High Court · Decided 24 November 2017

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

[2017] SGHC 305Case no. High Court — Suit Nos 300, 306, 310, 322, 327 of 2013 George Wei J 13–14, 16, 20 March 2017; 17 April 2017

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Introduction
[1] 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.
[2] 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.
[3] 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?
[4] 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.
[5] 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
[6] 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
[7] 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. 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.
[8] The Defendant is a Singapore company which carries on the business of a freight forwarder.
[9] 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.
The witnesses
[10] 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:
(a) 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. 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.
(b) Mr Chong Wei Hoong (“Mr Chong”), Assistant Head of the Operations Management Branch of Singapore Customs. 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.
(c) Ms Chew Mui Ling (“Ms Chew”), an Executive Director of the Trade and Customs & Indirect Tax Practice of KPMG Services Pte Ltd. 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.
[11] The following three witnesses testified for the Defendant.
(a) 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.
(b) Mr Aaron Cheong (“Mr Cheong”), an officer from Singapore Customs. 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.
(c) 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. 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.
[12] 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
[13] 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.
[14] 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 are defined in s 3(2) of the TMA as follows:
[15] Under s 3(5) of the TMA, counterfeit goods are infringing goods which bear “counterfeit trade marks”. Section 3(6) of the TMA in turn defines a “counterfeit trade mark” as a sign which is “identical” to or “so nearly resembling the registered trade mark as to be calculated to deceive”, and which is applied to goods without consent and “to falsely represent the goods … to be the genuine goods …” of the trade mark proprietor. By the time of the trial, the Defendant had accepted through its counsel that the Counterfeit Goods were, indeed, counterfeit.
[16] Turning now to the facts leading to this dispute, these will be summarised below under headings which reflect the sequence of events.
Shipment of the goods from China to Singapore
[17] It is unclear who the actual manufacturer of the Counterfeit Goods is, but the identity of the actual manufacturer is immaterial. What is clear is that the counterfeit goods came into Singapore in two shipments from ports in China. The first shipment involved a container marked TRLU 5945619 (“the First Container”) which was shipped on board the vessel APL LATVIA belonging to American President Lines (“APL”). The second shipment concerned a container marked GESU 5635375 (“the Second Container”) which was shipped on board the vessel COSCO Napoli owned by Orient Overseas Container Line Limited (“OOCL”).
[18] On or around 28 March 2013, the Defendant received letters from the Third Party, and emails from a Ms Susie Xu (“Ms Xu”), who appears to have been acting as an “agent” for the Third Party. The letters requested the Defendant to arrange transhipment of the two containers to Batam, setting out brief details of the incoming shipments and identifying the name of the carrier and the vessel to be used for carriage to Batam. The letters also contained undertakings to indemnify the Defendant against all consequences and liabilities. The Defendant also received from the Third Party the sea waybills, commercial invoices, packing lists and arrival notices in respect of both Containers.
[19] With respect to the First Container, the sea waybill dated 28 March 2013 issued by APL stated that Shenzhen Huaguanshun Import and Export Limited Co (“SHIEL”) was the shipper. The port of discharge and delivery was named as Singapore. Some other significant points to note about this sea waybill include the following:
[20] The counterfeit goods found inside this container were of concern to LV, Gucci, Burberry, Hermès, and Sanrio.
[21] Apart from the sea waybill, the other relevant documents adduced in evidence with respect to the First Container were: (a) the invoice; (b) the packing list; and (c) the arrival notice:
(a) The invoice was dated 25 March 2013 and provided an address in Shenzhen, China for SHIEL. Salient points to note about this invoice include the following:
(i) The Third Party was named as the consignee.
(ii) The products were listed under three categories: car accessories, fashion items, and tools and hardware. As far as fashion items are concerned, the list included: belts, handbags, travel bags, wallets, “bag shopping” and “bag school”.
(b) The packing list also dated 25 March 2013 named the Third Party as the consignee. The product descriptions are the same as in the invoice.
(c) The arrival notice dated 28 March 2013 provided that 1 April 2013 was the expected date of arrival at Singapore. The Defendant was named as consignee and notify party. The box headed “Onward Routing from Port of Discharge” was left blank.
[22] With respect to the Second Container, the sea waybill issued by OOCL dated 30 March 2013 stated that Zon Cen Trading Co Limited (“Zon Cen”) was the shipper and the port of discharge and delivery was Singapore. Some other significant points to note about this sea waybill include the following:
[23] The counterfeit goods found inside this container concerned LV, Burberry and Sanrio.
[24] As with the First Container, the other relevant documents adduced in evidence with respect to the Second Container were: (a) the invoice; (b) the packing list; and (c) the arrival notice:
(a) The invoice dated 26 March 2013 provided an address in Hong Kong for Zon Cen. Salient points on this invoice include the following:
(i) The Third Party was named as the consignee.
(ii) The products were listed under five categories: car accessories, computer accessories, fashion items, household goods and tools and hardware. As far as fashion items are concerned, the list included: belts, handbags, “bag shopping”, school bags and wallets.
(b) The packing list also dated 26 March 2013 named the Third Party as the consignee. The product descriptions match those in the invoice.
(c) The undated arrival notice provided 3 April 2013 as the expected date of arrival in Singapore. The consignee and notify party was named as the Defendant.
[25] I pause to note Mr Dubois’ evidence concerning his unsuccessful attempts to locate Zon Cen and SHIEL (“the Shippers”) at the addresses provided in the invoices, as well as his unsuccessful attempts to communicate with the Shippers by telephone. Not surprisingly, Mr Dubois’ conclusion was that Zon Cen and SHIEL were not to be found at the addresses provided. In his examination-in-chief, Mr Dubois added that in his experience as an investigator of intellectual property infringement, shippers of counterfeit goods often used fake names and addresses in the documents. I have no reason to doubt his evidence.
[26] It is common ground that the Defendant received the sea waybills and the arrival notices in respect of both the Containers before the respective vessels reached Singapore. Prior to receiving these documents, the Defendant was not aware of any arrangements made for the shipment of the Containers to Singapore. The unchallenged evidence of the Defendant’s director, Mr Chua, was that the Defendant was neither involved in the packing of the Containers’ contents, nor the arrangements to ship the Containers from China to Singapore, as these were either directly concluded between Zon Cen and SHIEL on the one hand, and the Third Party and/or APL and OOCL (“the Carriers”) on the other. I thus accept that the Defendant was simply acting as the freight forwarder on the instructions of the Third Party.
[27] I note also that while the Third Party was named as the consignee in the invoices and packing list, it is unclear who the actual or ultimate owner of the goods is. As I have mentioned, the parties appear to have accepted that the Third Party was itself a freight forwarder (see [9] above). There was a suggestion from Counsel that the Third Party, after receiving the Counterfeit Goods in Batam, would have sent them onwards to another party,. The Defendant’s response was that he was unsure. In short there was no concrete evidence as to what would have happened to the Counterfeit Goods after receipt by the Third Party.
Steps taken by the Defendant after receipt of the arrival notice
[28] The sea carriage from China to Singapore was relatively short. Both Containers were shipped on board their respective vessels on 28 March 2013 with expected arrival dates of 1 April 2013 and 3 April 2013 respectively. It is clear that time was short and the Defendant had to act quickly on the instructions that it had received. The vessels were very soon due to arrive in Singapore.
[29] Operations at the Port of Singapore are highly computerised through the Portnet system operated by PSA. Users of the Portnet system include various types of entities involved in the movement of containers in and out of Singapore. Users are each assigned a unique “operator code”, and have the right to access the Portnet system for the purpose of synchronising operational processes between the various players in the maritime service community, including carriers, the port authorities, and freight forwarders. Under this Portnet system, it would not ordinarily be necessary for the freight forwarder in a transhipment case to take physical possession of the containers or to even have sight of the containers. Once the relevant instructions are entered into the system, PSA essentially undertakes the necessary operations: the unloading of the containers, placement into transhipment stacks (where appropriate) and the loading of the containers on board the outward bound vessel.
[30] In the present case, the Containers would have been under the control of the Carriers as the vessels approached Singapore. Once the Defendant accepted the appointment by the Third Party to arrange for transhipment to Batam, the Defendant notified the carrier to declare “transhipment status” for the container, and to transfer the “operator code” for the container from the carrier to the Defendant. Once this was done, the Defendant would then use the Portnet system to provide the instructions as per the information that it had been provided by the Third Party. The letter of instructions from the Third Party provided details including the identity of the carrier to be used to transport the containers to Batam, the name of the vessel, and the port code. Using the Portnet system, the Defendant would be able to input such information so that PSA could take the necessary operational steps.
[31] The position taken by the Defendant as to its role can perhaps be described as essentially “ministerial” or “quasi-ministerial” in nature. Once the Defendant accepted the engagement, its role was simply to follow the instructions of the Third Party. After all, it was the Third Party who appointed the Defendant. The invoices and packing lists from SHIEL and Zon Cen identified the Third Party in Batam as the consignee. To the question why the goods were not simply shipped direct from ports in China to Batam, the evidence, which I accept, is that larger container vessels would not be able enter the port at Batam. The water depth was too shallow. It was, for this reason, necessary to ship the goods to Singapore and to arrange for on carriage of the sealed containers to Batam on smaller “feeder” vessels or barges. Once the containers arrived in Batam, they were to be received and unpacked by the Third Party. The empty containers would be returned to Singapore as they belonged to the Carriers.
The inspection and seizure of the goods in Singapore
[32] In the event, the containers were never sent out of Singapore to Batam as intended. This was because immediately upon the containers being landed in Singapore, the containers were inspected by Singapore Customs and the Counterfeit Goods seized.
[33] In the case of the First Container, Singapore Customs informed the Defendant by email on 1 April 2013 at 5.32 pm that an inspection was to be conducted of the container on 2 April 2013. The Defendant was requested to make the arrangements to truck the container to the place of inspection.
[34] In the case of the Second Container, Singapore Customs informed the Defendant by email on 3 April 2013 at 12.29 pm that an inspection was to be conducted of the container on 4 April 2013. The Defendant was again requested to make the arrangements to truck the container to the place of inspection.
[35] When the containers were opened by Singapore Customs, the contents were found to include counterfeit trade-marked goods. The Counterfeit Goods were seized by Singapore Customs. Upon completion of inspection, the Defendant was asked to make arrangements to collect the containers and the unseized goods on 5 and 8 April 2013.
[36] After the Defendant informed the Third Party of the inspection notices, Ms Xu by an email dated 3 April 2013 responded as follows:
[37] The Defendant sent further emails to the Third Party dated 3 April 2013 and 5 April 2013, informing the Third Party of the seizure by Singapore Customs under s 82 of the TMA. In both these emails, the Defendant stated the following “Please advise your next course of actions [sic] in view that we are only your agent in Singapore.”
[38] The Third Party responded inter alia by emailing to the Defendant powers of attorney for the purpose of managing and organising the unseized goods from the Containers to be shipped to Batam. The powers of attorney stated that the Third Party was the owner of the goods. The Defendant responded by email to confirm the Third Party’s instructions to combine the unseized cargo from both containers and to reship the unseized goods to Batam. After receipt of confirmation from the Third Party, it appears that the unseized cargo were combined and sent to Batam.
[39] The Plaintiffs commenced proceedings for trade mark infringement against the Defendant between 9 April 2013 and 15 April 2013. The Defendant subsequently took out proceedings against the Third Party on 3 May, 7 May and 16 May 2013. Upon receipt of the Third Party Notices, the Third Party appointed a Singapore law firm. It appears that the only step taken by the Third Party’s lawyers in Singapore was to request formal proof of the seizure by Singapore Customs. The Third Party has since refused or failed to take any further part in the proceedings. The Third Party neither filed any defence nor led any evidence in the proceedings.
The detention and the subsequent order for destruction
The parties’ cases
[41] The Plaintiffs’ position was that the Defendant is liable for infringing their respective trade marks under s 27(1) read with s 27(4)(c) of the TMA, which provide as follows:
[42] The Plaintiffs argued that transhipment of the Counterfeit Goods amounted to “import[ing]” them, relying for this purpose on the decision of Trade Facilities Pte Ltd and others v PP [1995] 2 SLR(R) 7 (“Trade Facilities”), and s 2(1) of the Interpretation Act (Cap 1, 2002 Rev Ed).
[43] According to the Plaintiffs, the only issue was who should be liable as the “importer” under s 27(4)(c) of the TMA. It was argued that under s 93A of the TMA, where goods in transit are consigned to a local consignee, the local consignee is the importer. As the local consignee, the Defendant had imported and/or intended to export the Counterfeit Goods under the sign, and was thereby liable for trade mark infringement. The Plaintiff also argued that whether the Defendant had knowledge that the Containers contained counterfeit items was irrelevant, and it did not matter whether the Defendant was actively involved or just a passive forwarding agent.
[44] The Defendant strenuously denied knowledge of the Counterfeit Goods (prior to the seizure and inspection in Singapore), and argued that it was acting as a “mere freight forwarder”, and not a trader of the Counterfeit Goods. It was also argued that the true importers of the Counterfeit Goods were either the Shippers or the Third Party, and that the Defendant itself could not be the importer. It was not involved in the shipment of the goods from China to Singapore and thus had not caused the entry of the Counterfeit Goods into Singapore. The Defendant also maintained that it had not imported the goods under the sign within the meaning of s 27 of the TMA because s 27 required a bringing of goods bearing the marks into the territory for the “purpose of releasing those goods into free circulation” within the jurisdiction.
Issues to be determined
[45] Section 26 of the TMA provides the trade mark proprietor with the exclusive right to use the trade mark. Section 27 provides that infringement arises if a person without consent of the proprietor uses in the course of trade, inter alia, a sign identical or similar to the registered trade marks in relation to identical or similar goods for which the trade mark is registered (subject to certain other requirements). Section 27(4) TMA then provides that a person uses a sign if, in particular, he “imports or exports goods under the sign.”
[46] The primary question was whether the Defendant was liable for importing or exporting the Counterfeit Goods within the meaning of s 27(1) read with s 27(4)(c) of the TMA.
[47] This in turn involved the determination of several legal issues:
(a) Whether the Counterfeit Goods had been imported into Singapore within the meaning of s 27(4)(c) of the TMA.
(b) Whether the Defendant was the importer and was thereby liable for infringement under ss 27(1) and 27(4)(c) of the TMA. It is in connection with this issue that the Plaintiffs’ submissions focused heavily on the relationship between the statutory provisions on infringement as set out in s 27 and the special provisions in Part X of the TMA on Assistance by Border Authorities.
(c) Whether the Defendant was liable for exporting the Counterfeit Goods under the sign.
[48] Before I turn to the above issues, however, it may be helpful to first discuss the evidence concerning the steps, procedures, and documents that would be required to arrange for the transhipment of the Containers to Batam (if the Counterfeit Goods had not been seized and detained), as well as the relevant statutory backdrop.
The steps required to effect transhipment of the containers to Batam
[49] Given the Defendant’s position that they were not the importer of the containers or the goods inside the containers (see [44] above), both parties led evidence concerning the applicable procedures, declarations and permits under Port and customs rules required for facilitating transhipment of the Containers to Batam (ie, the unloading of the Containers from the inbound vessel, the subsequent transfer in sealed unopened condition and the loading of the Containers on board a vessel bound for Batam).
[50] The purpose of this was to shed light on whether a freight forwarder in the position of the Defendant was treated as if it was an importer under the applicable customs regulations or customs procedures. The evidence on this included evidence concerning the steps and procedures taken in respect of the prior shipment of a container in January 2013 (“the January Transaction”).
[51] The January Transaction concerned a container shipped on board another vessel belonging to APL from China to Singapore. A “non-negotiable sea waybill” was issued by the carrier, showing SHIEL as the shipper and the Defendant as the consignee and notify party in Singapore. As in the case of the two shipments in question, the goods were described as “household goods.” The associated packing list and commercial invoice for the January Transaction named the Third Party as the consignee in Batam. The shipment was not subject to inspection by Singapore Customs. The container was successfully sent on to Batam.
[52] Evidence was given of a “container status” document extracted from Portnet. According to a report prepared by Ms Chew, the document indicates that the container was unloaded at Brani Terminal and moved to the point of loading at Keppel Terminal. According to Ms Chew, the Portnet container status document indicated that the shipment was designated as “re-export” and not “transshipment.” The understanding of this witness was that the “container was for re-export and was not a through transshipment or intended to be brought into the Singapore market.” This witness also described the January Transaction as an example of “non-through transshipment” or “an import for re-export.”
[53] Evidence was also given of an ocean bill of lading for carriage of the container from Singapore to Batam. The shipper/exporter was named as SHIEL. The consignee was the Third Party in Batam. The bill of lading was issued by the Defendant as agents for and on behalf of the Master of the carrying vessel. The carrying vessel, Winstar 38, is owned by Regional Shipping Line Ltd which appears to be a company incorporated overseas. According to Ms Chew, the January transaction was another example of a non-through transhipment which involved an import and re-export process. Ms Chew’s opinion was also that, since the Defendant was named as the local consignee in the sea waybill, the Defendant was the importer and the subsequent re-exporter in the January Transaction, and not SHIEL.
[54] The question as to what permits are necessary for “non-through transhipment” was examined at length. The Plaintiffs’ position was that a cargo clearance permit for import to and re-export from Singapore under the Singapore TradeNet system was necessary. TradeNet is Singapore’s National Single Window for trade declaration. It integrates import, export and transhipment documentation processing procedures and formalities, enabling Singapore Customs and other regulatory authorities to monitor the movement of goods and to enforce health, safety and other regulatory requirements. Access to the TradeNet system is only available to ACRA registered entities in Singapore. The evidence was that the Third Party in Batam would not have been able to use or access the TradeNet system.
[55] In the case of the January transaction as well as the transactions involving the First and Second Containers, Ms Chew’s evidence was that the Defendant was the proper person to apply for a cargo clearance permit for the import and re-export from Singapore. In her view, the proper permit was the “In-non-payment” permit with the code “REX”. The cargo clearance permit declarations, if properly filled out, would have identified the Defendant as the importer and exporter. The customs permit for the January 2013 transaction (if any) was not placed before the Court.
[56] In a similar vein, Mr Chong’s evidence was that a customs permit was needed for the two shipments in question under Regulation 3(1) of the Regulation of Imports and Exports Regulations (Cap 272A, Rg 1, 1999 Rev Ed) (“RIER”). Mr Chong, it will be recalled, is an Assistant Head of Operations with the operations management branch of Singapore Customs. Counsel for the Plaintiffs had previously provided Singapore Customs through the Attorney-General’s Chambers with a list of questions in connection with the proper procedures for shipments such as those involving the Containers. In examination-in-chief, Mr Chong confirmed that the answers provided were correct. The gist of Mr Chong’s evidence was that an in-non-payment customs permit under the code REX was needed, since the Defendant was named as the local consignee under the sea waybill. The permit required the name of the importer to be set out.
[57] The Defendant also called a witness from Singapore Customs: Mr Aaron Cheong (“Mr Cheong”). Mr Cheong was the customs officer who conducted the inspections of both the First and Second Containers. Mr Cheong had expressed an earlier view to counsel for another trade mark owner not involved in the present suits that the two shipments or transactions involved transhipment with a local consignee and not an importer. The Defendant naturally relied on this to support its case that it was not, in fact and in law, the importer of the goods inside the Containers.
[58] Under cross-examination, Mr Cheong was questioned at length on his earlier statement and in particular on whether he made the statement because of confusion over the applicable statutory provisions within the TMA on inspection and seizure. While Mr Cheong was unable to shed much light on why he made the statement, what is significant is that he agreed that on the face of the sea waybills, the Defendant was the importer. The witness accepted under cross-examination that both Mr Chong and Ms Chui Jia Min of Singapore Customs were of the view that permits were needed. Nevertheless, when re-examined, Mr Cheong stood by his view that the transactions involving the Containers were cases of transhipment and not cases involving an “importer”.
[59] I pause to note that Ms Chui Jia Min (“Ms Chui”) was an officer attached to the Procedures and Systems Branch of Singapore Customs at the relevant time. While Ms Chui was not called upon to give evidence, both the Customs Officers called by the Plaintiffs and Defendant accepted that Ms Chui was experienced in customs documentation and procedures. Evidence in the form of emails was placed before the Court wherein Ms Chui stated that a customs clearance permit is required for all goods being transhipped with a local consignee.
[60] The long and short of the evidence from Singapore Customs is perhaps best summarised as follows. Two customs employees (Mr Chong and Ms Chui) were of the view that the Defendant was the importer and that customs procedures for this type of “non-through transhipment” required the submission of permit forms identifying the importer and exporter. This evidence was supported by the testimony and report of Ms Chew. Even though the two shipments and transactions and the documents revealed a case of “non-through transhipment” with the ultimate destination of the goods being delivery to the Third Party in Batam, the essence of the evidence of these witnesses was that the goods had been imported into Singapore.
[61] The position taken by Mr Cheong, on the other hand, appears to be more nuanced. Mr Cheong accepted that under customs procedures, permit forms were required and that, based on the sea waybill, the Defendant would be named as the importer. That said, Mr Cheong was still of the view that the shipments involved transhipment and not importation. To be fair to this witness and indeed all the customs officers, the Court notes the possibility that terms such as “import” and “export” can mean different things in different pieces of legislation. For example, do these words necessarily bear the same meaning when used (i) in respect of customs regulations concerned with control of goods brought into and out of Singapore, including the Port of Singapore and the confines of its free trade zones; and (ii) in legislation setting out the exclusive rights of intellectual property right owners in Singapore? This is a matter to which I shall return later in the decision. The point I make now is that while Mr Cheong’s evidence was not clear, it may be that in Mr Cheong’s mind, the Defendant was only to be named as importer for the purposes of compliance with customs regulations on the required forms.
The statutory backdrop
[62] This is the first case which has raised the interplay between the rights of trade mark owners to bring infringement proceedings and the border enforcement provisions in Part X of the TMA on the interdiction of infringing goods that flow through Singapore in the course of international trade. As such, it may be helpful to set out some general points concerning the statutory backdrop and history behind the provisions on assistance by border authorities.
[63] The problem of international trade in infringing or counterfeit goods is not new. Given the territorial nature of intellectual property rights, it is not surprising that enforcing such rights may lead to tricky issues where the international movement of goods is concerned. One area concerns parallel imports or grey market imports and the doctrine of exhaustion of rights. The other area concerns trade in infringing or counterfeit trade marked goods.
[64] The present case concerns international trade in goods which have been produced without the consent of the owner of the intellectual property rights in the country of manufacture. The problems surrounding the enforcement of intellectual property rights in this context are well known. Where infringing goods are imported into a jurisdiction, intellectual property right owners in that jurisdiction could of course attempt litigation (a) against the manufacturers in the country or place of manufacture, or (b) against the importers and traders in the country of importation, or the country where the goods are intended to be released into the market for exploitation. Both options, however, may present several obstacles.
[65] Litigation against the manufacturers in the country or place of manufacture may be problematic. In some cases, the country of manufacture might not even have recognised or granted intellectual property rights over the subject matter in question. In other cases, the goods may have been produced in disregard for the intellectual property rights in the country or place of manufacture. Some of these infringing goods may be released for sale or exploitation in the country or place of manufacture; but often, and perhaps increasingly so with the development of international trade, the infringing goods are exported and sold in markets far removed from the country or place or manufacture. Even if the intellectual property rights owner was keen to litigate against the manufacturer, the first problem he might face will be to identify and find the manufacturer. The multitude of small-time manufacturers of counterfeit goods whose products find their way into international trade make it problematic even for the most avid intellectual property rights owner to mount effective litigation proceedings in the country of manufacture (see generally Christopher Morcom, Ashley Roughton & Simon Malynicz, The Modern Law of Trade Marks (LexisNexis, 3rd Ed, 2008) at paras 21.1–21.5).
[66] Commencing litigation against the importers and traders in the country of importation is also not without its difficulties. The jurisdictions where the goods are intended to be released into the market may or may not have effective intellectual property laws and enforcement policies.
[68] Given their utility, it is unsurprising that interdiction procedures have long featured in many international agreements for the protection of intellectual property. As will be seen below, Singapore’s own statutory provisions on border enforcement measures have been shaped to a large extent by such international agreements. What follows is an overview of the relevant international agreements and how Singapore’s trade mark legislation has been adapted in line with its international obligations.
The relevant international agreements
The Paris Convention for the Protection of Industrial Property (1883)
[69] For much of the 20th Century, the primary international agreements or conventions on intellectual property rights comprised the Berne Convention for the Protection of Literary and Artistic Works (9 September 1886), 1161 UNTS 30 and the Paris Convention for the Protection of Industrial Property (20 March 1883), 828 UNTS 205 (1883) (“the Paris Convention”). The provisions of the Paris Convention suggest that the utility of interdiction as a response to the problem of the international trade in counterfeit goods was already recognised from an early stage. For example, Art 9 of the Paris Convention sets out provisions relating to the seizure of goods unlawfully bearing a mark or trade name. In particular, Art 9(1) provides that “[a]ll goods unlawfully bearing a trademark or trade name shall be seized on importation into those countries of the Union where such mark or trade name is entitled to legal protection.” Article 9(5) states, however, that “[i]f the legislation of a country does not permit seizure on importation, seizure shall be replaced by prohibition of importation or seizure inside the country” [emphasis added]. Article 9(6) goes on to provide that if a Contracting State does not permit seizure on importation, or allow seizure within the country, then “until such time as the legislation is modified accordingly, these measures shall be replaced by the actions and remedies available in such cases to nationals under the law of such country”.
[70] It is clear the Paris Convention recognises the problem of goods in transit. Whereas Arts 9(1), 9(5) and 9(6) stipulate the obligations of Contracting States in relation to infringing goods which are imported, Art 9(4) provides that “[t]he authorities shall not be bound to effect seizure of goods in transit.” Article 9(4) left it to Contracting States to determine whether their national laws would permit seizure of goods in transit. The Paris Convention recognised a distinction between imported goods and goods in transit.
The TRIPS Agreement
[71] In 1995, the Agreement on Trade-Related Aspects of Intellectual Property Rights (15 April 1994), 1869 UNTS 299 (1994) (“the TRIPS Agreement”) came into force in Singapore. Part III, Section 4 sets “Special Requirements Related to Border Measures”. Article 51 is entitled “Suspension of Release by Customs Authorities”, and is concerned with the right holder who has valid grounds for suspecting the importation of counterfeit trade mark goods may take place. Member States are required to enable such a right holder to lodge an application with competent authorities for the suspension by customs authorities of release into free circulation.
[72] Counterfeit goods are defined in Art 51 as meaning “any goods, including packaging, bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspect from such a trademark, and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation.”
[73] Articles 52–55 set out provisions concerning the making of the application, the provision of security, the giving of notice to the importer and applicant of the suspension, and the duration of the suspension. In particular, Art 55 provides that the goods are to be released if the customs authorities have not been informed within ten days of the applicant being served with notice of the suspension that proceedings on the merits have been initiated by a party other than the defendant.
[75] It should also be noted that footnote 12 to Art 51 clarifies that TRIPS Member States are not required to apply the special provisions on border measures to goods in transit.
[76] Article 58 of the TRIPS Agreement relates to “Ex Officio Action” and provides as follows:
[77] As noted by Carlos M Correa, Trade Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement (Oxford University Press, 2007) at p 447, the TRIPS Agreement provisions on ex officio action are not mandatory. Instead, it is only when a Member State chooses to introduce such measures that it must comply with Art 58.
The United States-Singapore Free Trade Agreement
[78] The next major international agreement to shape Singapore’s trade mark legislation was the United States-Singapore Free Trade Agreement (6 May 2003) (“USSFTA”), which entered into force in 2004. Article 16.9 of the USSFTA is entitled “Enforcement of Intellectual Property Rights”. Articles 16.9.16–16.9.20 come under the heading “Special Requirements Related to Border Measures Concerning the Enforcement of Intellectual Property Rights”. Article 16.9.19 provides as follows:
Singapore’s trade mark legislation
Prior to 1998
[80] The first statutory law on trade marks in Singapore was the Trade Marks Ordinance 1938 (“TMO 1938”), which later became the Trade Marks Act (Cap 206, 1970 Rev Ed) (“the old TMA”). The provisions of the TMO 1938 were closely modelled on the UK’s Trade Marks Act 1938 (c 22) (UK) (“UK TMA 1938”).
[81] The UK TMA 1938 did not contain any provisions on the seizure of imported goods bearing false trade marks. While the problem of importation of goods bearing false trade marks had been recognised in the UK, the statutory measures created to address this problem were to be found in the Merchandise Marks Act 1887 (50 & 51 Vict. c 28) (UK) (“UK MMA 1887”). However, the UK MMA 1887 was not concerned with setting up a statutory system for registering trade marks and enforcing the rights of the trade mark owner. Instead, it was concerned with the need for criminal offences, and for forfeiture and seizure provisions to protect the public against what may loosely be termed as “false” goods (see H Fletcher Moulton & P G Langdon-Davies, Butterworths Annotated Legislation Service: Statutes Supplement No 83, The Law of Merchandise Marks (Butterworth & Co (Publishers) Ltd, 1954) at p 1).
[82] Like the UK TMA 1938, the TMO 1938 did not contain any provisions on the seizure of imported goods bearing false trade marks. Indeed, even though the old TMA was amended several times before its repeal in 1999, no specific provisions were ever introduced concerning the detention, inspection and seizure of counterfeit goods by the customs authorities.
The 1998 Trade Marks Act
[83] The old TMA was repealed and replaced by the Trade Marks Act 1998 (No 46 of 1998) (“the 1998 TMA”) which commenced on 15 January 1999. The 1998 TMA was passed to ensure Singapore’s compliance with the TRIPS Agreement. Extensive provisions on border enforcement measures were set out in Part X of the 1998 TMA, modelled on the provisions in the TRIPS Agreement. The explanatory note under the Fourth Schedule to the Trade Marks Bill 1998 (Bill No 42 of 1998) states that Part X seeks to give effect to Section 4 of Part III of the TRIPS Agreement (see [71] above). Section 82 of the 1998 TMA provided as follows:
[84] As the Plaintiffs emphasise, s 82(4) of the 1998 TMA suggests that suspected counterfeit goods in transit could not be seized under the border enforcement measures existing at the time.
The Trade Marks (Amendment) Act 2004
[85] The 1998 TMA was amended in 2004 via the Trade Marks (Amendment) Act 2004 (Act 20 of 2004). The amendments were passed inter alia to give effect to Singapore’s obligations under the USSFTA (see [78]–[79] above). Speaking at the Second Reading of the Amendment Bill, the Minister of Law, Prof S Jayakumar made the following remarks (Singapore Parliamentary Debates, Official Report (15 June 2004) vol 78 at col 1113 (Prof S Jayakumar, Minister for Law):
[86] For reasons that will become clear, the Plaintiffs emphasise the fact that the 2004 amendments were intended to enhance border enforcement measures.
The current Trade Marks Act
[87] The special provisions on assistance by border authorities are now to be found in Part X of the TMA. What follows is a brief overview of the provisions:
(1) Restriction of importation of infringing goods
[88] Section 82 of the TMA sets out detailed provisions whereby the trade mark proprietor or his licensee may give a written notice to the Director-General of Customs (“the Director-General”) which (i) states that he is the proprietor or licensee; (ii) states that goods in relation to the registered trade mark which are infringing goods are expected to be imported; (iii) provides sufficient information to identify the goods, to enable the Director-General to ascertain when and where the goods are expected to be imported and to satisfy the Director-General that the goods are infringing goods and (iv) states that he objects to the importation.
[89] It is noted that seizures effected under s 82 are based on applications by the trade mark proprietor or the licensee. Customs officers do not have the right to detain goods ex officio under these provisions.
[90] Section 82(4)(c) of the TMA provides that during the currency of the notice, an authorised officer may seize the goods if:
[91] Section 85 of the TMA requires notice of the seizure to be given to the importer and objector. Under s 85(2), the notice must state that the goods will be released to the importer unless an infringement action in respect of the goods is instituted by the objector within the period specified and gives notice to the Director-General of that action.
[92] Section 88 of the TMA sets out the situations in which the seized goods will compulsorily be released to the importer. Under s 88(1), the seized goods are released if within the specified period no infringement action has been commenced. It follows that once goods are seized by customs authorities pursuant to s 82 of the TMA, the objector must decide whether infringement proceedings are to be commenced.
(2) Detention and examination: ex officio action
[93] As mentioned, new provisions pertaining to border enforcement measures were introduced in 2004 as a result of the USSFTA (see [85] above). These include a new provision on ex officio action in the form of s 93A of the TMA. Section 93A(1) provides as follows:
[94] The following points should be noted:
(a) Section 93A of the TMA is directed towards the detention of the goods as opposed to seizure under the provisions summarised at [88]–[92] above.
(b) Under s 93A(1)(a), goods in transit cannot be detained unless they have been consigned to a person who has commercial or physical presence in Singapore (“a local consignee”). Where goods are in transit through Singapore without any local consignee, the authorised officer only has the power to examine the goods under s 93A(1)(b).
[95] Where goods have been detained under s 93A(1)(a), the Director-General is required by s 93A(2) to give notice as soon as practicable to the “importer, exporter or consignee, as the case may be,” as well as the proprietor of the registered trade mark. I pause here to note the specific reference to (i) the importer; (ii) the exporter; and (iii) the consignee in s 93A(2). The point is that it must follow that the local consignee is not necessarily also the importer or exporter.
[96] Under s 93A(3) of the TMA, the goods are to be released to the importer, exporter or consignee unless, within the prescribed period, the proprietor of the trade mark takes the following action:
[99] I note that s 93A(5)(b)(v) provides that, in the case of goods in transit consigned to a local consignee, references to import or importation are to be read as a reference to the import, importation or export of the goods by the consignee. This suggests that the local consignee of goods in transit is to be regarded for the purpose of the inspection, release and forfeiture provisions in ss 86, 87 and 89–93 TMA as the “importer”, as the Plaintiffs emphasise. As will be seen, however, that does not mean that the local consignee is the “importer” for the purpose of all of the provisions of the TMA.
(3) Interplay between seizure pursuant to an application and ex officio detention
[100] The provisions in s 82 of the TMA are concerned with seizure of goods by customs pursuant to a notice given to the Director-General objecting to the importation. The person giving the notice is the “objector” and the authorised officer is empowered to “seize” the goods. It will be recalled that s 82(4)(c) makes clear that the power to seize only arises where the goods are imported into Singapore and are not goods in transit. Section 81 of the TMA sets out the definitions relevant specifically to Part X of the TMA. The term “goods in transit” is defined as “goods imported, whether or not landed or transhipped within Singapore, which are to be carried to another country either by the same or another conveyance”. So long as the goods are in transit, the seizure provisions do not apply even if there is a local consignee and the goods are landed or transhipped.
[101] On the other hand, s 93A appears to have been enacted to address the requirements of the USSFTA on ex officio procedures. These provisions are concerned with detention and examination by customs authorities without any necessity for an earlier application by an objector. The detention and examination provisions in s 93A are different from the seizure provisions in s 82. The key differences are as follows:
Other statutes
[102] In the course of these proceedings, the issue of whether the Defendant is an “importer” has been addressed by several different witnesses through the lens of the various procedures, permit applications and forms which apply to the movement of goods into and out of Singapore. It may thus be helpful to provide an overview of two of the statutes governing this area: the Customs Act (Cap 70, 2004 Rev Ed), and the Regulation of Imports and Exports Act (Cap 272A, 1996 Rev Ed) (“RIEA”).
The Customs Act
[103] The control of goods arriving in or entering into Singapore falls within the Customs Act. Section 3(1) of the Customs Act contains the following definitions:
[104] While it is unnecessary to examine the substantive provisions of the Customs Act, I make the following observations as part of the general backdrop and context in which the detention, inspection and forfeiture provisions for counterfeit trade marks now found in the 1998 TMA are to be assessed.
[105] In brief, the Customs Act is essentially concerned with controlling goods entering or passing through Singapore for the purposes of revenue matters (import/export duties) and detection/interdiction of prohibited items.
[106] Extensive provisions on levying and payment of duty and tax are set out in Part III of the Customs Act. Section 12(1) sets out the power of the customs officer to value, weigh, measure, test and examine any dutiable or uncustomed goods for determining customs duty and excise.
[107] Part IV of the Customs Act sets out detailed provisions on importation and exportation. In brief:
[108] Extensive provisions concerning these required permits, forms and declarations are set out in the Customs Regulations (Cap 70, R 2, 2009 Rev Ed). For example, reg 14(1) provides that “[t]he consignor of goods intended for transhipment or his agent shall submit to the proper officer of customs a declaration, in such form as the Director-General may require, of the goods to be transhipped.” Regulation 15 sets out the customs declarations which may be required for the various types of movement of dutiable goods in Singapore.
[109] Turning back to the Customs Act, Part VI sets out detailed provisions on warehousing. For example, s 60 states that dutiable goods arriving in Singapore for transhipment and landed to await the arrival of the vessel in which they are intended to be transhipped shall be landed and deposited in a free trade zone. Part XIII contains detailed provisions on search, seizure and arrest. These are essentially concerned with dutiable or uncustomed goods, goods liable to forfeiture under the Customs Act, or goods as to which an offence under the Customs Act has been committed (see s 101 Customs Act). Section 110 of the Customs Act makes provision for the seizure of all goods in respect of which there is reasonable cause to suspect that an offence or breach has been committed under the Customs Act.
[110] It is clear that the Customs Act is concerned with the movement of goods into and out of Singapore including those which enter Singapore in the course of transit to another destination. Section 3(2) of the Customs Act provides that the goods shall be deemed to be under customs control while they are deposited or held in any free trade zone, Government warehouse, licensed warehouse, or bottling warehouse or post office or in any vessel, train, vehicle or aircraft or any place from which they may not be removed except with the permission of the proper officer of customs.
[111] The provisions are focused on revenue collection in respect of dutiable goods as well as the control of prohibited goods. The definitions of terms such as “import”, “importer” and “export” must be seen in the context of these goals. Permits must be applied for and declarations may be required. The short point is that it does not necessarily follow that a person who is required to apply for permits or to provide declarations under the Customs Act is necessarily to be regarded as the importer under the Trade Marks Act. This is a point that will be dealt with in more detail below.
Regulation of Imports and Exports Act 1995
[112] The RIEA concerns regulation, registration and control of imports and exports by the International Enterprise Singapore Board (“the Board”). Under s 3(1), the Board may make regulations for the registration and control of all or any class of goods imported into, exported from, transhipped in, or in transit through Singapore.
[113] As with s 3 of the Customs Act, s 2 of the RIEA contains an extensive list of definitions. For the purposes of this decision, it will suffice to note the following definitions:
[114] The definitions are similar but not identical to those in the Customs Act. Take for example, the word “import.” Under s 3 of the Customs Act, this word is defined as follows: “… to bring or cause to be brought into the customs territory by any means from any place including a free trade zone…”. Goods which are bona fide in transit, including goods which have been transhipped, are not, for the purpose of the levy of customs duties, deemed to be imported unless they are or become uncustomed goods.
[115] On the other hand, under the RIEA, the word “import” is defined as follows:
[116] For the purposes of the RIEA, “import” includes goods brought into and transhipped within Singapore. It is only when the goods are brought in and out of Singapore without any landing or transhipment that they are not to be treated as imported.
[117] Again, the point is that the same term may carry different meanings in different legislation even though the pieces of legislation are all concerned broadly with import and export of goods.
The TMA provisions relied on for the seizure of the goods
[118] As I have mentioned, Singapore Customs gave notice of its intention to inspect the First and Second Containers via emails on 1 April 2013 and 3 April 2013 respectively. The notices both explained that the inspections were to be conducted in response to a request by LV to “shut-out” the container. Following the inspection, the goods were seized or detained by Singapore Customs. As far as LV is concerned, it appears that the goods were seized under s 82 of the TMA, after LV gave a notice that it objected to the importation of infringing goods which it expected to be imported in the two containers. However, as regards Burberry, Gucci, Hermès and Sanrio, the goods were detained under s 93A(1)(a) of the TMA (ie, they were detained ex officio).
[119] Upon inspection, goods bearing counterfeit trade marks of LV were discovered together with other goods appearing to bear counterfeit trade marks of Burberry, Gucci, Hermès, and Sanrio. The registered proprietors of the trade marks were informed. As for LV, it was given the required notice under s 85(2) of the TMA to commence action within the prescribed period in respect of the infringing goods, failing which the seized goods would be released. But in the case of Burberry, Gucci, Hermès and Sanrio, a notice of detention was given under s 93A(2) to the trade mark proprietors. In accordance with s 93A(3)(b)(i), these trade mark proprietors were given notice to commence proceedings for infringement failing which the detained goods would be released.
[120] While the basis of the notice to commence infringement proceedings was different (s 85(2) as opposed to s 93A(3) of the TMA), the end result was similar. Infringement actions under s 27 of the TMA were commenced against the Defendant. The crucial issues or questions in respect of the infringement actions are identical.
Decision and analysis
Were the Counterfeit Goods imported into Singapore within the meaning of s 27(4)(c) of the TMA?
The meaning of import
[121] As I have mentioned, while s 27(4)(c) of the TMA provides that a person uses a sign if he “imports or exports goods under the sign”, the TMA does not set out a general definition of either “import” or “export”. That being so, the starting point must be s 2(1) of the Interpretation Act, which provides, in relevant part:
[122] Since it is not “otherwise expressly provided” within the TMA, the above construction of the word “import” will apply unless there is “something in the subject or context inconsistent with such construction”.
[123] In Trade Facilities at [55], Yong Pung How CJ held that there was nothing in the subject or context of s 73 of the former Trade Marks Act (Cap 332, 1992 Rev Ed) (“the 1992 TMA”) which required the use of the special meaning assigned to the word “import” in the Customs Act. The appellants in that case were convicted under s 73 of the 1992 TMA, which made it an offence for any person to import any goods or thing to which a counterfeit trade mark was applied. The subject matter of the conviction consisted of bottles of counterfeit Hennessy XO cognac which were seized when they arrived in Singapore via a shipment. Counsel for the appellants argued that the word “import” in s 73 of the 1992 TMA should be read according to the meaning given to that word in the Customs Act.
[124] Yong CJ rejected this argument. He observed that even if there were “very good policy reasons why Singapore should or should not police the transhipment of goods bearing counterfeit trade marks or the like as they pass through Singapore’s free trade zone”, this was a matter for Parliament to deal with. For example, Parliament could expressly incorporate the narrower definition of “import” in the Customs Act (at [55]). In the absence of such express incorporation, there was no reason to construct “import” in s 73 of the 1992 TMA in accordance with the Customs Act.
[125] That said, Yong CJ held that the meaning of “import” in s 73 of the 1992 TMA was not necessarily as wide as that provided for in s 2(1) of the Interpretation Act (at [56]). He reasoned that s 73 of the 1992 TMA was clearly “directed at persons who deal in the course of business”, and not at “the consumer who uses or merely possesses these goods” (at [57]). Thus, for example, an individual who brought into Singapore a counterfeit handbag he had purchased abroad would not have “imported” that handbag within the meaning of s 73 of the 1992 TMA (at [56]). The concept of “importing” in s 73 of the 1992 TMA envisioned the bringing of goods or items into Singapore “for the purpose of sale or for any purpose of trade or manufacture” (at [57]).
[126] I agree with the holding in Trade Facilities. While s 73 of the 1992 TMA was a penal provision, whereas s 27 of the TMA pertains to civil liability for infringement, I find that there is also no reason to read into s 27 the definitions of “import” in the Customs Act or the RIEA. This means that the term “import” should be understood broadly in accordance with s 2(1) of the Interpretation Act – ie, “to bring or to cause to be brought into Singapore by land, sea, or air”. This is, however, subject to the following qualifier: s 27(1) of the TMA deals with unauthorised use of a sign in the course of trade.
[127] On the present facts, I find that the Containers and the Counterfeit Goods found within were indeed imported into Singapore in the sense that they were “brought into Singapore” by sea. I also note that the bringing of these goods in transit through Singapore was clearly done “in the course of trade”.
Does “importing” under s 27(4)(c) of the TMA require that the goods be intended for release for free circulation in the Singaporean market?
[128] The Defendant has cited a number of English and European decisions concerning whether, and in what circumstances, goods temporarily introduced into a jurisdiction in transit to some other country are to be regarded as “imported” for the purposes of trade mark law. The Defendant relies on these cases to argue that, at least for the purpose of trade mark infringement, goods are not “imported” unless they are brought into a territory for the purpose of releasing those goods into free circulation within the jurisdiction.
[129] As noted by the Court of Appeal in City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 at [15], while decisions of the ECJ are not binding in Singapore, they are relevant because s 27 of the TMA was taken from s 10 of the Trade Marks Act 1994 (c 26) (UK), which implemented the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.

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

Laws this judgment relies on

Grounds of decision

Introduction

Dramatis personae

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 witnesses

Events leading to the dispute

Shipment of the goods from China to Singapore

Steps taken by the Defendant after receipt of the arrival notice

The inspection and seizure of the goods in Singapore

The detention and the subsequent order for destruction

The parties’ cases

Issues to be determined

The steps required to effect transhipment of the containers to Batam

The statutory backdrop

The relevant international agreements

The Paris Convention for the Protection of Industrial Property (1883)

The TRIPS Agreement

The United States-Singapore Free Trade Agreement

Singapore’s trade mark legislation

Prior to 1998

The 1998 Trade Marks Act

The Trade Marks (Amendment) Act 2004

The current Trade Marks Act

(1) Restriction of importation of infringing goods

(2) Detention and examination: ex officio action

(3) Interplay between seizure pursuant to an application and ex officio detention

Other statutes

The Customs Act

Regulation of Imports and Exports Act 1995

The TMA provisions relied on for the seizure of the goods

Decision and analysis

Were the Counterfeit Goods imported into Singapore within the meaning of s 27(4)(c) of the TMA?

The meaning of import