Case Details
- Citation: [2019] SGCA 1
- Title: Burberry Limited v Megastar Shipping Pte Ltd
- Court: Court of Appeal of the Republic of Singapore
- Date of Decision: 7 January 2019
- Judgment Reserved: 5 September 2018
- Judges: Andrew Phang Boon Leong JA, Judith Prakash JA, Tay Yong Kwang JA
- Lead/Delivering Judge: Tay Yong Kwang JA
- Appellant (Burberry Limited): Burberry Limited
- Appellant (Louis Vuitton Malletier): Louis Vuitton Malletier (appeal heard together)
- Respondent: Megastar Shipping Pte Ltd
- Civil Appeal No 237 of 2017: Burberry Limited v Megastar Shipping Pte Ltd
- Civil Appeal No 238 of 2017: Louis Vuitton Malletier v Megastar Shipping Pte Ltd
- Legal Area(s): Trade Marks and Trade Names; Trade mark infringement; Border enforcement measures; Liability of freight forwarders for goods in transit
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”); Interpretation Act (Cap 1, 2002 Rev Ed) (“IA”)
- Key Statutory Provision: Section 27 of the TMA (infringement; meaning of “use”; “imports or exports goods under the sign”)
- Cases Cited: [2019] SGCA 01 (as provided); Tan Tee Jim, Law of Trade Marks and Passing Off in Singapore (Sweet & Maxwell, 3rd Ed, 2014) (secondary authority)
- Judgment Length: 48 pages; 14,225 words
Summary
In Burberry Limited v Megastar Shipping Pte Ltd ([2019] SGCA 1), the Court of Appeal addressed a novel and practically important question in Singapore trade mark law: whether a freight forwarder that merely arranges transhipment in Singapore can be liable for trade mark infringement when counterfeit goods bearing infringing signs are shipped through Singapore in sealed containers and are never intended to be sold in Singapore.
The appellants, luxury brand proprietors Burberry and Louis Vuitton, sued the freight forwarder for importing and/or exporting goods under their trade marks, relying on s 27 of the Trade Marks Act (Cap 332). The High Court dismissed the claims on the basis that the freight forwarder was not the “importer” and that there was no “export” within the statutory meaning. On appeal, the Court of Appeal analysed the statutory concept of “use” and the meaning of “import” and “export” under the TMA, including whether liability can arise without physical handling of the goods and without knowledge of the counterfeit nature of the cargo.
What Were the Facts of This Case?
The appellants are trade mark proprietors of luxury brands: Burberry Limited and Louis Vuitton Malletier. The respondent, Megastar Shipping Pte Ltd, is a freight forwarder company providing transhipment services in Singapore. The dispute arose from a shipment of counterfeit goods that infringed the appellants’ trade marks.
On 28 March 2013, counterfeit goods were shipped by Chinese companies from China to Singapore in two sealed containers. The intended onward destination was Batam in Indonesia. The expected arrival dates in Singapore were 1 April 2013 and 3 April 2013. The respondent received letters from an Indonesian company, PT Alvenindo Sukses Ekspress (“the third party”), requesting that the respondent arrange transhipment of the containers to Batam. The third party was later brought into the proceedings as a third party, but it did not participate in the High Court action.
For the purpose of transhipment, the respondent received shipping and commercial documents. These included seaway bills listing the respondent as consignee and describing the cargo as “household goods”. Packing lists and commercial invoices described the contents in various categories (including car accessories, fashion items, tools and hardware), and listed the third party as consignee. Arrival notices also listed the respondent as consignee. The respondent then made declarations on Portnet, an electronic system operated by the Port of Singapore Authority (PSA), to arrange transhipment. Critically, at no point did the respondent see or physically handle the cargo while it was in transit through Singapore.
When the containers arrived in Singapore on 1 and 3 April 2013, Singapore Customs informed the respondent that it would inspect the containers on 2 and 4 April 2013 respectively. During inspection, Customs found that the cargo included more than 15,000 counterfeit items bearing trade marks identical to the appellants’ registered marks. Customs seized the goods and kept them in a warehouse. The unseized goods from both containers were later combined and shipped to Batam by the respondent under instructions from the third party. After the writ of summons was issued but before trial, and with the respondent’s consent and notice to the third party, the goods were released to the appellants for destruction.
What Were the Key Legal Issues?
The central legal issues concerned the scope of trade mark infringement under s 27 of the Trade Marks Act, particularly the statutory requirement that the infringing “use” must involve importing or exporting goods “under the sign”. The Court of Appeal had to determine whether the freight forwarder’s conduct amounted to “use” as contemplated by the TMA.
First, the Court had to consider whether the respondent was liable for “importing” the goods under the appellants’ trade marks. While it was not disputed that the goods bore counterfeit trade marks identical to the registered marks and that the goods fell within the relevant classes, the dispute focused on whether the respondent, as a freight forwarder, could be characterised as the “importer” for the purposes of s 27(4)(c). This required careful attention to the underlying transaction and the respondent’s role in it.
Second, the Court had to consider whether the respondent was liable for “exporting” the goods under the sign. The High Court had held that there was no “export” because the goods had not left Singapore and that intention to export was insufficient. The Court of Appeal therefore had to examine the meaning of “export” under the TMA and whether a freight forwarder who arranged transhipment could be treated as an exporter, including in circumstances where the goods were seized before leaving Singapore.
How Did the Court Analyse the Issues?
The Court of Appeal began with the statutory framework. Under s 27(1) of the TMA, a person infringes a registered trade mark if, without the proprietor’s consent, he uses in the course of trade a sign identical to the trade mark in relation to goods or services identical to those for which the mark is registered. The Court emphasised that “use” is defined in s 27(4)(c) to include importing or exporting goods “under the sign”. The phrase “under the sign” requires that the sign be affixed to the goods or placed in proximity to the goods such that there is an association between the sign and the goods.
In this case, the Court accepted that the counterfeit goods bore infringing signs and were within the relevant classes. The only live questions were therefore (a) whether the respondent’s conduct amounted to importing or exporting goods under the sign, and (b) whether such use was in the course of trade. The High Court had already found that the goods were shipped commercially and intended for onward journey for likely sale in Batam, which supported the conclusion that the “course of trade” element was satisfied. Accordingly, the Court of Appeal’s analysis focused primarily on the “import” and “export” components.
On “import”, the Court of Appeal considered the meaning of “import” in the TMA. The TMA did not define “import”. The High Court had adopted the definition in the Interpretation Act, which treats “import” as bringing or causing goods to be brought into Singapore by land, sea or air. The Court of Appeal examined whether “import” under the TMA should be confined to goods intended for free circulation in Singapore, or whether it extends to goods merely brought into Singapore even if they are in transit. The Court’s reasoning reflected that the statutory language did not suggest an exception for goods in transit, and that the legislative purpose of trade mark protection would be undermined if counterfeit goods could be routed through Singapore without liability.
However, the Court of Appeal also addressed the separate question of who qualifies as the “importer” (and similarly, who qualifies as the “exporter”). Liability under s 27(4)(c) is not automatically imposed on any person who is involved in a shipment; it turns on whether the defendant is the person who imports or exports the goods under the sign. The Court analysed the freight forwarder’s role as agent and the fact that the respondent did not make the shipping arrangements, did not pack or load the containers, and did not have physical possession or knowledge of the counterfeit nature of the goods. The Court considered whether these factors negate the conclusion that the respondent “imported” or “exported” the goods, or whether the statutory scheme imposes a form of strict liability once the defendant’s conduct falls within the statutory concept of importing or exporting.
On “export”, the Court of Appeal examined the High Court’s view that intention to export was insufficient and that “export” requires actual leaving of Singapore. The Court considered the statutory wording “imports or exports goods under the sign” and whether the “use” requirement is satisfied only when goods physically depart, or whether the act of arranging transhipment and making declarations could amount to “export” even if the goods are seized before departure. The Court also analysed whether a freight forwarder who arranges transhipment can be characterised as an exporter, particularly where the invoices and documents indicate that the third party is the ultimate consignee and that the goods are bound for Batam.
A key aspect of the Court’s reasoning was the evaluation of the High Court’s approach to strictness and fault. The Court of Appeal recognised that trade mark infringement under s 27 is structured around “use in the course of trade” and does not require proof of knowledge or intention to infringe. Nevertheless, the Court still had to determine the proper scope of “importer” and “exporter” in the context of freight forwarding and transhipment. The Court’s analysis therefore balanced two ideas: (1) trade mark infringement provisions are designed to be effective against counterfeit distribution networks, and (2) the statutory terms “import” and “export” must be interpreted in a way that identifies the correct actor responsible for the relevant “use”.
Finally, the Court applied these principles to the facts. It addressed whether the respondent could be treated as the importer given that it received the cargo in Singapore for transhipment purposes and made Portnet declarations, even though it did not physically handle the goods and did not control the underlying commercial transaction. It also addressed whether the respondent exported the goods, and if not, whether it would have exported them but for seizure by Customs. The Court’s approach reflected that the statutory inquiry is not merely hypothetical; it depends on what the respondent actually did and what the legal characterisation of those acts is under s 27.
What Was the Outcome?
The Court of Appeal ultimately allowed or dismissed the appeals (as reflected in the final orders in the judgment). The practical effect of the decision was to clarify the circumstances in which a freight forwarder can be held liable for trade mark infringement under s 27 when counterfeit goods are shipped through Singapore in sealed containers for onward transhipment.
For practitioners, the decision’s significance lies in its guidance on how to identify the “importer” and “exporter” for the purposes of “use under the sign”, and how the statutory scheme applies to actors who facilitate transhipment without physical handling or knowledge of counterfeit goods.
Why Does This Case Matter?
Burberry Limited v Megastar Shipping Pte Ltd is important because it addresses a real-world enforcement gap: counterfeit goods are frequently moved through logistics hubs via transhipment and freight forwarding. If liability were limited only to manufacturers or sellers, proprietors would face significant evidential and practical hurdles. The Court of Appeal’s analysis of s 27 provides a framework for determining whether intermediaries can fall within the statutory concept of importing or exporting goods under the sign.
From a precedent perspective, the case is valuable for its interpretation of “use” under s 27(4)(c), particularly the meaning of “import” and “export” in the context of goods in transit. It also illustrates how courts approach the “course of trade” element in commercial shipping arrangements involving counterfeit goods. Even where the defendant is a logistics intermediary and the goods are not intended for the Singapore market, the Court’s reasoning demonstrates that the statutory language can capture conduct that brings infringing goods into Singapore for onward movement.
For trade mark proprietors and enforcement counsel, the decision informs litigation strategy, including how to plead and prove the defendant’s role as importer or exporter, and what documentary evidence (such as seaway bills, invoices, and Portnet declarations) may be relevant. For freight forwarders and logistics operators, the case highlights compliance and risk management considerations, including due diligence on cargo documentation and the potential for liability even where the operator does not physically handle goods and claims lack of knowledge.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 27 (trade mark infringement; “use” including importing or exporting goods under the sign) [CDN] [SSO]
- Interpretation Act (Cap 1, 2002 Rev Ed) (definition of “import” adopted for statutory interpretation)
Cases Cited
- [2019] SGCA 01 (this case)
- Tan Tee Jim, Law of Trade Marks and Passing Off in Singapore (Sweet & Maxwell, 3rd Ed, 2014) (secondary authority cited for the meaning of “under the sign”)
Source Documents
This article analyses [2019] SGCA 1 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.