Legality of upcycled products: A Singapore perspective

What is green and quickly turns red? A frog in a blender, of course! But also upcycled products which cause brand owners to see red. Upcycled products are oft-lauded from a sustainability viewpoint. However, the increasing popularity of such products have gotten brand owners up in arms. Against this backdrop and in light of the Singapore High Court’s recent decision in Louis Vuitton Malletier v Ng Hoe Seng [2025] SGHC 122 (“LVM”) that upcycled products derived from authentic Louis Vuitton products could be counterfeit products, it is timely to consider whether upcycled products could also be infringing products under Singapore trade mark laws. 

Upcycled products - Not always counterfeits

First things first, upcycling is most often used to refer to either the use of individual components of original products to create new products, or the reinterpretation of original products by incorporating new elements. This is great for the environment but can be problematic for the brand owners when upcycled products bearing their marks and brand insignias are placed on the market. 

In LVM, the defendant’s upcycled products were found to be counterfeits because LV’s marks had been applied to those products in a fashion similar to how LV applied those marks to its own products, thereby giving rise to the false representation that the defendant’s products were LV’s products. 

The court also found that it would be obvious to consumers that they were not in fact purchasing genuine LV products. However, as the factors contributing to this finding (mainly, the existence of a ‘disclaimer’ on the defendant’s Instagram page, and the price disparity between the goods) were extraneous to how the goods were represented, they were irrelevant for deciding whether there was a false representation. For a fuller discussion of the case, see here.

Notably, the court observed in obiter (with reference to the case of Louis Vuitton Malletier v Cuffz (Singapore) Pte Ltd [2015] SGHCR 15) that where a defendant had applied not only the claimant’s mark but also its own distinctive sign to its products, there was arguably no false representation so that those products were not counterfeit.

Indeed, there could presumably be other instances where it is apparent from the way the upcycled goods appear that they are not the genuine branded products - in which case they may not be found to be counterfeits. If so, how can brand owners put a lid on such activity?

Can upcycled products be infringing products?

If the mark appearing on the product is registered in Singapore, the most obvious causes of action would be for trade mark infringement based on (i) use of an identical mark in relation to identical goods (under section 27(1) of the Singapore Trade Marks Act 1998 (“TMA”)); and/or (ii) use of an identical or similar mark in relation to identical or similar goods, where there exists a likelihood of confusion (under section 27(2) TMA). 

Additionally, regardless of whether the mark is not registered in Singapore, it is possible to mix things up by including a claim for passing off - which is a common law tort premised on misrepresentation of the source of the defendant’s product, or of a business connection between the parties.

As LV illustrates, with upcycled products, consumers are oftentimes well aware that they are not getting the real deal – whether this is because of extraneous factors such as how the products are advertised or priced, apparent from the goods themselves, or because the upcycled products were customer-requested creations to begin with (which was the case in some of the upcycling fights elsewhere). In these scenarios, claims under section 27(2) TMA or for passing off may prove leaky, given the requirement to prove a likelihood of confusion or misrepresentation.

The approach to deciding if there is a likelihood of confusion for a section 27(2) TMA claim is the same as that for deciding if there is a false representation for counterfeits - only factors inherent in the way the goods are represented are relevant. On the other hand, in deciding whether there is misrepresentation for a passing off claim, all relevant factors will be taken into account. As such, if there are extraneous factors which could muddy the waters insofar as confusion is concerned, it could be easier for a brand owner to succeed on a section 27(2) TMA claim than on passing off.

If it is obvious from an inspection of the goods that they are not the genuine branded products, section 27(1) TMA (for which a likelihood of confusion is immaterial) could be relied on as a wildcard - provided that the mark is registered in Singapore, and the upcycled goods are identical to the goods covered by the trade mark registration.

Colour me exhausted (or not)

The success of a trade mark infringement and/or passing off claim is, of course, subject to the defendant’s ability to rely on any available defences. A defence that is commonly invoked by the defendants in the upcycling cases is that the brand owner’s rights had been ‘exhausted’ from the time it first put the original products on the market.

The principle of exhaustion of rights (a.k.a., the first sale doctrine in the US) is a common law principle which, broadly speaking, dictates that an IP holder’s rights are exhausted after the first authorised sale of a product embodying that IP, so that he is no longer entitled to control subsequent sales or distribution of that product.

In Singapore, this principle in the context of trade mark rights has been codified in section 29(1) TMA, which provides that once the original branded goods have been put on the market - whether in Singapore or elsewhere - by the brand owner or with his consent, conditional or otherwise, the brand owner is not entitled to assert his rights to prevent or control the on-sale of, or further dealings with, those goods. This defence is most often relied upon by parallel importers, or providers of repair or restoration services.

This is subject to section 29(2) TMA, which provides for an exception where (i) the condition of the goods has been changed or impaired after they were put on the market; and (ii) the use of the trade mark in relation to those goods has caused dilution in an unfair manner of the distinctive character of the registered trade mark. These criteria are conjunctive.

The first criterion is easily satisfied in the case of upcycled goods which are, by definition, are new or modified products created from the original goods. As for the second criterion, “dilution” is defined in section 2(1) TMA to mean “the lessening of the capacity of [a] trade mark to identify and distinguish goods or services, regardless of whether there is (a) any competition between the [trade mark owner] and any other party; or (b) any likelihood of confusion on the part of the public”. 

It is trite law that dilution can occur by blurring or tarnishing. Depending on the quality of the upcycled goods, there may or may not be dilution by tarnishing, but there could conceivably be dilution by blurring so long as use of the mark on the upcycled goods gives rise in the minds of consumers to unwanted association of the mark with the defendant. 

However, a finding of dilution is not by itself sufficient as section 29(2) TMA requires a showing of dilution “in an unfair manner”. This will likely involve an examination of all the circumstances of the case – including, potentially, the works performed by the defendant, the way the goods appeared, and how the defendant had marketed its products, to determine where the equities of the matter lay.

In a nutshell

There are a number of different blades in the arsenal of a brand owner who is keen to go after upcycling activity. As the availability of a number of these depend on the existence – and the scope - of trade mark registrations, brand owners who have armed themselves with registrations will have a sharper strategy.

Separately, there are important differences between Singapore laws and EU / UK / US laws as regards the factors relevant to the determination of consumer confusion for trade mark infringement, or the applicability of the exhaustion defence. This limits the utility of relying on the approaches and decisions elsewhere as guidance, and a fact-sensitive enquiry applying Singapore’s unique trade mark laws will be required to shed light the outcome of any equivalent or similar cases if fought in Singapore.

This article is produced by our Singapore office, Bird & Bird ATMD LLP. It does not constitute legal advice and is intended to provide general information only. Information in this article is accurate as of 4 August 2025.