SINGAPORE IP CASE UPDATE : The Connection Of Trademark Infringement In Singapore

CALVIN KLEIN, INC. AND ANOTHER v. HS INTERNATIONAL PTE LTD AND OTHERS

This case concerns the Plaintiff’s (Calvin Klein, Inc. and Calvin Klein Trademark Trust) application for summary judgement against the Defendants (HS International Pte Ltd, Global PSM Pte Ltd and Mr Jeffrey Tan) for trade mark infringement. The central feature in the Plaintiff’s suit is the Defendants involvement in selling counterfeit goods on the SGbuy4u Website. Chan Seng Onn J. set out 3 important principles in determining whether the Plaintiff’s would succeed in their application:

(a) whether the requirement of double identity under s 27(1) of the Trade Marks Act 1976 (“TMA”) is satisfied;

(b) whether the relevant signs have been “use[d]” within the meaning of ss 27(1) and (4) of the TMA; and

(c) which, if any, of the Defendants carried out the infringing use.

On the first issue, the High Court held that the appearance of the ‘Calvin Klein’ sign on the goods obtained from the First Sample Purchase and those seized during the raid is a reproduction of the registered ‘Calvin Klein’ trade mark without any modification or addition, thus satisfying the double identity requirement.

Secondly, the High Court accepted that the Plaintiff’s counterfeit goods being offered on SGbuy4u website was in accordance to ss 27(1) and (4)(b) of the TMA, as a sign identical with its trade mark was used in the course of trade. The Defendants assertion of the SGbuy4u Business being a courier or freight forwarding service like FedEx, DHL or SingPost; and a customer-to-customer (“C2C”) platform facilitating the sale and purchase of goods similar to eBay, Carousell, Taobao and 65daigou as a defence was rejected as different services are provided upon comparison.

Lastly, upon Chan Seng Onn J.’s analysis it was decided that only the Second Defendant, Global PSM Pte Ltd was involved in offering the infringing goods for sale because of its sole and whole control, management and involvement in the SGbuy4u Business and Website where payment was made to the Second Defendant and the User Agreement states that any legal notices shall be served on the Second Defendant. The High Court held that a slight connection between the First and the Third Defendant (HS International Pte Ltd and Mr Jeffrey Tan) and the infringing use of the Plaintiff’s trade mark is inadequate to demonstrate that the Plaintiffs have adduced sufficient evidence for a prima facie case – that the First and Third Defendant had carried out the infringing use, and to shift the burden of proof to the First and Third Defendant.

Following from the above, a summary judgement was granted in respect of the Plaintiffs’ claim for trade mark infringement against the Second Defendant, whereas the application for summary judgement against the First and Third Defendant was disallowed. The court further ordered the First and Third Defendant to be given unconditional leave to defend the Plaintiffs’ claims against them.

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