17 September, 2019
The High Court in this recent case of transhipment of counterfeit goods had the opportunity to consider whether a party sued for trade mark infringement could rely on it being a mere middle-man to escape liability under the cause of action on the ground that it was a mere conduit of these goods for third parties/non-Malaysian market.
The High Court Judge answered this in the negative and held that the purported defence was not one of the prescribed statutory defences provided for under section 40 of the Trade Marks Act 1976. In this case, the Court found that the secondary act of abetment of others would still amount to “use” in respect of liability for trade mark infringement.
Facts of the case
The plaintiff (“Heineken Asia Pacific”) is a private limited company incorporated in Singapore and is part of the Heineken Group. Heineken Asia Pacific is the registered proprietor in Malaysia of, amongst others, the “BINTANG” mark and devices (“Bintang Marks”) in respect of alcoholic drinks and other goods in Class 32 including these marks.
The defendant (“Super La Via”) is a private limited company incorporated in Malaysia involved in the business of mini-market, warehousing and storage facilities and general trading.
On 7 June 2018, Heineken Asia Pacific filed an action against Super La Via for trade mark infringement by reason of Super La Via’s acts of importing, exporting, distributing and selling beer bearing marks which are said to be identical to or nearly resembling one or more of the Bintang Marks which are not manufactured by or under the license of Heineken Asia Pacific (“Counterfeit Bintang Beer”).
Has Heineken Asia Pacific proved its trade mark infringement case?
The High Court Judge was satisfied that Heineken Asia Pacific has summarily made out its case of trade mark infringement against Super La Via. Super La Via had used the marks which are identical or so nearly resembling Heineken Asia Pacific’s Bintang Marks in the course of trade to render the use of the marks likely to be taken as being used as a trade mark. Super La Via has further failed to raise any defence or provide triable issues or otherwise to convince the High Court Judge to hold trial.
Secondary act of abetment
In its defence, Super La Via claimed to be a mere middle-man who leased its import licence and imported the shipment of three containers of Counterfeit Bintang Beer for Martens Luxury Sdn Bhd and another shipment of two containers of Counterfeit Bintang Beer for transhipment to another country. As these shipments were meant for other parties, Super La Via claimed that it was not the owner of the Counterfeit Bintang Beer.
The High Court held that Super La Via’s secondary act of abetment of others was sufficient in connecting it with the use of Counterfeit Bintang Beer notwithstanding others may have been the principal party which ultimately owned the Counterfeit Bintang Beer.
Super La Via’s involvement constituted “use in the course of trade” which has been widely defined and liberally interpreted. The High Court Judge took judicial notice on the critical impact of counterfeit alcoholic beverages which is detrimental, if not, fatal to consumers.
Disclosure
It is worth noting that in this case, amongst others, the High Court Judge ordered for disclosure of full details of the factories and/or warehouses that Super La Via had been using to manufacture the Counterfeit Bintang Beer whether in Malaysia or other countries including factories in which Super La Via had pending orders to manufacture goods.
The High Court Judge further ordered the disclosure of the names and addresses of everyone who has supplied Super La Via or ordered to supply Super La Via with the infringing goods bearing the Bintang Marks.
For further information, please contact:
Ameet Kaur Purba, Partner, Shearn Delamore & Co
ameet@shearndelamore.com
