Public Prosecutor v Kwan Eddy Shu Kin

• Jurisdiction: Singapore
• Judge: Aedit Abdullah
• Judgment Date: 29 July 2005
• Neutral Citation: [2005] SGDC 163
• Plaintiff Counsel: David Khoo
• Published date: 11 August 2005
• Court: District Court (Singapore)
• Defendant Counsel: Prithipal Singh (Prithipal and Associates)
• Subject Matter: Criminal Procedure and Sentencing,Sentencing,Forms of punishment,Fines,Fine can be effective deterrent in intellectual property infringement cases if it effectively deprives offender of benefits from offence and operates as punishment,Accused apparently making no attempt to verify genuineness of articles and knowing that articles were counterfeit,Whether higher fine relative to number and quality of infringing articles should be imposed in lieu of imprisonment,Principles,Aggravating factors,Whether accused part of syndicate or organised criminal effort concerned with manufacture, sale or distribution of counterfeit articles,Mitigating factors,Accused person reaching settlement with trade mark owner by paying compensation, thus obviating need for civil proceedings,Compensation sum probably representing substantial proportion if not whole of gains made by accused,Whether payment of compensation indicative of accused's remorse,Whether mitigating factor,Trade Marks and Trade Names,Offences,Possession of articles to which registered trade mark is falsely applied for purpose of trade or manufacture,Sentence,Section 49(c) Trade Marks Act (Cap 332, 2005 Rev Ed)

29 July 2005

District Judge Aedit Abdullah

1. The Accused was charged and convicted on his plea of guilt 4 charges relating to a conspiracy for the possession of counterfeit goods under s 49(c) Trade Marks Act read with s 109 Penal Code. Six other charges were taken into consideration for the purposes of sentencing. Two other charges were withdrawn b y the Prosecution. Fines were imposed as follows: $12,000 (in default 2 months’ imprisonment) for DAC 10382, $15,000 (in default 3 months) for DAC 10384, $2000 (in default 1 month) for DAC 10387 and finally $1,000 (in default 2 weeks) for DAC 10389. The total fine was $30,000 with a total sentence in default of 6 months’ and 2 weeks’ imprisonment.

2. The Prosecution having appealed against the sentences imposed, I now give my reasons.

The Charges

3. The first charge, DAC 10382, reads:

You, Kwan Eddy Shu Kin, S 2682039A, are charged that you, between May 2004 to September 2004, did engage in a conspiracy, namely, possession for the purpose of trade, goods to which a registered trade mark has been falsely applied, and in [pursuance] to the conspiracy and in order to the doing of that thing, an act took place, to wit on the 28^th day of September 2004, at about 5.25 pm, at Blk 505 Beach Road, Golden Mile Food Centre, #02-202, Singapore, you did assist Toh Siow Choo to utilise the unit registered under your name as a storage place to keep 933 pieces of shoes to which the registered trademark “Three Blades Leaves Stripes (Device) registered in Singapore under Trade Mark umber T73/59201 H in class 25, has been falsely applied, an act which was committed in consequence of your abetment, and you have thereby committed an offence punishable under Section 49© of the Trade Marks Act, Chapter 33w, read with Section 109 of the Penal Code, Chapter 224.

4. The other charges were in similar terms: DAC 10384 was in respect of 839 pairs of shoes and 34 pairs of socks, DAC 10387, to 8 caps, and DAC 10389 to 4 hats, with other falsely applied trade marks.

The Facts

5. The statement of facts admitted by the Accused read, in material parts:

4.1 On 28 September 2004 at about 1725 hrs, [the complainant] armed with search warrant 147/2004, together with a party of officers from the Intellectual Property Rights Branch and IPAs, raided one unit at Blk 505 Beach Road, Golden Mile Food Centre, #02-202 (‘premise) and seized the following items:

(a) 471 pairs of ‘Adidas’ shoes;

(b) 1 piece of ‘Adidas’ shoe;

(c) 7 pieces of ‘Adidas’ bags;

(d) 18 pairs of ‘Adidas’ socks.

4.2 When raiding the said unit, other familiar brands were discovered and the respective IPAs were invited to identify the following items that [were] later discovered to be counterfeit. These items [were]:

(e) 8 pieces of ‘Burberry’ jockey caps;

(f) 36 pairs of ‘Nike’ socks

(g) 862 pairs of ‘Nike’ shoes;

(h) 3 pieces of ‘LV’ Bucket hats;

(i) 4 pieces of ‘Gucci’ bucket hats.

4.3.3 Other items were also seized from the said unit…

5. On 28 September 2004, the raiding party were armed with search warrant 147/2004 to be executed at the unit #02-202. The unit was closed (not locked) with a retractable grey door. When the door was pulled, ‘Adidas’ and ‘Nike’ shoes were stacked on the shelves.

6. An IP representative from the raiding team informed that the unit #02-202 is utilised as the storage place for the business operated at #02-217/218. He also added that A1 and A2 conducted surveillance at the vicinity on 17 September 2004 and videoed the sequence whereby the staff (referring to B4) from the unit #02-216/217 walking over to #02-202 and taking a pair of shoes from the said unit to effect a business transaction. When B3 who was mending the unit at #02-216/217 was questioned if he has connection with the unit #02-202 he denied.

7. The raiding team execute search warrant 147/2005 and seized the items found therein. Investigation into that unit revealed that it (the unit #02-202) is registered under the accused’s particulars with the Hawkers Department, National Environment Agency.

8. Between May 2004 to September 2004 at Blk 505 Beach Road, #02-202 Golden Mile Food Centre, the accused did engage with Toh Siow Choo (B2) and others unknown in the conspiracy did [sic] have in their possession for the purpose of trade, 993 pieces of shoes to which the registered trade mark, ‘Three blades leaves stripes (device)”, registered in Singapore, under Trade Mark No. T73/59201H in Class 25 in the name of Adidas, has been falsely applied. The representative of Adidas Mr Yeo Wee Han inspected the shoes and certified them to be counterfeit. The accused had the knowledge that the goods were counterfeit.

9. Between May 2004 to September 2004 at Blk 505 Beach Road, #02-202 Golden Mile Food Centre, the accused did engage with Toh Siow Choo (B2) and others unknown in the conspiracy did [sic] have in their possession for the purpose of trade 839 pairs of shoes and 34 pairs of socks to which the registered trade mark “Swoosh Device”, Trade Mark no. T 97/04911Z in Class 25, in the name of Nike had been falsely applied. The representative of Nike, Mr Frank Pang inspected the shoes and the socks and certified them to be counterfeit. The accused had the knowledge that the goods were counterfeit.

10. Between May 2004 to September 2004 at Blk 505 Beach Road, #02-202 Golden Mile Food Centre, the accused did engage with Toh Siow Choo (B2) and others unknown in the conspiracy did [sic] have in their possession for the purpose of trade, 8 pieces of caps to which the trade mark ‘Burberry check Device, registered in Singapore under Trade Mark No. T 98/01677 J in Class 25 in the name of Burberry had been falsely applied. The representative of Burberry Mr Lim Meng Mok inspected the [caps] and certified them to be counterfeit. The accused had the knowledge that the goods were counterfeit.

11. Between May 2004 to September 2004 at Blk 505 Beach Road, #02-202 Golden Mile Food Centre, the accused did engage with Toh Siow Choo (B2) and others unknown in the conspiracy did [sic] have in their possession for the purpose of trade, 4 pieces of bucket hats to which the registered trade mark, ‘Gucci”, registered under Trade Mark no. T7979403H in Class 25 in the name of Gucci had been falsely applied. The representative of Gucci, Ms Tan Yu Ling inspected the [hats] and certified them to be counterfeit. The accused had the knowledge that the goods were counterfeit.

Mitigation

6. In mitigation, Counsel argued firstly that the number of items should be determined not by the number of pieces, but in the case of the shoes and socks by the number of pairs.

7. Counsel relied on the compensation of $22,500 paid by the Accused to the trade mark owners, without the need for any legal proceedings. A letter from the solicitors of one of the trade mark owners was exhibited in the mitigation plea.

8. The mitigation plea related the personal circumstances of the Accused, in particular his elderly father-in-law, who is suffering from a number of ailments, as well as the Accused’s trying financial position. The Accused had no antecedents in Singapore, and apparently none in the United States either.

9. It was said that the counterfeit items were not a large proportion of the goods sold, and the Accused was not a member of any syndicate, nor involved in a large scale operation to sell the counterfeit goods. It was further said that the Accused had co-operated, pleaded guilty early. Undertakings were also given by the Accused to some at least of the trade mark owners.

10. Counsel referred to a number of decisions, arguing that it was open to the...