Date14 March 2017,17 April 2017,13 March 2017,16 March 2017,20 March 2017
Plaintiff CounselRavindran s/o Muthucumarasamy, Jevon Louis, Teo Kwan Soon, Paul and Yuen Kit Kuan (Ravindran Associates),Dedar Singh Gill and Lim Siau Wen (Drew & Napier LLC),Andy Leck, Faith Lim and Lim Ren Jun (Wong & Leow LLC)
Defendant CounselLeonard Chia Chee Hyong and Ng Liu Qing (Asia Ascent Law Corporation)
Subject MatterTrade Marks and Trade Names,Infringement,Border enforcement measures
George Wei J: Introduction

These proceedings concern claims for trade mark infringement against a freight forwarder, Megastar Shipping Pte Ltd (“the Defendant”). The claims were brought by five registered trade mark proprietors (collectively, “the Plaintiffs”) in the following suits: Suit No 300 of 2013 (consolidated with Suit No 302 of 2013), Suit No 306 of 2013, Suit No 310 of 2013 (consolidated with Suit No 311 of 2013) and Suit No 327 of 2013. The Defendant in turn brought third-party proceedings against PT Alvenindo Sukses Ekspress (“the Third Party”), an Indonesian company based in Batam.

In brief, the claims arise out of two shipments by which two containers (“the Containers”) loaded with counterfeit goods were shipped from two ports in China to Singapore, with the intention that they were to be sent on to the Third Party in Batam. The Containers were intercepted by Singapore Customs and detained, inspected and seized under the newly enhanced provisions for “assistance by border authorities” set out in Part X of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”). Upon examination, the Containers were discovered to contain merchandise bearing infringing trade marks (“the Counterfeit Goods”). After seizure by Singapore Customs, the Plaintiffs commenced proceedings for trade mark infringement against the Defendant, alleging that the Defendant had imported the Counterfeit Goods into Singapore. The Defendant denies importing the Counterfeit Goods into Singapore, and asserts that even if the Counterfeit Goods had been imported into Singapore, the Defendant is, in any case, not the importer.

At the heart of the dispute between the parties is the question of what amounts to an act of import or export “under the sign”, and who is the importer or exporter in the context of s 27 of the TMA – that is, in the context of the substantive rights enjoyed by the registered trade mark proprietor under the TMA. Put slightly differently, the question concerns the relationship between the substantive right of the trade mark proprietor to bring infringement proceedings where trade-marked goods are imported without consent and the special border enforcement provisions on inspection, seizure and detention of imports and exports of infringing and counterfeit goods contained in the TMA. These enforcement measures in turn dovetail into the general set of legislation and regulations on trade, Port of Singapore operations (such as entry, landing, warehousing, and loading procedures) and Customs control (especially on revenue matters such as import/export duties as well as control of prohibited goods and the like). In short, does “import” and “export” mean the same thing and is the identity of the “importer” and “exporter” the same for both the substantive rights and the special border enforcement provisions?

The questions arise in the specific context of goods being brought into the port of Singapore where they were to be temporarily held pending transhipment to another port in Batam, Indonesia. Distinctions can and are sometimes drawn between (i) through transhipment; (ii) non-through transhipment; (iii) import for re-export; and (iv) goods in transit. Whether these distinctions are just labels of convenience or trade practice, or carry specific legal consequences, depends very much on the context.

For example, it is not surprising to find there are many different procedures, forms, and permit applications which may be applicable when goods are sought to be brought into or out of Singapore, given the vast remit of the Port of Singapore Authority (“PSA”), Singapore Customs, and authorities concerned with the regulation of imports and exports, as well as the different circumstances under which goods may enter or leave Singapore. Someone obviously must apply for the necessary permits, make the requisite declarations, pay the required fees or charges and provide information which may be required by the authorities. That person need not necessarily be the shipper, consignor, consignee or the master of the vessel. The person may be an agent of the shipper, consignor or consignee, often taking the form of a freight forwarder. In some cases, perhaps many, forms or permit applications issued by the relevant authorities will include a box or heading describing the person submitting that form or application as an “importer” or “exporter”. Against this backdrop, one of the questions that has arisen is whether and how the Court should take account of the terminology used in such forms, declarations and applications in deciding who is an “importer” or “exporter” within the context of an alleged trade mark infringement.

Dramatis personae

The Plaintiffs comprise Louis Vuitton Malletier (“LV”), Guccio Gucci SPA (“Gucci”), Burberry Limited (“Burberry”), Hermès International (“Hermès”) and Sanrio Company Ltd (“Sanrio”). The Plaintiffs and the respective Suits commenced by each of them are set out in the following Table:

Suit No Plaintiff
HC/S 300/2013 LV
HC/S 306/2013 Gucci
HC/S 310/2013 Burberry
HC/S 322/2013 Hermès
HC/S 327/2013 Sanrio

The Plaintiffs are the registered proprietors of numerous trade marks in Singapore. These comprise word and device marks registered under multiple classes under the TMA.1 The Plaintiffs produce a wide variety of goods including bags, wallets, purses, leather accessories and toys in respect of which the registered trade marks are used.

The Defendant is a Singapore company which carries on the business of a freight forwarder.2

The Third Party, who did not appear or take any part in these proceedings, is an Indonesian company based in Batam. The status of the Third Party was never made entirely clear on the evidence, but the parties have proceeded on the basis that the Third Party is itself a freight forwarder.3

The witnesses

Before delving into the facts, this may be a convenient juncture to introduce the witnesses who gave evidence at trial, since I will refer to their evidence in the course of describing the factual matrix. A total of three witnesses testified for the Plaintiffs: Mr Francois Dubois (“Mr Dubois”), the managing director of STU, a firm in Hong Kong specialising in assisting brand owners to investigate intellectual property infringement.4 Mr Dubois’ evidence was mainly concerned with investigations in Hong Kong and Shenzhen on the companies named as the shippers in the relevant shipping documents. Mr Chong Wei Hoong (“Mr Chong”), Assistant Head of the Operations Management Branch of Singapore Customs.5 Mr Chong’s evidence was primarily on the documentation required for shipment of containers into Singapore where containers are to be carried out of Singapore to a third country. Mr Chong was subpoenaed by the Plaintiff in HC/S 327/2013. Ms Chew Mui Ling (“Ms Chew”), an Executive Director of the Trade and Customs & Indirect Tax Practice of KPMG Services Pte Ltd.6 Ms Chew’s evidence was primarily on the standard documentation required for shipment of containers into Singapore which containers are to be carried out of Singapore to a third country.

The following three witnesses testified for the Defendant. Mr Chua Swee Teck (“Mr Chua”), a director of the Defendant. Mr Chua’s evidence concerned the business of the Defendant, and its relationship with the companies named as the shippers and the third party. Mr Aaron Cheong (“Mr Cheong”), an officer from Singapore Customs.7 Mr Cheong’s evidence was primarily on the documentation required for shipment of containers into Singapore which containers are to be carried out of Singapore to a third country. John Iversen (“Mr Iversen”), the General Manager of special projects (Asia) of C H Robinson Project Logistics Pte Ltd, a company owned by C H Robinson Worldwide Inc. Mr Iversen is also a representative of C H Robinson Freight Services (Singapore) Pte Ltd, a company that specialises in freight forwarding services in Singapore. He is also a council member of the Singapore Logistics Association.8 Mr Iversen’s evidence was mainly concerned with the role and function of a freight forwarder as well as the usual or standard practices relating to knowledge or information as to the contents of a container in respect of which a freight forwarder’s services are or have been engaged.

I note in passing the Defendant had engaged the services of Mr Schweiger Martin Rainer Gabriel (“Mr Schweiger”), an European patent and trade mark attorney and agent, to testify as to European law and legal materials on border enforcement provisions. The intention was to call Mr Schweiger as an expert witness. To this end, Mr Schweiger swore five affidavits of evidence-in-chief (one for each Suit) which included Mr Schweiger’s expert report. The Plaintiffs applied to strike out Mr Schweiger’s AEICs on the ground that his expert report was “irrelevant” under O 41 r 6 of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) and/or the inherent jurisdiction of the Court. After hearing counsel, I struck out the AEICs of Mr Schweiger. Whilst no issue was raised in the submissions, it is convenient to stress that the competency and experience of Mr Schweiger was not in issue. The sole question was whether an expert opinion on the European Community’s treatment of similar provisions was admissible as evidence in the case at hand.

Events leading to the dispute

Before turning to the background to this dispute, I highlight two points at the outset: First, there was no dispute over the ownership, validity and subsistence of the Plaintiffs’ trade marks.9

Secondly, there was no dispute over the fact that the Counterfeit Goods did infringe the Plaintiffs’ trade marks and moreover that they were counterfeits. While a plethora of terms may be used in trade mark disputes to describe infringing goods, counterfeit goods are a particularly egregious type of infringing goods. Infringing goods...

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