Case Details
- Citation: [2015] SGHCR 15
- Case Title: Louis Vuitton Malletier v Cuffz (Singapore) Pte Ltd
- Court: High Court of the Republic of Singapore
- Decision Date: 20 July 2015
- Case Number: Suit No 560 of 2014 (HC/AD 9/2015)
- Coram: Edwin San AR
- Judges: Edwin San AR
- Plaintiff/Applicant: Louis Vuitton Malletier
- Defendant/Respondent: Cuffz (Singapore) Pte Ltd
- Legal Area: Trade Marks — Infringement; Assessment of Damages; Statutory Damages
- Procedural Posture: Assessment of damages following liability found at summary judgment
- Counsel for Plaintiff: Anthony Soh, Regina Quek and Shawn Poon (One Legal LLC)
- Counsel for Defendant: Defendant absent
- Key Statutory Provisions: Trade Marks Act (Cap 332, 2005 Rev Ed), ss 27(1), 31(5)(c), 31(6)
- Judgment Length: 11 pages, 5,532 words
- Trade Mark at Issue: T9403807I (“Epi Mark”), Class 18
- Goods at Issue: Leather wallets (vertical and horizontal bi-fold wallets)
- Remedy Sought at Assessment: Statutory damages under s 31(5)(c), maximum $100,000 per type of goods, subject to aggregate cap
- Cases Cited: [2014] SGHCR 11; [2015] SGHCR 15
Summary
Louis Vuitton Malletier v Cuffz (Singapore) Pte Ltd concerned trade mark infringement involving the well-known “Epi” pattern used by Louis Vuitton on leather goods. The High Court had earlier found that Cuffz infringed Louis Vuitton’s registered trade mark by using a sign identical or similar to the Epi Mark on leather wallets without consent. The present decision, delivered by Edwin San AR on 20 July 2015, addressed the subsequent assessment of damages, focusing on the statutory damages regime applicable where the infringement involves the use of a counterfeit trade mark.
At the damages assessment hearing, the defendant did not appear and had been described as evasive and uncooperative during the proceedings. Louis Vuitton elected to claim statutory damages under s 31(5)(c) of the Trade Marks Act. The Court’s analysis centred on the statutory factors in s 31(6)—including the flagrancy of the infringement, likely loss, benefit to the defendant, and the need for deterrence—together with the legislative rationale for statutory damages as a practical alternative where proving actual loss or profits can be difficult.
What Were the Facts of This Case?
Louis Vuitton Malletier (“LV”) is a French company within the LVMH Group, operating five stores in Singapore and manufacturing luxury fashion goods, including leather products such as wallets, belts, footwear and handbags. LV owns the registered trade mark T9403807I, referred to as the “Epi Mark”, which was registered in Singapore on 15 January 1999 under Class 18. The Epi Mark is distinctive: it consists of interleaving ridges and valleys across the whole or predominant surface of the product, with ridges in a darker shade and valleys in a lighter shade, producing an immediately recognisable two-tone effect. LV uses the Epi Mark on products in its Epi Line, including leather wallets.
The defendant, Cuffz (Singapore) Pte Ltd (“Cuffz”), is a Singapore-incorporated company established in 2011. At the material time, it operated a retail outlet named “Cuffz” at Raffles City Shopping Centre, where it sold fashion accessories, including wallets. LV engaged a private investigator who visited the defendant’s outlet on 17 January 2014 and purchased a vertical bi-fold wallet bearing a mark identical or similar to the Epi Mark for $75.90 (the “Test Purchase”). The investigator also observed two other similar wallets displayed on a stand near the entrance of the outlet.
On 5 February 2014, LV’s solicitors filed a Magistrate’s Complaint and obtained a search warrant. On 6 February 2014, officers from the Intellectual Property Rights Branch (“IPRB”) of the Criminal Investigation Department conducted a raid on Cuffz’s outlet. Two wallets—one vertical bi-fold and one horizontal bi-fold—both bearing a mark identical or similar to the Epi Mark, were seized. These seized items, together with the wallet purchased in the Test Purchase, were treated collectively as the “seized goods”.
LV commenced the civil action by filing a writ of summons on 27 May 2014. Cuffz entered appearance on 3 June 2014 but filed a defence described as “thin”, consisting largely of bare denials. The defendant’s solicitors discharged themselves on 18 July 2014. LV then applied for summary judgment (summons 3924/2014), which was heard on 2 October 2014 without Cuffz appearing. The High Court found infringement and, importantly for the later damages assessment, found that the infringing sign constituted a counterfeit trade mark within the meaning of s 3(6) of the Trade Marks Act, entitling LV to statutory damages under s 31(5)(c).
What Were the Key Legal Issues?
The principal legal issue at this stage was not liability but quantum: how statutory damages should be assessed under the Trade Marks Act where infringement involves the use of a counterfeit trade mark. Specifically, the Court had to determine the appropriate amount within the statutory framework, including how to apply the caps and how to treat the “type of goods” in relation to which the counterfeit trade mark had been used.
A second issue concerned the evidential and procedural context. Cuffz failed to appear at the assessment hearing and had not complied with the earlier disclosure order requiring details of suppliers and the dates and quantities of infringing goods. The Court therefore had to decide how to proceed on the available evidence, and how the defendant’s conduct should influence the statutory factors—particularly flagrancy, deterrence, and any benefit accrued to the defendant.
How Did the Court Analyse the Issues?
The Court began by setting out the statutory damages regime. Section 31(5) of the Trade Marks Act provides that, in an action for infringement of a registered trade mark where the infringement involves the use of a counterfeit trade mark in relation to goods or services, the plaintiff is entitled, at its election, to one of three remedies: (a) damages and an account of profits not already taken into account; (b) an account of profits; or (c) statutory damages. Under s 31(5)(c), statutory damages are capped at not exceeding $100,000 for each type of goods or service in relation to which the counterfeit trade mark has been used, and not exceeding $1 million in aggregate unless the plaintiff proves actual loss exceeding $1 million.
Section 31(6) then directs the Court on how to award statutory damages. The Court “shall have regard to” five non-exhaustive factors: (a) the flagrancy of the infringement; (b) any loss suffered or likely to be suffered by the plaintiff; (c) any benefit shown to have accrued to the defendant by reason of the infringement; (d) the need to deter other similar instances of infringement; and (e) all other relevant matters. The Court’s analysis therefore required a compensatory and deterrent-oriented assessment rather than a purely punitive one.
In interpreting the rationale and purpose of statutory damages, the Court referred to the legislative history of the 2004 amendments introducing the statutory damages regime for counterfeit trade mark infringements. The Minister for Law explained in the Parliamentary debates that statutory damages were designed to complement the traditional process of assessing damages and accounts of profits. The rationale was practical: in some cases, it may be difficult to prove actual losses or obtain an account of profits because infringers may not keep clear records of sales. Accordingly, statutory damages provide an alternative mechanism for compensation and deterrence, with the Court assessing quantum on compensatory principles guided by s 31(6).
The Court also drew a parallel with the later introduction of statutory damages for copyright infringement, where the Parliamentary debates similarly emphasised that statutory damages should be assessed based on evidence and circumstances, and that there is no requirement to prove actual or foreseeable loss once the plaintiff elects statutory damages. The legislative approach thus supports a structured discretion: the Court must consider the statutory factors, but it is not confined to a strict formula tied only to proven loss.
Applying these principles to the facts, the Court noted that LV had elected statutory damages under s 31(5)(c) and sought the maximum amount of $100,000 permissible under that provision. This election was consistent with the earlier finding that the infringement involved a counterfeit trade mark. The Court also took into account the defendant’s procedural posture: Cuffz failed to appear at the assessment hearing and had been described as evasive and uncooperative throughout the proceedings. In particular, Cuffz had failed to comply with the disclosure order requiring details of suppliers and the dates and quantities of infringing goods. This non-compliance was relevant to the Court’s assessment of flagrancy, deterrence, and the likelihood of benefit to the defendant, because it deprived LV of information that would otherwise assist in quantifying loss or profits.
Although the extracted judgment text provided is truncated after the discussion of copyright statutory damages provisions, the reasoning framework is clear from the portions reproduced: the Court treated statutory damages as a remedy tailored to counterfeit trade mark cases, where proof of actual loss or profits may be difficult. The Court’s task was therefore to determine an appropriate statutory quantum having regard to the statutory factors, the nature of the infringement (counterfeit trade mark used on leather wallets), and the defendant’s conduct (including absence and failure to disclose). In such circumstances, the Court’s approach would necessarily lean towards ensuring that the award both compensates the trade mark owner and deters similar conduct.
What Was the Outcome?
Following the earlier summary judgment on liability and the finding that the infringing sign was a counterfeit trade mark, the Court proceeded to assess damages on the basis of LV’s election for statutory damages under s 31(5)(c) of the Trade Marks Act. The plaintiff sought the maximum statutory amount of $100,000 for the relevant type of goods, and the Court’s determination was made within the statutory caps and guided by s 31(6).
Practically, the outcome reinforced that where counterfeit trade marks are used in relation to goods, the trade mark owner can obtain statutory damages without having to prove actual loss or profits, and the Court will take into account the infringement’s flagrancy and the need for deterrence—especially where the defendant does not engage with the proceedings or fails to comply with disclosure obligations.
Why Does This Case Matter?
This decision is significant for trade mark practitioners because it illustrates how Singapore courts apply the statutory damages regime for counterfeit trade mark infringements in practice. The case confirms that statutory damages are not merely theoretical: they are available where the infringement involves a counterfeit trade mark, and the Court will assess quantum by reference to the structured factors in s 31(6). For rights holders, this reduces the evidential burden associated with proving actual loss or obtaining an account of profits, particularly where infringers do not keep records.
For defendants and counsel, the case also highlights litigation risk. A defendant’s absence at the assessment hearing and failure to comply with disclosure orders can materially affect the Court’s assessment of relevant factors, including flagrancy and the likelihood of benefit. While statutory damages are discretionary, the statutory framework and the defendant’s conduct can push the award towards the upper end of the statutory range.
From a precedent and strategy perspective, the case is useful when advising on (i) whether to elect statutory damages; (ii) how to frame evidence on flagrancy, likely loss, and deterrence; and (iii) how to treat the “type of goods” for the purpose of the $100,000 per type cap. It also demonstrates the Court’s willingness to draw on legislative history to understand the remedial purpose of statutory damages as a complement to compensatory damages and profit-based remedies.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), ss 27(1), 31(5)(c), 31(6), and s 3(6) (definition of counterfeit trade mark)
- Trade Marks Act (Singapore) (general reference in judgment to the statutory damages framework)
- Copyright Act (Singapore) (for comparative legislative rationale on statutory damages)
- Australian Copyright Act (referenced in the judgment as part of the broader discussion of statutory damages regimes)
Cases Cited
- [2014] SGHCR 11
- [2015] SGHCR 15
Source Documents
This article analyses [2015] SGHCR 15 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.