The High Court’s recent ruling in Louis Vuitton Malletier v Ng Hoe Seng has established a framework for calculating statutory damages in Singapore. The case, involving a luxury brand and an online seller accused of counterfeiting, highlights the intricate interplay between brand protection and proportional remedies.
Background: A High-Profile Infringement Case
Louis Vuitton Malletier, a global luxury retailer, sued EMCASE SG, a Singapore-based entity accused of selling counterfeit goods bearing its trademarks. The defendant operated an Instagram store, marketing products as “upcycled” versions of Louis Vuit, items. Through trap purchases, the claimant alleged 121 instances of trademark infringement, spanning nine product categories.
The defendant’s absence and lack of representation led to a default judgment. The court then assessed whether to award statutory damages, general compensatory damages, or an account of profits. Louis Vuitton opted for statutory damages, seeking up to SGD 2.9 million, but the court’s final award of SGD 200,000 underscores the nuanced approach required.
Statutory Damages: A Singapore-Specific Framework
Under Singapore’s Trade Marks Act (TMA), statutory damages are available under Section 31(5)(c). The law allows claimants to choose between statutory damages, general damages, or an account of profits. Key provisions include:
- Per-Product Limits: Statutory damages are capped at SGD 100,000 per type of goods or service, with a global ceiling of SGD 1 million unless actual loss exceeds this threshold.
- Factors for Assessment: Courts consider the severity of the infringement, the claimant’s loss, the defendant’s benefit, and the need for deterrence.
The court in Ng Hoe Seng rejected attempts to apply foreign models, such as Canada’s “judicial tariff” system or the U.S. Lanham Act’s per-mark approach. Instead, it emphasized the TMA’s focus on proportional remedies.
Key Takeaways: A Middle Ground in Trademark Law
The ruling reflects Singapore’s deliberate balance between robust brand protection and equitable outcomes. Notable points include:
- No Direct Adoption of Foreign Models: The court dismissed the Canadian tariff system and U.S. per-mark calculations, noting structural differences in legislative intent.
- Severity of Infringement: The defendant’s actions - selling counterfeit goods online, falsely claiming authenticity, and evading court orders - were deemed highly severe.
- Limited Actual Loss: Luxury goods are rarely substituted for genuine products, so the primary harm was to brand reputation, not lost sales.
- Deterrence as a Priority: The court stressed the need to deter online counterfeiting, which thrives on e-commerce platforms and digital anonymity.
Strategic Implications for Brand Owners
The Ng Hoe Seng decision offers guidance for businesses navigating trademark disputes:
- Evidence Matters: Screenshots, trap purchases, and price comparisons are crucial to support claims of severity, loss, and deterrence.
- Tailor Your Approach: Statutory damages may suit cases with defaulting or financially strained defendants, while general damages or profits are better for cases with clear evidence of harm.
- Avoid Overreliance on Foreign Models: Singapore’s framework is distinct, and courts may reject attempts to apply external precedents.
The ruling also highlights the importance of proactive measures. Advanced technologies, including custom AI and machine learning algorithms, enable continuous monitoring across 50+ countries. This ensures brands are never caught off guard by counterfeit activity or conflicting trademarks.
For businesses, the lesson is clear: trademark protection requires vigilance. Whether through legal action or preventive strategies, the goal is to safeguard brand value. Tools like IP Defender provide the necessary support to navigate these challenges effectively.