174 CURRENT INTELLIGENCE Journal of Intellectual Property Law & Practice, 2018, Vol. 13, No. 3 Lilly and Company v 8PM Chemist Ltd  EWCA Civ Trade marks 24, which found that the act of ‘importing’ requires the counterfeit goods to actually be placed on the market (as op- n Shipment of counterfeit goods in posed to being merely in transit). Singapore: the extent of liability of freight However, the High Court chose not to follow the posi- forwarders tion adopted by the CJEU and Court of Appeal of England and Wales. Instead, it found that under Singapore law, the Louis Vuitton Malletier v Megastar Shipping Pte Ltd  act of ‘importing’ does not require the goods to be in- SGHC 305 (High Court of Singapore, 24 November 2017) tended for free circulation in the Singapore market. There (LV v Megastar) would be an ‘import’ if the goods were ‘brought into The Singapore High Court held that a freight forwarder of Singapore’ by land, sea or air in the course of trade (even if a shipment of counterfeit goods was not liable for trade they are in transit and/or for transhipment). mark infringement. The High Court decision provides Accordingly, even though the Counterfeit Goods were useful guidance in relation to what constitutes an ‘import’ meant to be transhipped to Batam, they were still found to and whether a freight forwarder is an ‘importer’ for the have been ‘imported’ into Singapore under the Act. purposes of determining trade mark infringement. Secondly, having found that the Counterfeit Goods were ‘imports’, the next issue to address was whether Megastar Legal context (as a freight forwarded) was an ‘importer’ under the Act, which could be liable for the ‘importation’. Under the Trade Marks Act (Cap. 332) (Act), there are var- The High Court accepted that the question of whether a ious remedies that a trade mark owner may seek against an freight forwarder (or other intermediary) is an ‘importer’ importer of counterfeit goods into Singapore. would be highly fact-sensitive, and depend on various fac- However, where the goods are merely in transit (eg where tors such as the nature of the transaction. the shipment is brought into Singapore temporarily pending Based on the facts available, the High Court determined transhipment to another location), the position is not as that Megastar was not an ‘importer’. It took into account clear—questions arise as to whether the said goods are actually various factors, including the fact that Megastar had no part ‘imports’ and whether the freight forwarder is an ‘importer’. in making the shipping arrangements, packing or loading of In LV v Megastar, the Singapore High Court had a chance the containers (which contained the Counterfeit Goods)— to address such issue and provide some useful guidance. such arrangements had been done by third parties. Megastar had no knowledge of the contents of the shipments (and Facts that they contained the Counterfeit Goods); Megastar was Megastar was a freight forwarder that had shipped two merely acting on instructions from third parties, and there containers loaded with counterfeit goods (Counterfeit was nothing it could have done to prevent the Counterfeit Goods) from China to Singapore for the purposes of tran- Goods from being brought into Singapore. shipment to Batam, Indonesia. Megastar had no knowledge Accordingly, Megastar was not liable for trade mark in- that the shipments contained Counterfeit Goods. fringement vis-a ` -vis the Counterfeit Goods. The Counterfeit Goods were inspected and seized by Singapore Customs, and the owners of the relevant trade Practical signiﬁcance marks commenced legal proceedings against Megastar for The High Court decision provides useful guidance on the trade mark infringement. position of freight forwarders in this day and age where in- ternational trade and e-commerce is an inextricable part of Analysis daily life. There are two main issues addressed by the Singapore High The decision suggests that freight forwarders (and other Court in LV v Megastar. intermediaries) would not necessarily be liable for trade First, the High Court had to determine whether the mark infringement in relation to the contents of shipments Counterfeit Goods were ‘imported’ under the Act, which that they have no knowledge of (and which they have no could then constitute an act of infringement. reasonable basis to question). The High Court considered the decisions of the Court of Justice of the European Union (CJEU) in Class International BV v Colgate-Palmolive Company, Case C-405/03  Samuel Wee ECR 1-8735 and Koninklijke Philips Electronics NV v Lucheng Yusarn Audrey, Singapore Meijing Industrial Company Ltd., Nokia Corporation v Her Email: firstname.lastname@example.org Majesty’s Commissioners of Revenue and Customs,Joined doi:10.1093/jiplp/jpy006 Cases C-446/09 and C-495/09, ECLI:EU:C:2011; and the de- cision of the Court of Appeal of England and Wales in Eli Downloaded from https://academic.oup.com/jiplp/article-abstract/13/3/174/4899069 by Ed 'DeepDyve' Gillespie user on 16 March 2018
Journal of Intellectual Property Law & Practice – Oxford University Press
Published: Mar 1, 2018
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