Samsonite IP Holdings Sarl v An Sheng Trading Pte Ltd: Trade Mark Infringement & Exhaustion of Rights
Samsonite IP Holdings Sarl sued An Sheng Trading Pte Ltd in the High Court of Singapore for trade mark infringement related to the importation of backpacks bearing the SAMSONITE Marks. An Sheng Trading Pte Ltd raised a defence under Section 29(1) of the Trade Marks Act, arguing that Samsonite's rights had been exhausted. The court, presided over by Justice George Wei, granted summary judgment in favor of Samsonite, finding that the backpacks had not been 'put on the market' within the meaning of the Act and therefore the exhaustion of rights defense did not apply. The defendant's counterclaims were dismissed.
1. Case Overview
1.1 Court
High Court of Singapore1.2 Outcome
Summary judgment granted to the Plaintiff.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Samsonite sued An Sheng for trade mark infringement. The court granted summary judgment for Samsonite, holding the exhaustion of rights defense inapplicable.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| SAMSONITE IP HOLDINGS SARL | Plaintiff | Corporation | Judgment for Plaintiff | Won | |
| AN SHENG TRADING PTE LTD | Defendant | Corporation | Counterclaims Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| George Wei | Judge | Yes |
4. Counsels
4. Facts
- Samsonite is the registered proprietor of the SAMSONITE Marks.
- An Sheng Trading imported backpacks bearing the SAMSONITE Marks into Singapore.
- The backpacks were originally manufactured by Samsonite China under a co-branding agreement with Lenovo.
- Under the agreement, the backpacks were to be given away for free with the sale of Lenovo laptops in China.
- The backpacks were diverted from the intended distribution channel and sold to unauthorized dealers.
- An Sheng Trading purchased the backpacks from these unauthorized dealers.
- The backpacks were imported into Singapore without Samsonite's consent for sale in Singapore.
5. Formal Citations
- Samsonite IP Holdings Sarl v An Sheng Trading Pte Ltd, Suit No 779 of 2015(Summons No 3175 of 2016), [2017] SGHC 18
6. Timeline
| Date | Event |
|---|---|
| Suit filed (Suit No 779 of 2015) | |
| Singapore Customs issued a Notice of Detention of Goods | |
| Plaintiff filed Summons No 3175 of 2016 | |
| Hearing | |
| Judgment reserved |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court found a prima facie case of trade mark infringement.
- Category: Substantive
- Exhaustion of Rights
- Outcome: The court held that the exhaustion of rights defense did not apply because the goods had not been 'put on the market'.
- Category: Substantive
- Related Cases:
- Peak Holding AB v Axolin-Elinor (Case C-16/03) [2004] ECR I-11313
- Summary Judgment
- Outcome: The court granted summary judgment in favor of the plaintiff.
- Category: Procedural
8. Remedies Sought
- Injunction
- Delivery up of goods
- Inquiry as to damages or account of profits
9. Cause of Actions
- Trade Mark Infringement
10. Practice Areas
- Trade Mark Infringement
- Summary Judgment
11. Industries
- Retail
- Manufacturing
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| TMT Asia Ltd v BHP Billiton Marketing AG (Singapore Branch) and another | High Court | Yes | [2015] 2 SLR 540 | Singapore | Cited for the requirements for employing the procedure under Order 14 Rule 12 of the Rules of Court. |
| ANB v ANF | Court of Appeal | Yes | [2011] 2 SLR 1 | Singapore | Cited for the court's discretion to decide whether it is appropriate to proceed with a summary determination based on the overriding consideration. |
| Payna Chettiar v Maimoon bte Ismail and others | High Court | Yes | [1997] 1 SLR(R) 738 | Singapore | Cited for the principle that the fact that the point of law is difficult is not an impediment to summarily determining the question. |
| Obegi Melissa and others v Vestwin Trading Pte Ltd and another | High Court | Yes | [2008] 2 SLR(R) 540 | Singapore | Cited for the principle that where there are factual disputes, requiring findings of fact, summary determination would not be appropriate. |
| Peak Holding AB v Axolin-Elinor | Court of Justice of the European Communities | Yes | Case C-16/03 [2004] ECR I-11313 | European Union | Cited for the narrow definition of the phrase 'put on the market' under s 29(1) of the TMA. |
| Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd | High Court | Yes | [2003] 4 SLR(R) 755 | Singapore | Cited for the principle that the relevant consent is that of the registered trade mark proprietor in Singapore. |
| Zino Davidoff SA v A & G Imports Ltd | High Court | Yes | [2000] Ch 127 | England and Wales | Cited for the operative effect of the exhaustion of rights defence. |
| Société des Produits Nestlé SA and another v Petra Foods Ltd and another | Court of Appeal | Yes | [2017] 1 SLR 35 | Singapore | Cited for the origin function of a trade mark. |
| Cnl-Sucal NV SA v Hag GF AG | European Court of Justice | Yes | [1990] 3 CMLR 571 | European Union | Cited for the principle that a trade mark gives the consumer a guarantee of the origin of the marked product. |
| Public Prosecutor v Teo Ai Nee and another | High Court | Yes | [1995] 1 SLR(R) 450 | Singapore | Cited for the initial ruling on parallel importation of copyrighted products. |
| Silhouette International Schmied GmbH & Co KG v Hartlauer Handelsgesellschaft mbH | European Court of Justice | Yes | Case C-355/96 [1998] ECR I-4799 | European Union | Cited for the concept of regional exhaustion. |
| Zino Davidoff SA v A & G Imports Ltd | European Court of Justice | Yes | Joint Cases C-414/99 to C-416/99 [2001] ECR I-8731 | European Union | Cited for the principle that the defendant who alleges consent has the burden to prove consent. |
| Revlon Inc v Cripps & Lee Ltd and Others | Court of Appeal | Yes | [1980] FSR 85 | England and Wales | Cited for the principle that in the context of a group structure and group operations, each company in the group impliedly consents to any use of any group mark by any other company in the group. |
| DHN Food Distributors Ltd v Tower Hamlets London Borough Council | Court of Appeal | Yes | [1976] 1 WLR 852 | England and Wales | Cited for the principle that when a parent company owns all the shares of the subsidiaries, the companies should be treated as one. |
| Colgate-Palmolive Ltd and Another v Markwell Finance Ltd and Another | Court of Appeal | Yes | [1989] RPC 497 | England and Wales | Cited for distinguishing Revlon on its facts and holding that there was no implied consent. |
| Hup Huat Food Industries (S) Pte Ltd v Liang Chiang Heng and Others | High Court | Yes | [2003] SGHC 244 | Singapore | Cited for the principle that the fifth defendant was entitled to invoke s 29(1) [of the TMA]. |
| Coty Prestige Lancaster Group GmbH v Simex Trading AG | European Court of Justice | Yes | Case C-127/09 [2010] ECR I-4967 | European Union | Case concerning whether goods have been “put on the market” when they were put out for use in a distribution network, but not for sale. |
| L’Oréal SA and others v eBay International AG and others | European Court of Justice | Yes | Case C-324/09 [2011] RPC 27 | European Union | Case concerning whether goods have been “put on the market” when they were put out for use in a distribution network, but not for sale. |
| Zino Davidoff SA v M & S Toiletries Ltd (No 1) | Court of Session | Yes | [2000] ETMR 622 | Scotland | Case concerning whether goods have been “put on the market” when they were put out for use in a distribution network, but not for sale. |
| Creative Technology Ltd v Cosmos Trade-Nology Pte Ltd and another | High Court | Yes | [2003] 3 SLR(R) 697 | Singapore | Case concerning whether goods have been “put on the market” when they were put out for use in a distribution network, but not for sale. |
| Goh Chok Tong v Chee Soon Juan | Court of Appeal | Yes | [2003] 3 SLR(R) 32 | Singapore | Case concerning whether goods have been “put on the market” when they were put out for use in a distribution network, but not for sale. |
| Calvin Klein, Inc and another v HS International Pte Ltd and others | Court of Appeal | Yes | [2016] 5 SLR 1183 | Singapore | Case concerning whether goods have been “put on the market” when they were put out for use in a distribution network, but not for sale. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 27(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 29(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Rules of Court (Cap 322, R 5, 2014 Rev Ed) | Singapore |
| O 14 r 12 of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) | Singapore |
| O 14 r 1 of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) | Singapore |
| Trade Marks Act 1939 (Cap 332, 1992 Rev Ed) | Singapore |
| Trade Marks Act 1938 (c 22) (UK) | United Kingdom |
| Trade Marks Act 1994 (c 26) (UK) | United Kingdom |
| Copyright Act (Cap 63, 2006 Rev Ed) | Singapore |
| Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
| Trade Marks Act 2002 (New Zealand) | New Zealand |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark infringement
- Exhaustion of rights
- Parallel importation
- Co-branding agreement
- SAMSONITE Marks
- Put on the market
- Express consent
- Implied consent
- Conditional consent
- Retail market
- Economic value
- Summary judgment
15.2 Keywords
- Trade mark
- Infringement
- Exhaustion
- Parallel import
- Samsonite
- Backpack
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademark Infringement | 90 |
| Exhaustion of Rights | 85 |
| Trademarks | 80 |
| Parallel Importation | 75 |
| Summary Judgement | 70 |
| Civil Procedure | 60 |
| Commercial Law | 50 |
16. Subjects
- Trade Mark Law
- Intellectual Property
- Parallel Imports