Case Details
- Citation: [2019] SGCA 01
- Case Title: Burberry Limited and another v Megastar Shipping Pte Ltd and another appeal
- Court: Court of Appeal of the Republic of Singapore
- Date of Decision: 07 January 2019
- Case Numbers: Civil Appeals No 237 and 238 of 2017
- Judges (Coram): Andrew Phang Boon Leong JA; Judith Prakash JA; Tay Yong Kwang JA
- Appellants/Plaintiffs: Burberry Limited and another (trade mark proprietors)
- Respondent/Defendant: Megastar Shipping Pte Ltd (freight forwarder)
- Third Party: PT Alvenindo Sukses Ekspress (brought in as third party by respondent; did not participate)
- Legal Areas: Trade Marks and Trade Names — Infringement; Trade Marks and Trade Names — Border enforcement measures
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”); Interpretation Act (Cap 1, 2002 Rev Ed) (“IA”) (definition of “import”); Customs Act (expressly incorporated by reference in the relevant trade mark/border enforcement framework)
- Key Provisions: TMA s 27(1) and s 27(4)(c) (meaning of “use” by “imports or exports goods under the sign”)
- Procedural History: Appeal from High Court decision in [2017] SGHC 305
- Counsel for Appellants: Ravindran s/o Muthucumarasamy, Jevon Louis and Chan Wenqiang (Ravindran Associates LLP)
- Counsel for Respondent: Chia Chee Hyong Leonard and Jasmine Dhanaraj (Asia Ascent Law Corporation)
- Amicus Curiae: Prof Gordon Ionwy David Llewelyn (School of Law, Singapore Management University)
- Judgment Length: 24 pages; 13,360 words
Summary
Burberry Limited and another v Megastar Shipping Pte Ltd [2019] SGCA 01 is a significant Court of Appeal decision on trade mark infringement in the context of international shipping and border enforcement. The case arose after Singapore Customs inspected and seized counterfeit luxury goods in sealed containers that were transhipped through Singapore en route to Batam, Indonesia. The trade mark proprietors sued the freight forwarder in Singapore, alleging that it infringed their registered marks by “importing or exporting” goods “under the sign”.
The Court of Appeal upheld the High Court’s dismissal of the claims. While the Court accepted that the counterfeit goods were “imported” into Singapore for the purposes of the Trade Marks Act, it held that the freight forwarder was not the “importer” or “exporter” within the meaning of the infringement provision. The Court emphasised that determining who is an importer/exporter is highly fact-sensitive and depends on the underlying transaction, including who arranged shipment, who controlled the goods, and whether the defendant had any meaningful role in the acts that bring the goods into or out of Singapore. The Court also rejected the argument that a mere intention to export suffices to constitute “use” under the statutory wording.
What Were the Facts of This Case?
The appellants were trade mark proprietors of luxury brands, including Burberry and Louis Vuitton. The respondent, Megastar Shipping Pte Ltd, was a freight forwarder providing transhipment services in Singapore. The dispute concerned counterfeit goods bearing marks identical to the appellants’ registered trade marks. These goods were shipped from China to Singapore in two sealed containers, with onward shipment intended to Batam in Indonesia.
On or about 28 March 2013, the respondent received letters from an Indonesian company, PT Alvenindo Sukses Ekspress (“the third party”), requesting transhipment arrangements for the containers to Batam. For the purpose of transhipment, the respondent received shipping documentation including seaway bills, packing lists, and commercial invoices. The seaway bills listed the respondent as consignee and described the cargo in broad terms (for example, “household goods” and a mixture of car accessories, fashion items, tools and hardware). The packing lists and invoices similarly described the contents and listed the third party as consignee.
Crucially, the respondent did not physically see or handle the cargo while it was in transit. Under the Portnet system (an electronic system operated by the Port of Singapore Authority), freight forwarders typically do not need to take physical possession of containers. The respondent’s role was largely administrative and operational in the transhipment process: it made declarations on Portnet and asked the carrier to declare transhipment status so that the containers could be unloaded into transhipment stacks and loaded onto the outward-bound vessel. The Court noted that the respondent’s involvement did not extend to inspecting the goods or knowing what they contained.
When the containers arrived in Singapore on 1 and 3 April 2013, Singapore Customs informed the respondent that it would inspect the containers. During inspection, Customs found counterfeit products totalling more than 15,000 items and seized the goods. The goods were kept in a warehouse. Subsequently, the unseized goods from both containers were combined and shipped to Batam by the respondent under instructions from the third party. The trade mark proprietors commenced infringement actions in April 2013 against the respondent. The third party was brought in as a third party but did not participate. After the writ was issued and with the respondent’s consent, the goods were released to the appellants for destruction.
What Were the Key Legal Issues?
The central legal issue on appeal was whether the respondent freight forwarder should be considered an “importer” (and/or “would be” exporter) of the counterfeit goods for the purposes of trade mark infringement under s 27 of the Trade Marks Act. The infringement provision requires that, without the proprietor’s consent, a person “uses” a sign in the course of trade in relation to goods or services for which the mark is registered. The statutory definition of “use” includes importing or exporting goods “under the sign”.
Accordingly, the Court had to decide two interrelated questions. First, whether the counterfeit goods were imported or exported “under the sign”, meaning that the sign was affixed to the goods or placed in proximity such that there is an association between the sign and the goods. Second, and more importantly, whether the respondent was the relevant actor who “imports or exports” those goods under the sign. This required the Court to determine who is the importer/exporter in a transhipment scenario where the defendant is named as consignee and makes declarations but does not physically handle the goods and does not know their contents.
A further issue concerned the “course of trade” element. The High Court had already found that the signs were used in the course of trade, and the appeal focused primarily on the importer/exporter question. The Court of Appeal also addressed the argument that an intention to export could amount to “use” under s 27(4)(c), even if the goods never left Singapore. The Court had to interpret the statutory wording carefully and determine whether intention alone is sufficient.
How Did the Court Analyse the Issues?
The Court of Appeal began by framing the case as a novel problem: whether a freight forwarder who arranges transhipment of sealed containers through Singapore, without seeing or handling the goods and without knowledge of their contents, can be liable for trade mark infringement as the importer and/or “would be” exporter. The Court accepted that counterfeit goods bearing identical signs were present and that the “under the sign” requirement was satisfied. The dispute therefore turned on attribution of the statutory acts of importation/exportation to the correct party.
On “import”, the Court agreed with the High Court that the goods were imported into Singapore for the purposes of the TMA, even though they were not intended for free circulation in Singapore. The Court considered that “import” was not defined in the TMA, and therefore adopted the definition in the Interpretation Act: “import” means bringing or causing goods to be brought into Singapore by land, sea or air. The Court found no inconsistency between this definition and the TMA. Importantly, the Court rejected any suggestion that importation requires an intention to place goods into the Singapore market; the statutory concept of importation is concerned with bringing goods into Singapore, not with subsequent commercial distribution within Singapore.
However, the Court then addressed the more difficult question: whether the respondent was the importer. The Court emphasised that identifying an importer/exporter is “highly fact-sensitive” and requires careful attention to the underlying transaction. The Court looked at the respondent’s role in the shipping arrangements and its relationship to the goods. The evidence showed that the respondent did not make the shipping arrangements, did not pack or load the containers onto the vessels, and did not have control over the goods in the sense of inspecting or directing their contents. The instructions to declare transhipment status came from the third party, and by the time the respondent received those instructions, there was nothing the respondent could have done to prevent the goods from being brought into Singapore.
The Court also considered the significance of the respondent being listed as consignee in the seaway bills and being named in customs permits and declarations. While these factors might suggest a degree of involvement, the Court held that they do not automatically make the respondent the importer/exporter under the TMA. The Court treated the naming of a party for shipping and customs documentation purposes as insufficient to displace the substantive inquiry into who actually caused the goods to be brought into Singapore and who had the relevant role in the transaction. On the facts, the Court concluded that the importer was either the shipper in China or the third party as ultimate consignee in Batam, not the freight forwarder.
On “export”, the Court held that the goods were not exported “under the sign” because they never left Singapore. The Court further rejected the argument that a mere intention to export could satisfy the statutory requirement of “use” under s 27(4)(c). The Court reasoned that the wording of the provision requires actual importing or exporting “under the sign”. Intention, without the corresponding act of exportation, is inconsistent with the plain statutory language. Even if the Court were wrong on this point, the respondent still would not qualify as the “would-be exporter” because it was not the party that would have exported the goods; the third party was the ultimate consignee and the party whose instructions governed onward shipment.
Finally, the Court addressed liability as a joint tortfeasor. The High Court had found that the respondent did not act in concert with, or share a common design with, the shipper or the third party to do the acts alleged to amount to infringement. The Court of Appeal accepted that the respondent’s role was limited to transhipment arrangements and that it lacked knowledge of the counterfeit nature of the goods. In the absence of concerted action or a shared design, the respondent could not be held liable as a joint tortfeasor for importation.
What Was the Outcome?
The Court of Appeal dismissed the appellants’ claims against the respondent. It affirmed that, although the counterfeit goods were imported into Singapore, the freight forwarder was not the importer or exporter within the meaning of s 27 of the Trade Marks Act. The practical effect of the decision is that trade mark proprietors cannot automatically sue freight forwarders merely because they are named as consignee or because they make transhipment declarations under Singapore customs and port procedures.
As a result, the respondent was entitled to costs. The High Court’s dismissal was therefore upheld, reinforcing the need for plaintiffs to establish, on the evidence, that the defendant is the relevant actor who imports or exports goods under the sign in the course of trade.
Why Does This Case Matter?
This decision matters because it clarifies the scope of trade mark infringement liability in cross-border logistics. Trade mark proprietors often seek to target intermediaries who are physically or operationally involved in the movement of counterfeit goods. Burberry v Megastar draws a boundary: a freight forwarder that merely arranges transhipment of sealed containers, without physical handling, without knowledge, and without control over the underlying shipment arrangements, will not necessarily be treated as the importer or exporter for infringement purposes.
For practitioners, the case is a reminder that infringement under s 27(4)(c) turns on statutory attribution of “import” and “export” acts, not on documentary labels such as “consignee” or on the fact that customs declarations were made. Evidence will be critical. Plaintiffs should focus on who caused the goods to be brought into Singapore, who had control over the goods, who arranged the shipment, and whether the defendant’s conduct goes beyond administrative transhipment into acts that can properly be characterised as importing or exporting under the sign.
From a policy perspective, the Court’s approach balances enforcement against counterfeit trade with the principle that liability should attach to the party whose conduct is properly captured by the infringement provision. The case also signals that courts will interpret the statutory wording closely, including rejecting arguments that intention alone can amount to “use” where the statute requires importing or exporting.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 27(1) and s 27(4)(c) [CDN] [SSO]
- Interpretation Act (Cap 1, 2002 Rev Ed) (definition of “import”)
- Customs Act (expressly incorporated by reference in the relevant border enforcement framework)
Cases Cited
- [2017] SGHC 305
- [2019] SGCA 1 (this appeal)
- Tan Tee Jim, Law of Trade Marks and Passing Off in Singapore vol 1 (Sweet & Maxwell, 3rd Ed, 2014) (cited for the meaning of “under the sign”)
Source Documents
This article analyses [2019] SGCA 01 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.