Burberry Ltd & Louis Vuitton Malletier v Megastar Shipping: Trade Mark Infringement & Border Enforcement
Burberry Limited and Louis Vuitton Malletier appealed against the High Court's decision to dismiss their trade mark infringement claims against Megastar Shipping Pte Ltd, a freight forwarder. The Court of Appeal of Singapore, comprising Andrew Phang Boon Leong JA, Judith Prakash JA, and Tay Yong Kwang JA, heard the appeals. The central issue was whether Megastar Shipping, by facilitating the transhipment of counterfeit goods through Singapore, infringed the appellants' trade marks under the Trade Marks Act. The Court of Appeal dismissed the appeals, finding that Megastar Shipping did not use the signs in a manner that constituted trade mark infringement because they were unaware of the counterfeit nature of the goods.
1. Case Overview
1.1 Court
Court of Appeal of the Republic of Singapore1.2 Outcome
Appeals dismissed with costs.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Appeal regarding trade mark infringement against a freight forwarder for importing counterfeit goods. The court dismissed the appeal.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Burberry Limited | Appellant | Corporation | Appeal Dismissed | Lost | Ravindran s/o Muthucumarasamy, Jevon Louis, Chan Wenqiang |
| Megastar Shipping Pte Ltd | Respondent | Corporation | Appeal Dismissed | Won | Chia Chee Hyong Leonard, Jasmine Dhanaraj |
| Louis Vuitton Malletier | Appellant | Corporation | Appeal Dismissed | Lost | Ravindran s/o Muthucumarasamy, Jevon Louis, Chan Wenqiang |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Tay Yong Kwang | Judge of Appeal | Yes |
| Andrew Phang Boon Leong | Judge of Appeal | No |
| Judith Prakash | Judge of Appeal | No |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Ravindran s/o Muthucumarasamy | Ravindran Associates LLP |
| Jevon Louis | Ravindran Associates LLP |
| Chan Wenqiang | Ravindran Associates LLP |
| Chia Chee Hyong Leonard | Asia Ascent Law Corporation |
| Jasmine Dhanaraj | Asia Ascent Law Corporation |
4. Facts
- Burberry and Louis Vuitton are trade mark proprietors of luxury brands.
- Megastar Shipping is a freight forwarder company providing transhipment services in Singapore.
- Counterfeit goods infringing the appellants’ trade marks were shipped from China to Singapore in two sealed containers.
- The containers were intended for onward shipment to Batam in Indonesia.
- Megastar Shipping was listed as the consignee in the seaway bills.
- Singapore Customs inspected the containers and found counterfeit products.
- Megastar Shipping was unaware that the cargo contained counterfeit goods.
5. Formal Citations
- Burberry Ltd v Megastar Shipping Pte Ltd and another appeal, , [2019] SGCA 01
- Burberry Limited v Megastar Shipping Pte Ltd, Civil Appeal No 237 of 2017, Civil Appeal No 237 of 2017
- Louis Vuitton Malletier v Megastar Shipping Pte Ltd, Civil Appeal No 238 of 2017, Civil Appeal No 238 of 2017
6. Timeline
| Date | Event |
|---|---|
| Counterfeit goods shipped from China to Singapore. | |
| Respondent received letters to arrange transhipment of containers to Batam. | |
| Seaway bills issued for the first container. | |
| Seaway bills issued for the second container. | |
| First container arrived in Singapore. | |
| Singapore Customs inspected the first container. | |
| Second container arrived in Singapore. | |
| Singapore Customs inspected the second container. | |
| Appellants commenced infringement of trade mark actions against the respondent. | |
| Judgment reserved. | |
| Judgment delivered. |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The Court held that the respondent did not infringe the appellants' trade marks because it was unaware of the presence of the infringing signs on the goods.
- Category: Substantive
- Sub-Issues:
- Importation of goods bearing infringing trade marks
- Exportation of goods bearing infringing trade marks
- Use of a sign identical with a trade mark in the course of trade
- Definition of 'Import' and 'Export' under the Trade Marks Act
- Outcome: The Court held that 'import' includes goods in transit and that a mere intention to export is insufficient for infringement unless accompanied by actions clearly directed at fulfilling the intention.
- Category: Substantive
- Sub-Issues:
- Whether 'import' includes goods in transit
- Whether an intention to export is sufficient for infringement
- Whether the local consignee is the importer or exporter
- Strict Liability in Trade Mark Infringement
- Outcome: The Court clarified that for infringement to occur, the alleged infringing importer must have intended to do the act constituting the infringing use with knowledge or reason to believe that there was a sign present on the things in issue.
- Category: Substantive
- Sub-Issues:
- Whether knowledge or intention is required for trade mark infringement
- Whether innocence is a defence to trade mark infringement
8. Remedies Sought
- Injunction
- Damages
9. Cause of Actions
- Trade Mark Infringement
10. Practice Areas
- Trade Mark Infringement
- 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 Public Prosecutor | High Court | Yes | [1995] 2 SLR(R) 7 | Singapore | Cited for the principle that the Trade Marks Act has nothing to do with customs duties. |
| City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier | Court of Appeal | Yes | [2010] 1 SLR 382 | Singapore | Cited for the principle that any infringing use must be of a trade mark use. |
| Eli Lilly and Co v 8PM Chemists Ltd | Unspecified | Yes | [2008] FSR 11 | United Kingdom | Cited regarding the argument that goods were not imported under the sign because the sign was covered by anonymous brown packaging and was never exposed to anyone in the UK. |
| Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd and Alexir Packaging Limited | Unspecified | Yes | [1999] ETMR 912 | United Kingdom | Cited for the principle that the application of the sign on goods in the UK was held to be infringement even though the goods were intended to be shipped overseas. |
| Waterford Wedgwood Plc v David Nagli Ltd | Unspecified | Yes | [1998] FSR 92 | United Kingdom | Cited for the principle that the transhipment of counterfeit Waterford crystals was held to be trade mark infringement by way of importing and re-exporting. |
| Rioglass SA and Transremar SL | European Court of Justice | Yes | Case C-115/02, [2003] ECR I-12705 | European Union | Cited regarding the question of whether customs authorities in the country of transit could detain goods manufactured in one member state, to be exported to a non-member state, transiting in the country of transit, for trade mark infringement. |
| Class International BV v Colgate-Palmolive Company and others | European Court of Justice | Yes | Case C-405/03, [2005] ECR I-8735 | European Union | Cited for the principle that goods are only imported into the European Community if they are brought in for the purpose of putting them on the market therein. |
| Eli Lilly and Co and another v 8PM Chemist Ltd | Court of Appeal of England and Wales | Yes | [2008] EWCA Civ 24 | United Kingdom | Cited for the principle that the question of whether goods are imported is fundamentally a question of whether there is any “interference with the proprietor’s right of first marketing in Europe”. |
| 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, [2011] ECR I-12435 | European Union | Cited for the principle that imitation goods from outside the EC and in transit in an EC country to a non-EC country cannot be classified as counterfeit or pirated unless they are “the subject of a commercial act directed at European Union consumers, such as a sale, offer for sale or advertising”. |
| Gillette UK Limited v Edenwest Limited | Unspecified | Yes | [1994] RPC 279 | United Kingdom | Cited for the proposition that innocence is not a defence to trade mark infringement. |
| Creative Technology Ltd v Cosmos Trade-Nology Pte Ltd and another | Unspecified | Yes | [2003] 3 SLR(R) 697 | Singapore | Cited for the principle that the innocence of the infringer is of no relevance where injunctive relief and damages are separately sought in a civil action. |
| Calvin Klein, Inc and another v HS International Pte Ltd and others | Unspecified | Yes | [2016] 5 SLR 1183 | Singapore | Cited for the principle that innocence due to a lack of knowledge or awareness that the goods offered for sale infringed the plaintiffs’ trade marks was not a defence. |
| Kickapoo (Malaysia) Sdn Bhd and another v The Monarch Beverage Co (Europe) Ltd | Court of Appeal | Yes | [2010] 1 SLR 1212 | Singapore | Cited for the principle that unless the appellants could bring themselves within a defence or other exception in the context of trade mark law itself, they could not be excused. |
| Public Prosecutor v Koh Peng Kiat | Unspecified | Yes | [2016] 1 SLR 753 | Singapore | Cited for the principle that different degrees of strictness may exist in strict liability. |
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 of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 27(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 27(4)(c) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 2(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 28(4)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 22(1)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 22(1)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 22(2) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 26(1)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 27(3)(d) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 81 of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 82(4)(c) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 93A of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 49 of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Interpretation Act (Cap 1, 2002 Rev Ed) | Singapore |
| s 2(1) of the Interpretation Act (Cap 1, 2002 Rev Ed) | Singapore |
| Customs Act (Cap 70, 2004 Rev Ed) | Singapore |
| Intellectual Property (Border Enforcement) Act 2018 (No 34 of 2018) | Singapore |
| ss 57 and 60 of the Intellectual Property (Border Enforcement) Act | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark infringement
- Freight forwarder
- Transhipment
- Counterfeit goods
- Import
- Export
- Use of sign
- Strict liability
- Knowledge
- Intention
- Border enforcement measures
- Local consignee
- Goods in transit
15.2 Keywords
- Trade mark infringement
- Freight forwarder
- Counterfeit goods
- Transhipment
- Singapore
- Import
- Export
- Border enforcement
16. Subjects
- Trade Marks
- Intellectual Property
- Freight Forwarding
- Transhipment
- Border Enforcement
17. Areas of Law
- Trade Mark Law
- Intellectual Property Law
- Border Enforcement Measures
- Freight Forwarding Law