Oh Cheng Hai v Ong Yong Yew

• Jurisdiction: Singapore
• Judge: Yong Pung How CJ
• Judgment Date: 12 October 1993
• Neutral Citation: [1993] SGHC 245
• Docket Number: Magistrate's Appeal No 515/92/01
• Date: 12 October 1993
• Year: 1993
• Published date: 19 September 2003
• Plaintiff Counsel: Wee Pan Lee (Wee Tay & Lim)
• Citation: [1993] SGHC 245
• Defendant Counsel: Jimmy Yim Wing Kuen and Tony Yeo Soo Mong (Drew & Napier)
• Court: High Court (Singapore)
• Subject Matter: Possession of inlay cards and casings and other packaging materials for packing of audio tapes,Prosecutors solicitors for company,Compensation and costs,Locus standi,Private prosecution,Whether prosecutor must be the complainant,Meaning of 'trade mark',Factors to consider in awarding costs,ss 2 & 336 (1) & (8) Criminal Procedure Code (Cap 68),Cost of the prosecution,'Trade mark',Initiation of proceedings,Words and Phrases,Costs awarded to company instead of to complainant,Inclusion of costs of foreign witnesses,ss 2 & 72 Trade Marks Act (Cap 332, 1992 Ed),Whether payment awarded to correct party,Whether magistrate exercised discretion properly,Criminal Procedure and Sentencing,Trade Marks and Trade Names,s 401(1)(a) Criminal Procedure Code (Cap 68),Whether inlay cards and casings considered 'trade mark',Complainant agent of company

Cur Adv Vult

The appellant was convicted in the magistrate`s court of five charges under s 72 of the Trade Marks Act (Cap 332, 1992 Ed) (`the Act`). He was sentenced to a fine of $1,800 per charge and ordered to pay Sony Corporation $10,000 for the costs of his prosecution. Being dissatisfied, the appellant has appealed against the convictions and sentences and the order for the payment by the appellant of the costs of his prosecution.

Before this court, the appellant raised three grounds of appeal. The first ground was one of locus standi. His counsel submitted that it was wrong for the prosecution to be continued under the guidance of Drew & Napier as agent of the aggrieved party Sony Corporation while the complainant was Ong Yong Yew. He based his argument on this issue on s 336(1) and (8) of the Criminal Procedure Code (Cap 68) (`the Code`), which state:

(1) The Attorney-General shall be the public prosecutor and shall have the control and direction of criminal prosecutions and proceedings under this Code.

(8) Nothing in this section shall be held to preclude private persons or any officer of any Government department from appearing in person or by advocate to prosecute in summary cases before a Magistrate`s Court or in summary non-seizable cases before a District Court.

On this basis, he contended in a rather roundabout way that if the prosecution in a summary case before the magistrate`s court was someone other than the public prosecutor, that prosecutor must be the complainant, in this case Ong Yong Yew, or his advocate.

In my view this contention is based upon a misreading of s 336(8) of the Code. `Complaint` is defined in s 2 of the Code as:

... the allegation made orally or in writing to a Magistrate with a view to his taking action under this Code that some person whether known or unknown has committed or is guilty of an offence.

A complaint is that which triggers off the prosecution process. This is shown by s 128(1) which states:

(1) Subject to this Code, a Magistrate`s Court can take cognizance of an offence

(a) upon receiving a complaint as defined by this Code; ...

Once the magistrate takes cognizance of the complaint pursuant to s 133 the complainant is examined upon oath and the substance of the examination is reduced to writing and signed. It can be seen, then, that it is impossible for a company to be a direct complainant. This has to be an individual acting as the company`s agent. In the present case, when Ong Yong Yew signed the complaint, he specified in para 3 that it was made `on behalf of Sony Corporation ...`. Sony Corporation was the real complainant, and there is no evidence to suggest otherwise. In fact, it was most logical in the circumstances for Ong Yong Yew to file the complaint on behalf of Sony Corporation as he had been involved in the raid as an investigator under the employ of HS Intellectual Property Services and consequently had knowledge of the items seized.

Once the accused is issued a summons and proceedings are commenced, the accused has to be prosecuted but it does not follow that it is the person who files the complaint who then has to take charge of the prosecution. Such an argument is negated by the usual case where the public prosecutor takes over the case. Section 336(8) reserves certain situations (that is, summary cases before a magistrate`s court or summary non-seizable cases before a district court) where a private person or a government department can appear in person or by advocate to prosecute the offence. In this context, via s 11 of the Penal Code (Cap 224) incorporated by s 2 of the Code, person includes `any company or association or body of persons, whether incorporated or not`. Hence Sony Corporation was entitled to instruct its solicitors Drew & Napier to conduct the prosecution as its solicitors. It must be noted that these are not civil proceedings but criminal. For the purposes of a criminal prosecution there is no plaintiff-defendant situation. All that matters is the identity of the defendant, the identity of the complainant and most fundamentally, that with which the defendant is charged. Accordingly there was no merit in the first ground.

In his second ground of appeal, counsel for the appellant submitted that three of the charges had not been properly made out. This was because each of the three charges referred to Sony`s trade mark registration No 22195 covering class nine which encompassed a range of products. But in the attached schedules listing the infringing items found, not all the infringing items fell within the ambit of class nine.

The magistrate held that for the purposes of s 72, the mark had to `take on a physical body or form`. As a result he was not sure if all the items specified in the schedules came within this definition. At p 18 of his grounds of decision he stated:

In my opinion, while it may be uncertain if the inlay cards and casings can be considered a `trade mark` for present purposes, the wrappers, boxes and video tape jackets can. Later at p 19 he stated:

Even if I am wrong in this, the relevant charges P2C, P4C and P5C each have, as infringing items, `Sony` stickers.

Counsel for the appellant pointed out, quite correctly, that each schedule forms a part of the charge itself. Hence, if a certain item did not infringe s 72 then the charge should have been amended to omit it. If, indeed, some of the items should not have been included in the schedule, then I would agree with counsel on his submission that the charges are defective. However, I am of the view that the magistrate erred in his definition of a `trade mark` within the context of s 72. In the instant case, the mark has been registered under class nine. A registered trade mark is defined as `a trade mark which is actually upon the register`. A `trade mark` is further defined by s 2 of the Act as:

... a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to

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