Statutory Damages for Counterfeit Marks: The Approach in Singapore after Louis Vuitton v Ng Hoe Seng

Introduction

On 2 July 2025, the General Division of the High Court delivered a key judgment on the issue of statutory damages in Louis Vuitton Malletier v Ng Hoe Seng (formerly trading as EMCASE SG) [2025] SGHC 122 ("Ng Hoe Seng"). Before Ng Hoe Seng, there were only two reported decisions by the High Court Registry on statutory damages under Sections 31(5)-(6) of the Trade Marks Act 1998 (2020 Rev Ed) ("TMA") – Converse Inc v Ramesh Ramchandani and another [2014] SGHCR 11 ("Converse") and Louis Vuitton Malletier v Cuffz (Singapore) Pte Ltd [2015] SGHCR 15 ("Cuffz").

Ng Hoe Seng therefore represents the first full-length treatment of the  statutory damages regime in Singapore, providing a much-needed roadmap for brand owners and litigators. Besides grappling with divergent approaches offered by foreign jurisprudence, the Singapore Court addressed evidential and conceptual difficulties arising from the Defendant being unrepresented and absent and the Claimant being a luxury brand whose true loss is reputational in nature.

This article distils the facts, analyses the Court’s guidance on quantum, and contrasts the Singapore position with the US, Canada and the United Kingdom. 

Background Facts

The Claimant in Ng Hoe Seng was the well-known luxury retailer Louis Vuitton Malletier. The Defendant was a Singapore citizen and former sole proprietor trading under the name EMCASE SG. The Defendant operated an online store on Instagram, selling various goods and accessories purportedly ‘upcycled’ from the Claimant’s branded products.

Based on trap purchases made by the Claimant, it was alleged that the Defendant committed at least 121 instances of trade mark infringement through the sale of 72 individual products across 9 categories of goods, together with 49 other documented instances of advertisement, offering for sale, and/or exposure for sale of such goods. As the Defendant was absent and unrepresented throughout the proceedings, the Court granted default judgment in favor of the Claimant, entitling it to an inquiry as to damages or, at its option, an account of profits or statutory damages.

The Claimant elected to claim SGD 2.9 million in statutory damages (the ceiling it argued was available on a per-mark basis) or, alternatively, an award of general compensatory damages. This decision allowed the Claimant to circumvent difficulties in proving actual loss, especially given the lack of evidence arising from the Defendant’s non-participation in the proceedings.

The Statutory Damages Framework in Singapore

Section 31(5)(c) of the TMA provides:

In any 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 claimant is entitled, at the claimant’s election, to —

(c) statutory damages —

…

(i)  not exceeding $100,000 for each type of goods or service in relation to which the counterfeit trade mark has been used; and

(ii) not exceeding in the aggregate $1 million, unless the claimant proves that the claimant’s actual loss from such infringement exceeds $1 million.

Section 31(6) of the TMA sets out the factors to be taken into consideration when awarding statutory damages:

(a) the flagrancy of the infringement of the registered trade mark;

(b) any loss that the claimant has suffered or is 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 Court first determined that the Defendant’s marks were "counterfeit" within the meaning of s 3(6) of the TMA (importing a higher threshold of "calculated to deceive"), as opposed to merely "infringing" (which only required likelihood of confusion). The Defendant had used trade marks on the infringing products that were "so nearly resembling, if not identical with" the Claimant’s registered marks so as to be calculated to deceive, such that the only inference was that the Defendant intended to mislead members of the public into thinking the Defendant’s trade marks were the Claimant’s registered marks. It was not necessary to further prove that the Defendant had a subjective intention to deceive and the fact that the infringing products were described as ‘upcycled’ was an extraneous factor that did not detract from the finding that the Defendant had used counterfeit marks.

Having found that the Defendant used counterfeit marks, the Court went on to quantify the Claimant’s entitlement to statutory damages.

Key Findings on Quantum

No Tariff: Canadian Scale Incompatible with the TMA

Canadian trade mark legislation does not have a regime for statutory damages. Instead, as part of the assessment of general compensatory damages, Canadian Courts have developed a judicial tariff system, awarding set amounts per infringing activity depending on the nature of the defendant’s operations – CAD 3,000 per infringing activity for flea market operators; CAD 6,000 per infringing activity for retail operators; and CAD 24,000 per infringing activity for a manufacturer/importer/distributor ("Canadian Scale").

The Claimant relied heavily on the Canadian Scale to quantify statutory damages, arguing that it was entitled to SGD 4,840,000.

The Court held that the Canadian scale is inconsistent with the statutory damages regime in Singapore. While the Court declined to adopt the Canadian scale wholesale (describing it as "akin to transplanting the engine of a truck into a car"), it was observed that the principles behind the gradations in the Canadian scale offered useful guidance – the classification of the defendant’s scope of operations (flea markets, retail stores, manufacturing/import/distribution) could guide the Court in assessing the flagrancy of the defendant’s infringement under Section 31(6)(a) of the TMA.

Statutory Limits Apply Per Type of Goods, Not Per Mark

In the US, statutory damages are set out under the Lanham Act, allowing for a range of statutory damages per counterfeit mark per type of goods/services sold, which: provides for a minimum quantum of statutory damages to be awarded per mark for each type of goods/services; provides for a maximum quantum of statutory damages to be awarded per mark for each type of goods/services to be raised in the event of willful infringement; and does not prescribe a limit on the overall quantum of damages that can be awarded. The US approach is frequently punitive, and US Courts may draw adverse inferences against defaulting defendants.

The Claimant relied on the approach under the US Lanham Act, seeking an eye-catching SGD 2.9 million by multiplying the SGD 100,000 statutory limit by each registered mark used on each product type (nine types of infringing products × 29 counterfeit marks). 

The Court rejected this approach, noting differences between the legislative text and underlying policy of the Lanham Act and the TMA, and preferred a common sense approach to the interpretation of Section 31(5)(c) which tied the statutory limit to the types of infringing products. The statutory maximum therefore remained SGD 900,000 (nine types of infringing products), further subject to the global SGD 1 million ceiling. 

Application of Section 31(6) Factors

Returning to the approach under the TMA, considering each of the factors under Section 31(6) of the TMA, the Court found as follows:

• Flagrancy: The Defendant’s infringement was highly flagrant. The Defendant applied its counterfeit marks to the infringing products in a manner similar to how the Claimant would have applied its registered marks to its products. The Defendant conducted its infringing activity online, reaching a wide audience, and aggravating the situation with making and propagating claims that the infringing products were authentic (with evidence that the ‘upcycled’ materials for several infringing products did not even originate from the Claimant’s genuine products). In terms of his operations, the Defendant was regarded as a retailer (albeit "on the more flagrant end of the spectrum as far as retailers are concerned").
• The Claimant’s loss: The Court doubted that the Claimant suffered lost sales as knock-offs of luxury goods are usually not substitutable for genuine goods. Accordingly, the primary damage was to the Claimant’s exclusivity, reputation, and goodwill.
• The Defendant’s benefit: The Court referred to a comparison table setting out the prices for the Defendant’s infringing products against unbranded products sold by other online sellers on e-commerce platforms. This evidenced that the Defendant’s use of the counterfeit marks allowed him to sell the infringing products at a significant mark-up, all while free-riding on the quality associated with the Claimant’s registered marks.
• Deterrence: The Court found that there was a need for general deterrence with infringing activity being made easier through technological advancements and the availability of numerous e-commerce platforms. The Defendant was able to sell his infringing products across multiple platforms, even after receiving a cease and desist letter. The Defendant also engaged in recalcitrant behavior, being evasive and uncooperative by disregarding a court order for an interim injunction, taking steps to cover up his infringing activity, and absenting himself from court proceedings.

After weighing all factors against the statutory architecture, the Court fixed statutory damages at SGD 200,000. This was double the award in Converse (SGD 100,000) and nearly six times that in Cuffz (SGD 35,000).

Concluding Thoughts

As takeaways from Ng Hoe Seng, brand owners may wish to note that, due to express limits in the TMA, potential windfalls under the Canadian and US approaches are not available in Singapore. Where there is an abundance of evidence on actual loss, or where claimants have reason to believe that the defendants have reaped substantial gains, it may be more appropriate to elect for general damages or an account of profits. On the other hand, for cases involving defaulting or impecunious defendants, statutory damages may be more suitable, providing some certainty in terms of recourse without the need for expensive or prolonged discovery.

That said, the availability of statutory damages under the TMA alleviates but does not eliminate evidential burdens. Brand owners should still gather screenshots, trap purchases, price comparisons and any indicia of willfulness to support arguments on flagrancy, loss and deterrence. 

Overall, Ng Hoe Seng exemplifies the  ongoing refinement of IP remedies in Singapore – balancing robust brand protection with proportional justice. It confirms that the Singapore regime is fundamentally compensatory and bounded.  The judgment also underscores the Singapore legislative intent to chart its own middle course: more flexible than the UK’s proof-based regime, less punitive than the US approach, and with limited influence from the  tariff model in Canada. These considerations should inform the strategy of brand owners in combatting counterfeiters, whether in enforcement efforts or attempts at amicable settlement.