9 November, 2018
Appeal against sentence for trade mark infringement: Public Prosecutor v Niki Han Jiayi [2018] SGDC 240
Facts
Ms Niki Han ("Han"), a businesswoman specialising in the retail of women's fashion, was charged with offences under the TMA for selling counterfeit shoes from three retail shops at Far East Plaza. She pleaded guilty to five charges under Section 49(c) of the TMA for the possession of counterfeit items for the purposes of trade ("Section 49(c) Offences"). The shoes sold were counterfeits of luxury fashion goods from brands such as Yves Saint Laurent, Christian Louboutin and Miu Miu. She was sentenced to four weeks’ imprisonment, to which she filed an appeal.
Decision
District Judge Adam Nakhoda briefly set out the relevant sentencing principles for Section 49(c) Offences, drawing largely from the seminal case of Goik Soon Guan v Public Prosecutor ("Goik"), which he confirmed to be the guiding precedent. In Goik, Justice Chao Hick Tin had set out that the primary sentencing consideration in trade mark infringement cases was general deterrence in order to ensure that Singapore remains an attractive location for foreign investors who will be assured that their intellectual property rights will be upheld.
However, Justice Chao had also stressed that a "deterrent sentence need not always take the form of a custodial sentence" and articulated that a systematic framework should be used in determining the appropriate sentence for Section 49(c) Offences. The Court should first consider the nature and extent of the infringement, and the manner in which the infringement was carried out. Subsequently, the Court should examine any relevant aggravating and mitigating factors. This required determining the infringer's level of involvement (from low to high) and the degree of permanence of the operation. Such factors are important in determining whether the threshold required to impose a custodial sentence has been crossed. In the subsequent case of Tan Wei v Public Prosecutor, Justice Chao elaborated that other factors should also be considered in addition to those set out in Goik, including, but not limited to: the size of the offender’s business; the number of employees in the offender’s business; the number of infringing articles involved; the duration of the infringement; and whether the infringer paid compensation to the affected trade mark owners.
In application of these principles to the case, the District Judge decided that Han's level of involvement was moderate. The amount of 92 infringing articles was a relatively low number in comparison to previous cases and the nature of Han's business was relatively small, given her net profit of approximately SGD 2,000. The District Judge also acknowledged Han's considerable efforts in compensating the trade mark owners, and found that her voluntary and substantial offers of compensation were commendable. Having considered all of the factors, the District Judge held that they merited a significant discount to the starting sentence of five to six months’ imprisonment, but were still insufficient to justify a non-custodial sentence. The appropriate sentence was found to be two weeks’ imprisonment per charge, to run consecutively for an overall sentence of four weeks’ imprisonment.
Comment
This case affirms Singapore's firm stance towards counterfeiting offences and trade mark infringers. It also provides clarity as to the sentencing regime by a thorough examination of the seminal cases regarding Section 49(c) Offences and confirming the relevant factors to consider when determining the duration of sentences for such offences.
For further information, please contact:
Andy Leck, Principal, Baker & McKenzie.Wong & Leow
andy.leck@bakermckenzie.com
