In the Bag: Singapore High Court awards statutory damages of S$200,000 against seller of “upcycled” Louis Vuitton products

In cases involving the counterfeiting of trade marks in Singapore, the claimant can elect to receive statutory damages instead of the traditional remedies of damages and an account of profits. This option is particularly useful when the defendant is absent from the proceedings, making it more difficult for the claimant to prove its losses. In a rare judgment on the subject, the Singapore High Court in Louis Vuitton Malletier v Ng Hoe Seng [2025] SGHC 122 has provided clarity on the test for deciding if there was use of a counterfeit trade mark and how statutory damages should be quantified.

Brief facts of the case

The defendant operated an Instagram store offering mobile phone cases, watch straps, wallets etc. which were said to be “upcycled” goods derived from authentic Louis Vuitton (“LV”) products. LV was awarded default judgment (owing to the defendant’s non-appearance) and elected to receive statutory damages. The High Court therefore had to decide (i) whether there was use of a counterfeit trade mark and, if so, (ii) the appropriate quantum of statutory damages to be awarded.

Use of a counterfeit trade mark

“Counterfeit trade mark” is defined in section 3(6) of the Singapore Trade Marks Act 1998 (“the Act”) to mean a sign that is: 

1. identical with or so nearly resembling a registered trade mark as to be calculated to deceive; and 
2. applied to goods or services without the express or implied consent (conditional or otherwise) of the trade mark owner, to falsely represent the goods or services to be the genuine goods or actual services of the trade mark owner or its licensee.

For the first requirement, the High Court held that: 

• It is unnecessary to show a subjective intention to mislead. Instead, an intention to deceive can be imputed by virtue of the degree of resemblance between the registered trade mark and the sign used by the defendant.
• Further, based on the definition, extraneous factors (such as disclaimers) are irrelevant when determining whether the sign is “calculated to deceive”. 

This approach would appear to favour trade mark owners, who will only need to satisfy the court that the requisite degree of resemblance between the mark and the sign has been met. The court provided limited guidance as to the relevant threshold before an intention to deceive will be imputed on the defendant. However, given that the similarity of marks is ultimately a matter of impression, the inquiry will understandably have to be a factual exercise that will derive little benefit from prescribed tests.

As for the second requirement, the High Court held that (where a lack of consent is uncontroversial) this inquiry “is limited to determining whether a false representation arises from the application of the defendant’s mark”. Notably, only factors inherent in the way goods were represented are to be taken into account in the inquiry.

This requirement was also found to be met in this case. The court observed that the defendant had applied LV’s marks to his goods in a manner similar to how the marks were applied to genuine LV goods, and that this strengthened the false representation perpetrated on members of the public by use of the marks. 

In contrast, where a defendant had not only applied the claimant’s marks to the offending goods but also its own distinctive sign / logo, as was the case in Louis Vuitton Malletier v Cuffz (Singapore) Pte Ltd [2015] SGHCR 15, the court observed that it would be arguable that a false representation had not arisen. 

Notably, in a later part of its judgment (concerning statutory damages), the court observed that it would be obvious to a discerning customer that the defendant’s products are counterfeits given their price disparity from the genuine products. This confirms that a false representation can arise even where customers are not in fact misled into believing that the defendant’s products are the real deal (e.g., in the case of low-quality fakes). 

Finally, the court noted that the use of LV’s material in the offending goods to produce so-called “upcycled” goods do not prevent the goods from being counterfeit goods. Provided that such use was without LV’s authorisation, those goods become the defendant’s own and cease to be genuine goods.

Guidance on assessment of statutory damages

There are four non-exhaustive factors listed in section 31(6) of the Act which the court awarding statutory damages is to have regard to – including, flagrancy of the infringement; any loss that the claimant has suffered or is likely to suffer by reason of the infringement; any benefit shown to have accrued to the defendant by reason of the infringement; and the need to deter other similar instances of infringement. The High Court’s judgment provided useful guidance on how these factors will be applied. 

Notably, LV had claimed damages in the sum of S$2,900,000 based, amongst other things, on the number of counterfeit trade marks that had been applied to the defendant’s goods. However, the court held that while the types of counterfeit goods are properly taken into account when assessing the flagrancy of infringement, the number of counterfeit trade marks used is of little relevance as that is ultimately dependent on how the claimant used its marks on its authentic goods.

The court also cautioned that the assessment of statutory damages is not an exercise that can be carried out with mathematical precision, especially given that the Act envisages a multi-factorial enquiry, stressing the principle of proportionality.

Ultimately, the court adopted a nuanced treatment of the various factors under section 31(6) of the Act. The (i) relatively confined scope of the infringing activities and the (ii) limited damage to the goodwill attached to LV’s marks given the small scale of the defendant’s operations were balanced against the (iii) need to deter infringement in this technological age where infringers can set up store, reach a wider audience, and promote their products with relative ease. Consequently, the High Court held that it was appropriate, on the facts of this case, to award statutory damages of S$200,000.

This article is produced by our Singapore office, Bird & Bird ATMD LLP. It does not constitute as legal advice and is intended to provide general information only. Information in this article is accurate as of 23 July 2025.