Article

Plaintiff sued Carrier for infringementon the basis that its trademark rights were infringed byCarrier through“‘importation’ and/or‘exportation’”. The High Court of the Republic of Singapore, Wei, J., dismissed the complaint.

The central issue was whether the Carrierwas liable for importing or exporting the goods under the Trade Marks Act (TMA). The Judge noted that while “an individual who shares a common design with a tortfeasor to commit a tort and who participates by performing an act in furtherance of that common design, is liable as a joint tortfeasor in conspiracy”, there was no evidence here that the Carrier had a common design with the importer to infringe Plaintiff’s trademark rights.The Judge further noted that “ownership of the goods represented in the sea waybill will pass by reason of the underlying transaction. Thus, in the present case, it follows that ownership and the property in the Counterfeit Goods is a matter that can only be determined by reference to the underlying transaction between [Carrier] and the Third Party.”The Judge found it clear that “[Carrier] did not acquire any property in the Counterfeit Goods simply by virtue of being named as the consignee in the sea waybills.”

The Judge also determined that “[Carrier’s] engagement by the Third Party was for the limited purpose of arranging for transhipment of the inbound Containers”, and thus,Carrier did not export the goods. The Judge found that the counterfeit goods were imported by the shippers in China or the third party and exported by the third party. The Judge ultimately ruled that the infringement action could not continue against Carrierbecause it was neither the importer nor exporter of the goods.

Comment: Could a bank that arranged financing via LCs or undertook a collection be exposed to liability?

[MMY]


COPYRIGHT OF THE INSTITUTE OF INTERNATIONAL BANKING LAW & PRACTICE

The views expressed in this Case Summary are those of the Institute of International Banking Law and Practice and not necessarily those of the ICC or Coastline Solutions.