This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.
Session 7: Calculation of Damages in Civil Proceedings
High Court of Singapore [2025]: Louis Vuitton Malletier v Ng Hoe Seng (formerly trading as EMCASE SG), [2025] SGHC 122
Date of judgment: July 2, 2025
Issuing authority: General Division of the High Court of Singapore
Level of the issuing authority: First Instance
Type of procedure: Judicial (Civil)
Subject matter: Trademarks
Plaintiff: Louis Vuitton Malletier
Defendant: Ng Hoe Seng (formerly trading as EMCASE SG)
Keywords: Assessment of damages; Statutory damages for trademark infringement
Basic facts: The claimant was a well-known company incorporated in France. It was the registered proprietor of several trademarks in Singapore (the “Registered Marks”). The defendant was a Singapore citizen who was formerly the sole proprietor of EMCASE SG. He operated an online store through an Instagram page selling wallets, mobile phone cases, watch straps, pouches and other accessories. Many of the items sold by the defendant featured signs identical to the Registered Marks (“Offending Goods”).
The claimant commenced action against the defendant for trademark infringement and obtained a default judgment against the defendant. Following the default judgment, the claimant sought statutory damages of $2,900,000 under s 31(5)(c) of the Trade Marks Act 1998 (2020 Rev Ed) (the “TMA”) or alternatively, an award of general compensatory damages. The defendant was absent and unrepresented throughout the proceedings.
Held: The High Court held that the claimant was entitled to statutory damages of $200,000.
Relevant holdings in relation to Calculation of Damages in Civil Proceedings:
The remedy of statutory damages was meant to complement the existing process of assessing damages because it might be difficult to prove actual losses or obtain an account of profits in certain cases. Statutory damages, whilst being compensatory in nature, would obviate the need for a claimant to prove its actual or foreseeable losses as a result of the infringing activity.
Section 31(5)(c) of the TMA provided that in any action for infringement of a registered trade mark where the infringement involved the use of a counterfeit trade mark in relation to goods or services, the claimant was entitled, at its election, to statutory damages not exceeding $100,000 for each type of goods or service in relation to which the counterfeit trade mark had been used (s 31(5)(c)(i)), and not exceeding in the aggregate $1 million, unless the claimant proved that its actual loss from such infringement exceeded $1 million (s 35(5)(c)(ii)).
Section 31(6) of the TMA listed the factors which the court was to have regard to. These were:
(a) the flagrancy of the infringement of the registered trade mark;
(b) any loss that the claimant had suffered or was likely to suffer by reason of the infringement;
(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 plain wording of the TMA indicated that statutory damages under s 31(5) were not meant to be purely compensatory in nature. Section 31(6)(d) showed that Parliament intended for deterrence to be a relevant consideration. Section 31(6)(e) also contemplated a certain degree of latitude being afforded to the courts when conducting the assessment of statutory damages. The loss suffered by the claimant, encapsulated in s 31(6)(b), was only one out of many factors provided for in s 31(6).
The statutory limits in s 31(5)(c) applied to each type of goods or service. They did not apply on a per mark basis as such an interpretation was not supported by the wording of the TMA. From a policy perspective, it would also not make sense for the statutory limits to depend on the number of counterfeit trademarks used because that was not determinative of the egregiousness of the defendant’s infringement and/or the loss suffered by the claimant.
In the present case, the maximum amount of damages that could have been awarded was $900,000, as the counterfeit trademarks had been applied to nine different types of goods and this was lower than the aggregate limit of $1 million. The court found that the defendant’s infringement was highly flagrant as it was wide in breadth. The marks used by the defendant were also applied to the Offending Goods in a manner that was similar to the way they were applied to the claimant’s goods. The claimant was likely to suffer damage to its exclusivity, reputation and goodwill. However, it was doubtful that the claimant lost sales in any significant way as counterfeit goods were usually not substitutable with genuine goods. Nevertheless, the defendant was able to leverage the Registered Marks to sell the Offending Goods at far higher prices and he would have been able to freeride off the quality associated with the Registered Marks to enable the Offending Goods to gain traction. The need for general deterrence had arisen from the ease with which technology had made it easier for infringing acts to be carried out.
Relevant legislation: Sections 31(5)–(6) of the TMA