Calvin Klein v HS International: Trade Mark Infringement & Online Sales

Calvin Klein, Inc and Calvin Klein Trademark Trust sued HS International Pte Ltd, Global PSM Pte Ltd, and Tan Keng Hiang Jeffrey in the High Court of Singapore on October 28, 2015, for trade mark infringement related to the sale of counterfeit goods on the sgbuy4u.com website. The plaintiffs sought damages and an injunction. The court granted summary judgment against Global PSM Pte Ltd, finding them liable for trade mark infringement, but disallowed the application against HS International Pte Ltd and Tan Keng Hiang Jeffrey, granting them unconditional leave to defend.

1. Case Overview

1.1 Court

High Court of the Republic of Singapore

1.2 Outcome

Summary judgment granted against the Second Defendant; application for summary judgment against the First and Third Defendants disallowed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Calvin Klein sues HS International for trade mark infringement via sgbuy4u.com. The court grants summary judgment against the Second Defendant.

1.7 Decision Date

2 October 2016

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Calvin Klein, Inc	Plaintiff	Corporation	Partial Summary Judgment Granted	Partial	Sukumar s/o Karuppiah of Ravindran Associates Jaswin Kaur Khosa of Ravindran Associates
Calvin Klein Trademark Trust	Plaintiff	Trust	Partial Summary Judgment Granted	Partial	Sukumar s/o Karuppiah of Ravindran Associates Jaswin Kaur Khosa of Ravindran Associates
HS International Pte Ltd	Defendant	Corporation	Leave to Defend Granted	Neutral	Chidambaram Selvaraj of Apex Law LLP Jonathan Ow of Apex Law LLP
Global PSM Pte Ltd	Defendant	Corporation	Judgment for Plaintiff	Lost	Chidambaram Selvaraj of Apex Law LLP Jonathan Ow of Apex Law LLP
Tan Keng Hiang Jeffrey	Defendant	Individual	Leave to Defend Granted	Neutral	Chidambaram Selvaraj of Apex Law LLP Jonathan Ow of Apex Law LLP

3. Judges

Judge Name	Title	Delivered Judgment
Chan Seng Onn	Judge	Yes

4. Counsels

Counsel Name	Organization
Sukumar s/o Karuppiah	Ravindran Associates
Jaswin Kaur Khosa	Ravindran Associates
Chidambaram Selvaraj	Apex Law LLP
Jonathan Ow	Apex Law LLP

4. Facts

Calvin Klein, Inc. is a fashion design and marketing company.
Calvin Klein Trademark Trust owns registered trade marks for 'Calvin Klein' and 'ck'.
HS International Pte Ltd is a freight forwarding company.
Global PSM Pte Ltd provides customer-to-customer logistic services.
Tan Keng Hiang Jeffrey is the sole shareholder and director of both HS International and Global PSM.
The SGbuy4u Website is an e-commerce platform where users can purchase goods.
The SGbuy4u Website is described as a 'mirror website' of the Taobao Website.
The Second Defendant receives payment from users for goods ordered on the SGbuy4u Website.
The SGbuy4u Business places orders for goods on the Taobao Website after receiving payment from users.
The Plaintiffs made sample purchases of goods bearing the 'Calvin Klein' and 'ck' trade marks from the SGbuy4u Website.
The Plaintiffs did not authorize the application of the CK Marks to the purchased goods.
A raid was conducted at the Enterprise Hub Unit, and goods bearing the 'Calvin Klein' and 'ck' trade marks were seized.

5. Formal Citations

Calvin Klein, Inc and another v HS International Pte Ltd and others, Suit No 1102 of 2015 (Summons No 388 of 2016), [2016] SGHC 214

6. Timeline

Date	Event
2009-05-28	HS International Pte Ltd registered by Tan Keng Hiang Jeffrey
2012-07-12	Global PSM Pte Ltd registered by Tan Keng Hiang Jeffrey
2015-06-26	Plaintiffs instructed Spyrrus Pte Ltd to carry out a sample purchase from the SGbuy4u Website
2015-06-30	Spyrrus representative registered as a member on the SGbuy4u Website
2015-07-21	Spyrrus representative collected goods from Enterprise Hub Unit
2015-07-20	Freelance investigator received email notifying goods were ready for collection
2015-08-04	Freelance investigator replied to email
2015-08-14	Plaintiffs' representatives and Singapore Police Force conducted a raid at the Enterprise Hub Unit
2015-10-28	Plaintiffs commenced Suit No 1102 of 2015 against the Defendants
2016-01-14	Affidavit of Muthiah Sounthirapandian dated
2016-01-26	Plaintiffs filed Summons No 388 of 2016
2016-02-17	Affidavit of Tan Keng Hiang Jeffrey dated
2016-02-26	Affidavit of Cheam Toon Lian dated
2016-02-29	Affidavit of Muthiah Sounthirapandian dated
2016-03-01	DBS Bank Ltd cheque dated
2016-03-03	Affidavit of Absolom Leo Darshan dated
2016-03-15	Plaintiffs’ submissions dated
2016-04-06	Affidavit of Tan Keng Hiang Jeffrey dated
2016-04-22	Plaintiffs’ submissions dated
2016-05-16	Defendants’ submissions dated
2016-05-23	Plaintiffs’ submissions dated
2016-05-27	Defendants’ letter dated
2016-07-21	Affidavit of Tan Keng Hiang Jeffrey dated
2016-10-03	Judgment reserved

7. Legal Issues

Trade Mark Infringement
- Outcome: The court found that the Second Defendant had infringed the Plaintiffs' trade marks by offering infringing goods for sale on the SGbuy4u Website.
- Category: Substantive
- Sub-Issues:
  - Use of identical sign
  - Offering goods for sale
  - Double identity
  - Importing goods under the sign
  - Use of sign in advertising
Summary Judgment
- Outcome: The court granted summary judgment against the Second Defendant but disallowed the application against the First and Third Defendants.
- Category: Procedural

8. Remedies Sought

Inquiry as to damages
Injunction

9. Cause of Actions

Trade Mark Infringement

10. Practice Areas

Trade Mark Infringement
Intellectual Property Litigation
Commercial Litigation

11. Industries

Retail
Fashion

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Ritzland Investment Pte Ltd v Grace Management & Consultancy Services Pte Ltd	Singapore Court of Appeal	Yes	[2014] 2 SLR 1342	Singapore	Cited for the legal principles regarding summary judgment applications.
Bank Negara Malaysia v Mohd Ismail	Malaysian Court	Yes	[1992] 1 MLJ 400	Malaysia	Cited for the judge's duty in an Order 14 application to reject assertions or denials that are equivocal, lacking in precision, inconsistent with undisputed documents, or inherently improbable.
M2B World Asia Pacific Pte Ltd v Matsumura Akihiko	Singapore High Court	Yes	[2015] 1 SLR 325	Singapore	Cited for the judge's duty in an Order 14 application to reject assertions or denials that are equivocal, lacking in precision, inconsistent with undisputed documents, or inherently improbable.
Goh Chok Tong v Chee Soon Juan	Singapore Court of Appeal	Yes	[2003] 3 SLR(R) 32	Singapore	Cited for the principle that a defendant will not be given leave to defend based on mere assertions alone.
Wiseway Global Co Ltd v Qian Feng Group Ltd	Singapore High Court	Yes	[2015] SGHC 85	Singapore	Cited for the principle that mere logical possibility alone is insufficient to obtain leave to defend; the defendant must adduce some evidence to support the assertions made in his affidavit.
City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier	Singapore Court of Appeal	Yes	[2010] 1 SLR 382	Singapore	Cited for the strict interpretation of 'identical' in trade mark infringement under s 27(1) of the Trade Marks Act.
SA Société LTJ Diffusion v Sadas Vertbaudet SA	Court of Justice of the European Union	Yes	[2003] FSR 34	European Union	Cited for the principle that the protection accorded under s 27(1) cannot be extended beyond the situations for which it was envisaged.
Mitac International Corp v Singapore Telecommunications Ltd and another action	Singapore High Court	Yes	[2009] 4 SLR(R) 961	Singapore	Cited for the principles on the definition of 'identity' and how it is to be ascertained in trade mark law.
Tiffany (NJ) Inc. and Tiffany and Company v eBay, Inc.	United States Court of Appeals for the Second Circuit	Yes	600 F.3d 93 (2d Cir, 2010)	United States	Discusses secondary trade mark infringement in the context of online marketplaces.
Inwood Laboratories, Inc. v Ives Laboratories, Inc.	United States Supreme Court	Yes	456 US 844 (1982)	United States	Sets out the test for contributory trade mark infringement.
L’Oréal SA v eBay International AG	Court of Justice of the European Union	Yes	[2011] RPC 27	European Union	Discusses secondary trade mark infringement and the liability of online marketplace operators.
Home and Overseas Insurance Co. Ltd. v Mentor Insurance Co. (U.K.) Ltd. (in liquidation)	English Court	Yes	[1990] 1 WLR 153	England	Cited for the purpose of Order 14 and when summary judgement should be granted.
Creative Technology Ltd v Cosmos Trade-Nology Pte Ltd and another	Singapore High Court	Yes	[2003] 3 SLR(R) 697	Singapore	Cited for the principle that innocent infringement is not a defence in a civil action for trade mark infringement.
Gillette UK Limited and anr v Edenwest Limited	English Court	Yes	[1994] RPC 279	England	Cited for the principle that innocence on the part of the infringer is no defence to a claim to damages in a trade mark infringement action.

13. Applicable Rules

Rule Name
Rules of Court (Cap 322, R 5, 2014 Rev Ed) O 14

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed) s 27(1)	Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 27(4)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade mark infringement
Summary judgment
SGbuy4u Website
Taobao Website
Double identity
Offering for sale
Mirror website
E-commerce platform
CK Marks

15.2 Keywords

trade mark infringement
Calvin Klein
online sales
sgbuy4u
Global PSM
HS International

17. Areas of Law

Area Name	Relevance Score
Trademarks	95
Online Sale and Purchase	70
Internet Law	60
Double Identity	50
Use of a sign	45
Civil Practice	40
Offering goods for sale	40
Commercial Law	30
Defence	30
Contract Law	25
Commercial Disputes	20

16. Subjects

Trade Marks
Intellectual Property
E-commerce
Online Sales