Public Prosecutor v Tan Lay Heong and Another

• Jurisdiction: Singapore
• Judge: Yong Pung How CJ
• Judgment Date: 20 March 1996
• Neutral Citation: [1996] SGHC 47
• Docket Number: Magistrate's Appeal No 76/95/01-02
• Date: 20 March 1996
• Published date: 19 September 2003
• Year: 1996
• Plaintiff Counsel: G Radakrishnan (Heng & Rada)
• Citation: [1996] SGHC 47
• Defendant Counsel: AS Balasubramaniam (S Bala & Associates)
• Court: High Court (Singapore)
• Subject Matter: Second respondent trading in counterfeit goods,Proof of evidence,No evidence of participation or knowledge on part of first respondent,Counterfeit goods,Scope of statutory defence under s 73(a),s 73(a) Trade Marks Act (Cap 332, 1992Ed),Sale of goods to which trade mark was falsely applied,Trade Marks and Trade Names,Infringement,Adverse inference,s 73 Trade Marks Act (Cap 332, 1992 Ed),Complicity,Defence failing to call certain foreign witnesses,Sale,Evidence,Sale of counterfeit goods,Whether first respondent could be made jointly liable,s 116(g) Evidence Act (Cap 97, 1990 Ed),Presumptions,Words and Phrases,s 73(a) Trade Marks Act (Cap 332, 1992 Ed),'All reasonable precautions',Joint offence,Common intention,First respondent allowing the second respondent to use name of sole proprietorship registered in first respondent's name to trade,Failure to call witnesses,'Demand ... of the prosecution',Criminal Law,Whether adverse inference ought to be drawn against defence,s 34 Penal Code (Cap 224),Second respondent found to have traded in counterfeit goods

Judgment:

YONG PUNG HOW CJ

This was an appeal by the complainants in a private prosecution. The complainants are representatives of Hunting World Inc (HWI). HWI is the registered proprietor in Singapore of the trade mark `HUNTING WORLD`. HWI is also the owner of a trade mark consisting of the device of a baby elephant used, inter alia, on bags and wallets. At the relevant time, this trade mark was pending registration.

The prosecution was for offences under s 73 of the Trade Marks Act (Cap 332, 1992 Ed) (the Act). There were a total of 30 joint charges against the respondents. Fifteen were for selling articles to which the registered trade mark `HUNTING WORLD` was falsely applied. The other 15 were for selling articles to which a counterfeit trade mark of the baby elephant device was applied.

In the district court, John Ng DJ acquitted the respondents of all the charges after hearing their defence. The complainants appealed. After hearing counsel for both sides, I dismissed the appeal. I now give my reasons. First, it is necessary to set out the evidence adduced below.

The prosecution evidence

Much of the prosecution`s evidence was not disputed. The first respondent, Tan Lay Heong, was the registered proprietor of a business known as Chop Heng Soon Li Trading (Chop Heng). Chop Heng was registered as a sole-proprietorship under the Business Registration Act (Cap 32) on 8 April 1991.

On 2 June 1992, simultaneous raids were conducted on several leather goods retailers by representatives of HWI. A sizeable number of leather bags and wallets were seized. The retailers identified the supplier to be Chop Heng. However, they all said that they dealt only with the second respondent, Lim Jui Liang, who was easily contactable. All the invoices were in the name of Chop Heng.

The next day, raids were conducted at the registered principal place of business of Chop Heng. This turned out to be a secretarial agency in Pidemco Centre. Documents in the name of Chop Heng were seized. A raid was also conducted on the residence of the first respondent. Nothing incriminating was found. No raid was conducted on the residence of the second respondent.

The complainants` expert evidence that the goods seized were counterfeit was not seriously disputed by the respondents. Nor was it seriously in dispute that the goods were supplied to the retailers by the second respondent, using the name of Chop Heng. The evidence of most of the retailers was that the second respondent was introduced to them by Catherine Tan (Tan), who was a sales representative of SIDC (S) Pte Ltd (SIDC), a member of the Sogo group of companies in Singapore (Sogo`. I should mention that Sogo is a large Japanese retail chain which is well-established here, as well as in several other countries.

Apart from telling the court how to determine if the goods were genuine HWI goods, Mark Blanchard (Blanchard) of HWI also told the court that HWI contractswith leather goods factories in Italy to manufacture their entire line of luggage and handbags. In 1991 or 1992, there were ten such factories. Currently there are six. These factories do not make goods exclusively for HWI. However, they can only sell Hunting World goods to Red River SRL, which is a subsidiary of HWI in Italy. In Singapore, Hunting World goods are sold through five retail outlets. In 1991 or 1992, there were three such outlets, run by FJ Benjamin, Daimaru and Isetan. The latter two are also large Japanese retail chains. SIDC was not one of the authorized outlets. He agreed that the counterfeits were fairly good counterfeits and that the security features of genuine goods are not made known to the public. He did not know if HWI sold to the Sogo group elsewhere.

Jack Heslop (Heslop), the security adviser to HWI, gave evidence that on 28 July 1992, there was a meeting in Lugano, Switzerland, between the second respondent and representatives of HWI, including himself and one Bossano, who was the Hunting World distributor for Switzerland and Europe. This was arranged at the request of the second respondent. In this meeting, the second respondent told the HWI representatives that he had been introduced by Tan to the manager, Mick Maniam (Maniam), of one of the subsidiaries in the Sogo group. Maniam had told the second respondent that they had a quantity of Hunting World bags which they wanted to dispose of, but that they did not want the market to know that Sogo was selling them. The second respondent paid for the goods in cash and sold them (these goods do not form the subject matter of any of the charges). The second respondent told the HWI representatives that in all he sold about 400 pieces.

The second respondent also told the representatives that, after the Sogo supply was exhausted, he was put in touch with one Brogi in Florence and that he travelled to meet Brogi at his shop which was located near the Ponte Vecchio in Florence. Heslop agreed that the shop was in a respectable area of Florence. Brogi sold expensive leather goods in his shop. Heslop`s evidence was that Brogi was not an authorized distributor of Hunting World products. However, he was a retailer of Hunting World products, which he sold from his shop. The second respondent said that Brogi referred him to one Juni.

The second respondent produced photocopies of documents, including invoices. Based on these documents, Heslop investigated a company known as Deaswood Ltd, which was registered in Dublin, Ireland. One of the directors was one Erst Langen. Langen was known to Heslop as a Swiss national who supplied counterfeit Hunting World products. According to Heslop, Langen was the subject of a number of actions initiated by HWI in the Swiss courts. Another name disclosed was Euro International Leather Goods Ltd, which he had never heard of. He did not know where it was registered. However, it was not an authorized distributor of Hunting World products. The second respondent was also agreeable to helping HWI make trap purchases. This fell through due to disagreement as to who would provide the funds.

Heslop asked the second respondent to help him identify Juni. The second respondent agreed. A meeting was arranged by the second respondent with Brogi to meet Juni at Brogi`s shop in Florence. The plan was for HWI to secretly photograph Juni. However, nobody fitting the description of Juni showed up.

Chen Koh Hung, from CNC Management and Information Services (CNC), gave evidence that CNC provided Chop Heng with secretarial services. Althoughthe first respondent`s name was on the contract with them, he did not meet her as all the arrangements were made by the second respondent.

Teo Choo Leong (Teo) was the managing director of Victron SEA Pte Ltd (Victron). Victron dealt in the import and export of photographic products. Teo had known the second respondent since the 1970s. He did not know the first respondent. The second respondent told him that he was buying Hunting World products through Sogo and that he needed facilities to do importation, such as letter of credit facilities. They signed a written agreement. There were a total of three transactions for the import of Hunting World goods. The goods were sent to Victron. His secretary then notified the second respondent to collect them. Victron then billed the second respondent. The invoices showed that the goods were from Deaswood Ltd.

Lee Seok Choo, a clerk at Victron, told the court that she typed Victron`s invoices to Chop Heng. The particulars in the reference and style columns were given by the second respondent. She did not know the first respondent.

The defence evidence

The first respondent gave evidence that Chop Heng was registered in April 1991 on the suggestion of the second respondent. Sometime in August or September 1991, the second respondent asked for permission to use Chop Heng for `some urgent business through Sogo`. She agreed. She did not know what kind of business it was and she was not paid anything by the second respondent. In June 1992, the second respondent asked her to close down Chop Heng because there were `some problems with the handbag business` and he did not wish to get her into any trouble. They went to the Registry of Companies and Businesses and terminated the registration. On 3 June 1992, some private detectives went to her home and searched the place. She was a joint signatory of Chop Heng`s bank account. Her signature was needed because she was the registered proprietor. It was the second respondent who operated the account. She never asked the second respondent what business he was doing.

The second respondent gave evidence that he had worked for Victron for a few months. His job was to get suppliers for Victron`s goods. There were goods which Victron was not interested in. He wanted to deal in them, so he approached the second respondent to set up Chop Heng as it was `not nice` to deal in them under his name. Chop Heng was registered in April 1991.

In September 1991, Tan contacted him and said that Sogo was looking for someone to distribute Hunting World bags. She said that these goods were imported by Sogo and that several retailers she had approached had already given her confirmed orders. She wanted the second respondent to take over the distribution of these goods. She told him to contact Maniam, her product manager.

The second respondent met Maniam in the latter`s office at the Paragon branch of Sogo. Maniam gave him a briefing about Sogo. Maniam said that Hunting World goods were brought in by Sogo, but not distributed by them. When asked why, Maniam said that they were not the distributor in Singapore, and it was `not very nice` to distribute another agent`s products. Maniam said that they were genuine products. The second respondent did not doubt Maniam as Sogo was a big organization and a very reputable company. Maniam gave him a trade discount of 45% + 5% (meaning 45% of the retail price + 5% of 55% for cash purchases)....