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Commentary: Trade Marks in Singapore [Samsonite IP Holdings Sarl v An Sheng Trading Pte Ltd [2017] SGHC 18 ]

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Most trade mark owners get frustrated when, legally, it is not possible to stop a parallel importer from importing and selling genuine goods in Singapore. Parallel importers are protected by the defence of exhaustion of rights under section 29(1) of the Trade Marks Act (“TMA”). Earlier this year, a case dealing with this very issue was brought before the Singapore High Court and in that case, the parallel importer was found to have infringed a registered trade mark, giving the trade mark owner relief rather than grief. The case in question is Samsonite IP Holdings Sarl v An Sheng Trading Pte Ltd [2017] SGHC 18 wherein the High Court had to consider the scope and effect of the defence of exhaustion of rights in Singapore.

Section 29(1) of the TMA states that “a registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market, whether in Singapore or outside Singapore, under that trade mark by the proprietor of the registered trade mark or with his express or implied consent (conditional or otherwise)”. This defence, however, does not apply where:

In this case, Samsonite, as plaintiff and owner of the SAMSONITE marks in Singapore and globally, brought a claim of trade mark infringement under section 27 of the TMA against An Sheng Trading who was a parallel importer. An Sheng imported a shipment of backpacks, which were detained at the Singapore Customs, bearing Samsonite’s trade mark into Singapore.  As part of its IP policy, Samsonite allowed its subsidiaries in a specific country to use the SAMSONITE mark in that country.  In this instance, Samsonite in China was granted a licence to use the SAMSONITE mark in a co-branding agreement between Samsonite China and Lenovo PC HK Ltd.

The salient terms of the co-branding agreement are:

Pursuant to the co-branding agreement, Lenovo provided the co-branded goods to their authorised distributors and retailers to be given away for free in conjunction with the sale of LENOVO laptops. Some of Lenovo’s authorised dealers decided to sell Samsonite’s goods separately and without the LENOVO laptops to unauthorised dealers. Those unauthorized dealers then in turn sold Samsonite’s goods to An Sheng, a parallel importer.

Samsonite, together with Samsonite in China, commenced proceedings against An Sheng for trade mark infringement under the TMA, alleging that An Sheng had used its SAMSONITE mark in relation to identical goods and that such use was without consent. Samsonite sought injunctive relief against An Sheng as well as asked An Sheng to deliver up Samsonite’s goods detained at Singapore Custom, damages and an account of profits.  An Sheng raised the defence of exhaustion of rights under section 29(1) of the TMA. In doing so, An Sheng claims that Samsonite’s goods were genuine goods and were parallel imported, then sold into Singapore with Samsonite’s implied consent.

Samsonite sought for summary judgement in this case. Besides this issue, the High court had to decide whether An Sheng’s defence holds up, i.e. whether Samsonite’s goods were ‘put on the market’ as indicated in section 29(1).

The rationale of the exhaustion of rights defence is that once a trade mark owner puts its goods on the market, whether in Singapore or outside Singapore, that trade mark owner loses all rights to object to further exploitation and dealing of those goods, i.e. the trade mark owner’s rights are deemed to be “exhausted” in respect of those goods. Other traders, for example parallel importers, are free to sell those genuine goods, with implied consent.

Having reviewed the facts of the case and evidences presented, the High Court held that An Sheng did infringe Samsonite’s trade mark for the following reasons:

Accordingly, Samsonite succeeded in its summary judgement against An Sheng, granting Samsonite an injunction to restrain An Sheng and its officers, servants and agents from infringing the SAMSONITE Mark, a delivery up of the detained goods, and an inquiry as to damages or an account of profits.

This case is important because it is one of the few cases whereby a parallel importer got into trouble for importing and selling genuine goods thinking that there was implied consent under the exhaustion of rights principle when in fact there was unauthorized use of a trade mark.  It is noteworthy because a proprietor actually managed to stop a parallel importer from selling genuine goods which are otherwise allowed to be sold in Singapore considering the stance of the Singapore Parliament is generally in favour of parallel imports and that Singapore has, by legislation, adopted an international exhaustion of rights principle.


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This article is written by Kiran Dharsan Seiter from Seiter IP Consultants LLP.


This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article

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