Louis Vuitton v. Megastar Shipping: Trade Mark Infringement & Border Enforcement
Louis Vuitton Malletier, Guccio Gucci SPA, Burberry Limited, Hermès International, and Sanrio Company, Ltd. brought claims in the High Court of Singapore against Megastar Shipping Pte Ltd for trade mark infringement related to counterfeit goods transhipped through Singapore. Megastar Shipping, a freight forwarder, was accused of importing counterfeit goods. The court dismissed the claims, finding that Megastar Shipping was not the importer and therefore not liable for infringement.
1. Case Overview
1.1 Court
High Court of Singapore1.2 Outcome
Claims against the Defendant are dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Claims for trade mark infringement against Megastar Shipping, a freight forwarder, for importing counterfeit goods. Judgment for the Defendant.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| LOUIS VUITTON MALLETIER | Plaintiff | Corporation | Claim Dismissed | Lost | Ravindran s/o Muthucumarasamy, Jevon Louis, Teo Kwan Soon, Paul Yuen, Kit Kuan |
| MEGASTAR SHIPPING PTE LTD | Defendant, Third Party | Corporation | Judgment for Defendant | Won | Leonard Chia Chee Hyong, Ng Liu Qing |
| PT ALVENINDO SUKSES EKSPRESS | Third Party | Corporation | No Defence Filed | Neutral | |
| GUCCIO GUCCI SPA | Plaintiff | Corporation | Claim Dismissed | Lost | Ravindran s/o Muthucumarasamy, Jevon Louis, Teo Kwan Soon, Paul Yuen, Kit Kuan |
| BURBERRY LIMITED | Plaintiff | Corporation | Claim Dismissed | Lost | Ravindran s/o Muthucumarasamy, Jevon Louis, Teo Kwan Soon, Paul Yuen, Kit Kuan |
| HERMÈS INTERNATIONAL | Plaintiff | Corporation | Claim Dismissed | Lost | Dedar Singh Gill, Lim Siau Wen |
| SANRIO COMPANY, LTD | Plaintiff | Corporation | Claim Dismissed | Lost | Andy Leck, Faith Lim, Lim Ren Jun |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| George Wei | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Ravindran s/o Muthucumarasamy | Ravindran Associates |
| Dedar Singh Gill | Drew & Napier LLC |
| Andy Leck | Wong & Leow LLC |
| Leonard Chia Chee Hyong | Asia Ascent Law Corporation |
| Jevon Louis | Ravindran Associates |
| Teo Kwan Soon | Ravindran Associates |
| Paul Yuen | Ravindran Associates |
| Kit Kuan | Ravindran Associates |
| Lim Siau Wen | Drew & Napier LLC |
| Faith Lim | Wong & Leow LLC |
| Lim Ren Jun | Wong & Leow LLC |
| Ng Liu Qing | Asia Ascent Law Corporation |
4. Facts
- Five registered trade mark proprietors brought claims against Megastar Shipping, a freight forwarder.
- The claims arose from two shipments of containers loaded with counterfeit goods from China to Singapore.
- The containers were intercepted by Singapore Customs and found to contain merchandise bearing infringing trade marks.
- Megastar Shipping was named as the consignee in the sea waybills.
- The intended destination of the goods was Batam, Indonesia, for transhipment.
- Megastar Shipping argued it was acting as a mere freight forwarder and had no knowledge of the counterfeit goods.
- The Third Party, PT Alvenindo Sukses Ekspress, did not appear or take part in the proceedings.
5. Formal Citations
- Louis Vuitton Malletier v Megastar Shipping Pte Ltd, Suit No 300 of 2013, [2017] SGHC 305
6. Timeline
| Date | Event |
|---|---|
| Defendant received letters from Third Party to arrange transhipment of two containers to Batam. | |
| Sea waybill issued by APL for First Container. | |
| Sea waybill issued by OOCL for Second Container. | |
| Singapore Customs informed Defendant of inspection for First Container. | |
| Inspection of First Container conducted. | |
| Singapore Customs informed Defendant of inspection for Second Container. | |
| Ms. Xu responded to Defendant regarding the held container. | |
| Inspection of Second Container conducted. | |
| Defendant sent email to Third Party informing of seizure by Singapore Customs. | |
| Defendant asked to collect containers and unseized goods. | |
| Defendant asked to collect containers and unseized goods. | |
| Louis Vuitton commenced proceedings against Defendant. | |
| Goods stored at warehouse after seizure. | |
| Guccio Gucci SPA commenced proceedings against Defendant. | |
| Burberry Limited commenced proceedings against Defendant. | |
| Court made orders further detaining goods in Suit Nos 300 and 302. | |
| Hermès International commenced proceedings against Defendant. | |
| Sanrio Company, Ltd commenced proceedings against Defendant. | |
| Court order for further detention of goods obtained. | |
| Defendant took out proceedings against the Third Party. | |
| Defendant took out proceedings against the Third Party. | |
| Defendant took out proceedings against the Third Party. | |
| Trial began. | |
| Trial. | |
| Trial. | |
| Trial. | |
| Trial. | |
| Judgment reserved. |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court held that the Defendant did not infringe the Plaintiffs' trade marks because it was not the importer or exporter of the counterfeit goods.
- Category: Substantive
- Sub-Issues:
- Importation of infringing goods
- Exportation of infringing goods
- Use of sign in the course of trade
- Related Cases:
- [1995] 2 SLR(R) 7
- C-405/03, [2005] ECR 1-8735
- Definition of Import
- Outcome: The court held that 'import' should be understood broadly in accordance with s 2(1) of the Interpretation Act, subject to the limitation that it is done 'in the course of trade'.
- Category: Substantive
- Sub-Issues:
- Transhipment as import
- Goods in transit
- Intention for free circulation
- Related Cases:
- [1995] 2 SLR(R) 7
- Liability of Freight Forwarder
- Outcome: The court held that the Defendant, as a freight forwarder, was not the importer and therefore not liable for trade mark infringement.
- Category: Substantive
- Sub-Issues:
- Agent vs. principal
- Control over goods
- Common design
- Related Cases:
- (1881) 17 Ch D 721 (CA), (1882) 8 App Cas 5 (HL)
8. Remedies Sought
- Injunction
- Damages
- Delivery up of infringing goods
- Destruction of infringing goods
9. Cause of Actions
- Trade Mark Infringement
10. Practice Areas
- Intellectual Property Litigation
- Commercial Litigation
11. Industries
- Shipping
- Logistics
- Luxury Goods
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Trade Facilities Pte Ltd and others v PP | High Court | Yes | [1995] 2 SLR(R) 7 | Singapore | Cited for the principle that transhipment amounts to importing and for the interpretation of 'import' under the Trade Marks Act. |
| City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier | Court of Appeal | Yes | [2010] 1 SLR 382 | Singapore | Cited for the relevance of ECJ decisions in interpreting Singapore's Trade Marks Act. |
| Class International BV v Colgate-Palmolive Company and others | European Court of Justice | Yes | C-405/03, [2005] ECR 1-8735 | European Union | Cited for the principle that 'importing' requires introduction of goods into a territory for the purpose of putting them on the market. |
| Eli Lilly and Company and another v 8PM Chemist Ltd | Court of Appeal | Yes | [2008] EWCA Civ 24 | England and Wales | Cited for the principle that there is no trade mark infringement if goods are not released into free circulation. |
| Koninklijke Philips Electronics NV v Lucheng Meijing Industrial Company Ltd and others, Nokia Corporation v Her Majesty’s Commissioners of Revenue and Customs | European Court of Justice | Yes | Joined Cases C-446/09 and C-495/09, ECLI:EU:C:2011 | European Union | Cited for the principle that goods in transit must be intended for commercial act directed at EU consumers to be classified as counterfeit. |
| 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 principle that the essential function of a trade mark is to guarantee the origin of goods and services. |
| Smith, Kline and French Laboratories Ltd v R.D. Harbottle (Mercantile) Ltd and others | High Court | Yes | [1980] RPC 363 | England and Wales | Cited for the principle that importation includes goods entering a jurisdiction and temporarily stored awaiting on-carriage. |
| Nobel’s Explosives Company v Jones, Scott & Co | Court of Appeal | Yes | (1881) 17 Ch D 721 (CA), (1882) 8 App Cas 5 (HL) | England and Wales | Cited for the principle that goods entering for transhipment can be treated as imported and that an agent is not a joint importer. |
| Sabaf SpA v MFI Furniture Centres Ltd and another | House of Lords | Yes | [2004] UKHL 45 | England and Wales | Cited for the principle that the question of who is the importer is fact-sensitive. |
| Waterford Wedgwood plc v David Nagli Ltd | High Court | Yes | [1998] FSR 2 | England and Wales | Cited for the principle that the seller can be liable for importing goods even when the buyer is in another country. |
| Arsenal Football Club plc v Matthew Reed | European Court of Justice | Yes | C-206/01, [2002] ECR I-10273 | European Union | Cited for the principle that the essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer. |
| Voss Peer v APL Co Pte Ltd | High Court | Yes | [2002] 1 SLR(R) 823 | Singapore | Cited for the principle that sea waybills are not negotiable instruments under common law. |
| APL Co Pte Ltd v Voss Peer | Court of Appeal | Yes | [2002] 2 SLR(R) 1119 | Singapore | Cited for the principle that sea waybills are not negotiable instruments under common law. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 27(1) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 27(4)(c) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 93A | Singapore |
| Interpretation Act (Cap 1, 2002 Rev Ed) s 2(1) | Singapore |
| Customs Act (Cap 70, 2004 Rev Ed) | Singapore |
| Regulation of Imports and Exports Act (Cap 272A, 1996 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark infringement
- Counterfeit goods
- Freight forwarder
- Import
- Export
- Transhipment
- Border enforcement
- Consignee
- Sea waybill
- Portnet
- Customs
- Goods in transit
15.2 Keywords
- Trade mark infringement
- Counterfeit goods
- Freight forwarder
- Import
- Export
- Transhipment
- Singapore
- Megastar Shipping
- Louis Vuitton
- Border enforcement
16. Subjects
- Trade Marks
- Intellectual Property
- International Trade
- Customs Law
17. Areas of Law
- Trade Mark Law
- Intellectual Property Law
- Border Enforcement
- Civil Procedure