LOUIS VUITTON MALLETIER v Ng Hoe Seng (formerly trading as EMCASE SG)

Facts

Louis Vuitton Malletier, the French owner of the Louis Vuitton marks, found in or around July 2022 that Ng Hoe Seng, sole proprietor of EMCASE SG, was advertising and selling phone cases, watch straps, purses, key cases, card holders and similar goods bearing signs identical to its registered marks through an Instagram page, describing them as upcycled from authentic products. After trap purchases and a cease-and-desist letter of 21 March 2023, EMCASE ceased registration and its page went inactive, but the defendant began selling the same goods through a new page, "emcrafts_sg".

The claimant sued for infringement in Originating Claim No 531 of 2023 and obtained default judgment on 30 November 2023 in HC/JUD 486/2023, which included an injunction. The defendant never took part. In Assessment of Damages No 9 of 2024, the claimant elected statutory damages under s 31(5)(c) of the Trade Marks Act 1998, arguing from a Canadian scale for counterfeit cases that $4,840,000.00 was warranted and that, on its reading of the statutory caps, $2,900,000.00 should be awarded.

Issues

1. Whether the defendant used counterfeit trade marks so that statutory damages were available, despite calling the goods upcycled
2. Whether statutory damages under the Act are purely compensatory or also deterrent, and whether the Canadian scale should be adopted
3. Whether the statutory caps apply per mark used or per type of goods
4. What quantum was proportionate under the s 31(6) factors

Holding

The High Court allowed the claim in part, awarding the claimant statutory damages of $200,000.00 rather than the sum it sought, and awarded costs to the claimant.

Reasoning

The court held that a counterfeit mark is more than an infringing one. Under s 3(6), "calculated to deceive" means more than likely to confuse, but no subjective intent need be proved: it is enough that the resemblance is so close that an intent to mislead is the inexorable inference. The defendant used essentially exact copies, without consent, in a way that falsely presented the goods as genuine. Applying the reasoning in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911, a disclaimer such as "upcycled" is an extraneous factor, and using some of the claimant's material did not make the goods the claimant's.

The court read s 31(6) as making deterrence a factor, so statutory damages are not purely compensatory; the text prevailed over the minister's speech, following Tan Cheng Bock v Attorney-General [2017] 2 SLR 850. It rejected the Canadian scale, built for purely compensatory awards in a system without caps, which would make loss pre-eminent and easily burst the statutory limit, though its three tiers of operation helped gauge flagrancy.

On the caps, unlike the US Lanham Act the Singapore provision does not say per counterfeit mark, and the $1 million aggregate applies as it stands, so the maximum here was $900,000.00 for nine types of goods.

On the factors, the infringement was highly flagrant: wide in range, promoted online to large followings, labelled "LV", touted as authentic, with some supposedly upcycled goods not derived from genuine products at all. But the defendant was a retailer who made goods for his own shop, not a distributor. Lost sales were unlikely given the price gap, and the loss of exclusivity had to be kept in perspective, though investigative costs of $2,571 were accepted. He benefited by selling at far higher prices than unbranded equivalents. Deterrence was acute: he opened a new page after the warning, kept selling after the injunction, made the page private, and stayed away from the proceedings. Weighing comparable awards, including Converse Inc v Ramesh Ramchandani and another [2014] SGHCR 11 and Louis Vuitton Malletier v Cuffz (Singapore) Pte Ltd [2015] SGHCR 15, the court found the amount sought grossly excessive.

From the judgment