Fila Sport v Wadhwani: Pre-Action Discovery & Trademark Infringement
Fila Sport S p A, part of the Fila Group, applied to the High Court of Singapore for pre-action discovery and interrogatories against Ramesh Tulsidas Wadhwani, trading as P T International Corporation, and Rising Sports Pte Ltd, regarding trademark infringement. Fila alleged that the defendants supplied counterfeit FILA products to Dieseel GmbH, which were later seized in Italy and Sweden. The High Court allowed limited discovery and interrogatories, balancing the need for information with the defendants' right against self-incrimination. Both the plaintiffs' and the defendants' appeals against the Assistant Registrar's decision were allowed in part.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeal Allowed in Part
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Fila Sport sought pre-action discovery against Wadhwani for trademark infringement. The court allowed limited discovery and interrogatories, balancing self-incrimination concerns.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Fila Sport S p A | Plaintiff | Corporation | Appeal Allowed in Part | Partial | |
| Ramesh Tulsidas Wadhwani trading as P T International Corporation | Defendant | Individual | Appeal Allowed in Part | Partial | |
| Rising Sports Pte Ltd | Defendant | Corporation | Appeal Allowed in Part | Partial |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Lai Siu Chiu | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Mark Lim | Wong & Leow LLC |
| Gene Kwek | Wong & Leow LLC |
| Paul Teo | Drew & Napier LLC |
4. Facts
- Fila Sport is a manufacturer and retailer of sports apparel and footwear.
- Fila Sport owns registered trademarks for the FILA logo and FILA stylized in Singapore.
- Ramesh Tulsidas Wadhwani is the sole proprietor of PT International Corporation.
- Rising Sports Pte Ltd is a company where Wadhwani is a director and majority shareholder.
- Counterfeit FILA sandals and shoes were seized in Italy and Sweden.
- Dieseel GmbH informed Fila that the counterfeit products were obtained from the defendants.
- An invoice showed PT International Corporation shipped FILA sandals to Dieseel in Italy.
5. Formal Citations
- Fila Sport S p A v Ramesh Tulsidas Wadhwani trading as P T International Corporation and Another, OS 601291/2001, [2002] SGHC 35
6. Timeline
| Date | Event |
|---|---|
| Originating Summons filed by plaintiffs | |
| Judgment issued |
7. Legal Issues
- Trademark Infringement
- Outcome: The court allowed limited discovery and interrogatories to determine potential trademark infringement.
- Category: Substantive
- Related Cases:
- [1989] SLR 460
- [1992] 1 SLR 553
- [1992] 2 SLR 273
- Privilege Against Self-Incrimination
- Outcome: The court held that the first defendant had already incriminated himself and could not claim the privilege. The court was inclined to accept that a company is not entitled to claim privilege under s 134 of the Act.
- Category: Procedural
- Related Cases:
- [1989] SLR 460
- [1992] 1 SLR 553
- [1992] 2 SLR 273
- [1982] AC 380
- Pre-Action Discovery
- Outcome: The court granted limited pre-action discovery, balancing the need for information with the defendants' rights.
- Category: Procedural
8. Remedies Sought
- Pre-action discovery
- Interrogatories
9. Cause of Actions
- Trademark Infringement
10. Practice Areas
- Trademark Infringement
- Commercial Litigation
11. Industries
- Retail
- Manufacturing
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Riedel-de Haen Ag v Liew Keng Pang | High Court | Yes | [1989] SLR 460 | Singapore | Cited for the principle that the privilege against self-incrimination applies to pre-trial discovery and is not abrogated by s 134 of the Evidence Act. |
| Guccio Gucci SpA v Sukhdav Singh | High Court | Yes | [1992] 1 SLR 553 | Singapore | Cited for the principle that the privilege against self-incrimination applies to pre-trial discovery. |
| Lee Thin Tuan v Louis Vuitton | High Court | Yes | [1992] 2 SLR 273 | Singapore | Cited for the principle that the privilege against self-incrimination applies to pre-trial discovery. |
| Television Broadcasts Ltd v Mandarin Video Holdings Sdn Bhd | Unknown | Yes | [1983] 2 MLJ 346 | Malaysia | Cited for the proposition that the privilege against self-incrimination had been abrogated by their equivalent to our s 134 of the Evidence Act. |
| AG of Hong Kong v Zauyah Wan Chik And Others | Unknown | Yes | [1995] 2 MLJ 620 | Hong Kong | Cited for the proposition that the privilege against self-incrimination had been abrogated by their equivalent to our s 134 of the Evidence Act. |
| Rank Film Distributions Ltd v Video Information Centre & Others | House of Lords | Yes | [1982] AC 380 | England | Cited for the position in England where the privilege had been statutorily withdrawn in intellectual property matters. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act Cap 332 | Singapore |
| Trade Marks Act Cap 332 s 49 | Singapore |
| Evidence Act Cap 97 | Singapore |
| Evidence Act Cap 97 s 134 | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trademark
- Infringement
- Counterfeit
- Discovery
- Interrogatories
- Privilege against self-incrimination
- Dieseel GmbH
- FILA Tomaia-style sandals
- FILA Eurojogger-style sports shoes
15.2 Keywords
- trademark
- infringement
- discovery
- interrogatories
- Fila
- counterfeit
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 90 |
| Pre-action discovery | 70 |
| Civil Procedure | 60 |
| Evidence | 50 |
| Contract Law | 30 |
16. Subjects
- Intellectual Property
- Trademark Infringement
- Civil Procedure