The Judicial Review Act No. 60 of 2000 v Yunping Lin
| Jurisdiction | Trinidad & Tobago |
| Judge | Mr. Justice R. Rahim |
| Judgment Date | 01 December 2022 |
| Neutral Citation | TT 2022 HC 270 |
| Docket Number | Claim No. CV2021-02815 |
| Court | High Court (Trinidad and Tobago) |
and
(Traiding as New Choice Trading Company)
the Honourable Mr. Justice R. Rahim
Claim No. CV2021-02815
IN THE HIGH COURT OF JUSTICE
Claimant: D. Rambally and K. Taklalsingh instructed by S. Ramkissoon
Defendant: T. Gibbons-Glenn and J. Mitchell instructed by S. Dass
Interested Party: M. Vasquez instructed by F. Punch.
A shipment of shoes, clothing and footwear in the name of the claimant arrived at the port on May 27, 2021. On June 22, 2021 the claimant's agents attempted to clear the shipment at which time they were informed by Customs that the goods were suspected of being counterfeit and same were detained. A Detained Packages Receipt pursuant to section 109 of the Trademark Act was issued to the claimant. The claimant wrote to Customs claiming ownership of the goods on June 30, 2021 and challenging the notice. A notice of Detained goods was also issued to the proprietor of the trademark Nike Innovate C.V (hereinafter referred to as Nike), on June 23, 2021. Nike then issued a Notice of objection on July 26, 2021. On July 29, 2021 the defendant served the claimant a Notice of Seizure pursuant to section 109(2) of the Trademark Act. The period limited by the notice for Nike to institute legal action against the claimants having thereafter expired without such claim having been filed, the claimants wrote to the defendant demanding the return of the goods. By notice of August 23, 2021 the defendant purported to extend the time for Nike to institute proceedings to August 27, 2021. The latter notice was dated August 11, 2021, the request for the extension having been made on August 8, 2021.
This claim is one of a challenge to the validity of the extension of time issued by the defendant. The challenge therefore, is also one of wrongful detention and seizure of the goods. The claimants are business partners in the business registered as New Choice Trading Company. All references to the claimant, in this case, are references to the claimants trading under the said business name. Nike was subsequently joined as an Interested party and has made submissions. It should be noted that Nike has since commenced legal action for infringement of trademark in relation to the shipment. The two relevant pieces of legislation are the Trade Marks Act No. 8 of 2015 (the Act) and the Trademark Regulations 2020 (the regulations).
The Act and Regulations provide a comprehensive scheme for the seizure of goods at first instance and the subsequent detention thereof. The two are not the same under the Act. Section 109 provides for the detention of goods which a Customs Officer reasonably suspects to be counterfeit goods in relation to a registered trademark. Seizure relates to the act of confiscating the goods specifically under section 97 of the Act (discussed below). See also the definition of seizure under section 96(1). Section 109 reads:
109. (1) Notwithstanding section 97(4), an Officer may—
(a) detain any goods—
(i) that are imported into, or that are to be exported from, Trinidad and Tobago; and
(ii) that are not goods in transit; or
(b) examine any goods, including goods in transit, which he reasonably suspects are counterfeit goods in relation to a registered trade mark.
Sub-section (2) of 109 provides further for the service of a notice of detained goods on the importer and the proprietor of the registered trade mark. It reads:
(2) As soon as practicable after goods are detained under subsection (1)(a), the Officer shall give—
(a) to the importer, exporter or consignee, as the case may be, of the detained goods; and
(b) to the proprietor of the registered trade mark,
a written notice identifying the goods, stating that they have been detained and setting out the matters referred to in subsection (3).
Sub-section (3) of 109 bears particular relevance to this case in that it provides (in the case where the detained goods are not goods in transit but are imported into Trinidad and Tobago) for the registered proprietor to take certain steps within the prescribed period. These steps are namely that of giving written notice to the defendant pursuant to section 97 that it is the proprietor of the registered trade mark or licensee thereof, that the goods are infringing goods and supplying sufficient information to the defendant to identify the goods to enable the defendant to ascertain when and where the goods are imported or expected. Finally the notice should contain sufficient information to satisfy the defendant that the goods are infringing goods and an objection to the importation. Supporting documents and information are to be attached. The full section is set out as follows:
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97. (1) A person who is the proprietor or a licensee of a registered trade mark may give the Comptroller a written notice—
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(a) stating that he is—
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(i) the proprietor of the registered trade mark; or
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(ii) a licensee thereof having the power to give such a notice;
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(b) stating that goods which, in relation to the registered trade mark, are infringing goods, are expected to be imported;
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(c) providing sufficient information—
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(i) to identify the goods;
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(ii) to enable the Comptroller to ascertain when and where the goods are expected to be imported; and
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(iii) to satisfy the Comptroller that the goods are infringing goods; and
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(d) stating that he objects to such importation.
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(2) A notice given under subsection (1) shall be supported by such documents and information, and accompanied by such fee, as may be prescribed.
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(3) A notice under subsection (1) shall remain in force until the end of the period of sixty days commencing on the day on which the notice was given, unless it is withdrawn, before the end of that period, by letter given to the Comptroller—
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(a) by the licensee, if the person giving the notice is a licensee of the registered trade mark and he has power to withdraw the notice; or
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(b) by the proprietor of the registered trade mark in any other case.
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(4) If—
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(a) a notice has been given under this section in respect of a registered trade mark;
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(b) the notice has not lapsed or been withdrawn; and
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(c) a person imports goods, not being goods in transit, which bear a sign that, or whose packaging bears a sign that, in the opinion of the Comptroller is identical with or similar to the registered trade mark in question,
the Comptroller may seize the goods.
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Section 109 (3) (a) reads:
(3) The detained goods shall be released to the importer, exporter or consignee, as the case may be, of the goods, unless, within the prescribed period, the proprietor of the registered trade mark—
(a) in the case of goods that are imported into Trinidad and Tobago and that are not goods in transit—
(i) gives the Comptroller a written notice referred to in section 97(1);
(ii) submits the documents and information, and pays the fee referred to in section 97(2) to the Comptroller; and
(iii) deposits with the Comptroller the sum of money referred to in section 98(a) or gives the security referred to in section 98(b); or…
On the plain and ordinary interpretation of section 97, it is pellucid that the section applies primarily to seizure, namely the case where the goods have not yet been imported into Trinidad and Tobago but in respect of which the registered proprietor is in possession of probative information that such goods are to be imported. It follows that in such circumstances, the section must be followed so as to satisfy the defendant not only of the identity of the goods but also of the fact that the goods infringe on the trademark. This, of course, must be for a good reason. That reason is a common sense one in that once so satisfied the defendant is then put on enquiry as to ensure that the goods are seized (not detained) upon subsequent entry into Trinidad and Tobago. Section 97 when applied on its own, therefore, provides for pre-entry steps to be taken so as to effect a seizure upon entry.
The position in relation to section 109(3) is however markedly different although the section is linked to section 97. Section 109(3) treats solely with the issue of detention, which comes after seizure. It provides for release after detention but uses sections 97(1) and 97(2) as conditions the fulfilment of which (taken with section 98) acts as a bar to release to the importer. But it must also be noted that section 109 applies to goods that have already been detained because of reasonable suspicion upon importation. Therein lies the fundamental difference between sections 97 and 109, the former being applicable to goods that are likely to be imported.
The reliance on section 97 by section 109(3) therefore means that in applying section 97, the context of its usage in section 109(3) must be considered. In other words, the notice to be given under section 97, when given pursuant to section 109(3) will not reasonably be expected to contain all the matters required under section 97 as if notice was being given solely pursuant to that section. This is so as the circumstances under section 109(3) are different the goods having already been imported into Trinidad and Tobago. Therefore, in the present case, for the detention to have been continued after the prescribed period under section 109(3), the notice required under section 97(1) would have included that of Nike identifying that it is either a proprietor or licensee, that the goods imported are infringing goods, and...
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