Converse Inc v Ramesh Ramchandani: Trade Mark Infringement & Statutory Damages for Counterfeit Goods

In Converse Inc v Ramesh Ramchandani and Fatimah bte Mohd Yusof, the High Court of Singapore addressed the issue of statutory damages for trade mark infringement. Converse Inc. sued Ramesh Ramchandani and Fatimah bte Mohd Yusof for dealing in counterfeit Converse shoes. Interlocutory judgment was entered against both defendants. The court, presided over by Assistant Registrar Wong Baochen, considered the quantum of statutory damages to be awarded under section 31(5) of the Trade Marks Act, taking into account factors such as the flagrancy of the infringement, the plaintiff's losses, and the need for deterrence. The court awarded Converse Inc. S$100,000 in statutory damages and S$12,000 for costs.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Judgment for Plaintiff

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Converse Inc. sues Ramesh Ramchandani for trade mark infringement involving counterfeit Converse shoes. The court awards statutory damages, addressing factors like loss and deterrence.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Converse IncPlaintiffCorporationJudgment for PlaintiffWon
Ramesh RamchandaniDefendantIndividualJudgment against DefendantLost
Fatimah bte Mohd YusofDefendantIndividualJudgment against DefendantLost

3. Judges

Judge NameTitleDelivered Judgment
Wong BaochenAssistant RegistrarYes

4. Counsels

Counsel NameOrganization
Looi Wan HuiGateway Law Corporation
Florence BokGateway Law Corporation
Shalini MoganGateway Law Corporation

4. Facts

  1. The plaintiff, Converse Inc., is the registered proprietor of CONVERSE trade marks in Singapore.
  2. The defendants were involved in counterfeiting activities relating to Converse products.
  3. Mr. Hansen, a private investigator, confirmed the defendants were dealing in counterfeit shoes.
  4. The defendants made arrangements to sell counterfeit shoes to Mr. Hansen.
  5. A batch of counterfeit shoes was seized in Rotterdam following a court order obtained by the plaintiff.
  6. Interlocutory judgment was obtained against both defendants for defaulting in filing their defenses.
  7. The plaintiff elected to seek statutory damages under section 31(5) of the Trade Marks Act.

5. Formal Citations

  1. Converse Inc v Ramesh Ramchandani and another, Suit No. 828 of 2012 (AD 81 of 2013), [2014] SGHCR 11

6. Timeline

DateEvent
Plaintiff became aware of defendants' counterfeiting activities.
Mr. Hansen invited to inspect counterfeit shoes in Shenzhen.
Mr. Hansen introduced to Mr. Ramchandani.
Defendants arranged to sell a second batch of counterfeit shoes to Mr. Hansen.
Inspection of the Third Batch of Counterfeit Goods at Keppel Distripark.
Third Batch of Counterfeit Goods shipped out of Singapore.
Interlocutory judgment obtained against Ms. Fatimah.
Interlocutory judgment obtained against Mr. Ramchandani.
Decision Date

7. Legal Issues

  1. Trade Mark Infringement
    • Outcome: The court found the defendants liable for trade mark infringement due to their involvement in dealing with counterfeit Converse shoes.
    • Category: Substantive
    • Sub-Issues:
      • Use of counterfeit trade mark
      • Application of trade mark without consent
      • False representation of goods as genuine
  2. Statutory Damages
    • Outcome: The court awarded statutory damages of S$100,000 to the plaintiff, considering factors such as the flagrancy of the infringement, the plaintiff's losses, and the need for deterrence.
    • Category: Substantive
    • Sub-Issues:
      • Assessment of damages
      • Factors for determining quantum of damages
      • Compensatory principles
    • Related Cases:
      • [2012] 4 SLR 36

8. Remedies Sought

  1. Statutory Damages

9. Cause of Actions

  • Trade Mark Infringement
  • Passing Off

10. Practice Areas

  • Intellectual Property Litigation
  • Trade Mark Infringement

11. Industries

  • Fashion
  • Retail

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
PH Hydraulics & Engineering Pte Ltd v Intrepid Offshore Construction Pte Ltd and anotherHigh CourtYes[2012] 4 SLR 36SingaporeCited for the application of section 119(2)(d) of the Copyright Act, which is similar to section 31(5) of the Trade Marks Act, in determining statutory damages for intellectual property infringement.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed) section 31(5)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) section 31(6)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) section 3(6)Singapore
Copyright Act (Cap 63, 2006 Rev Ed) section 119(2)(d)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Counterfeit goods
  • Trade mark infringement
  • Statutory damages
  • Chuck Taylor All Star
  • Parallel business

15.2 Keywords

  • Converse
  • trade mark
  • infringement
  • counterfeit
  • shoes
  • statutory damages

17. Areas of Law

Area NameRelevance Score
Trademark Infringement95
Trademarks90
Counterfeit Goods85
Passing Off70
Unfair Competition60
Fraud and Deceit30
Commercial Disputes25

16. Subjects

  • Intellectual Property
  • Trade Marks
  • Counterfeiting