Louis Vuitton Malletier v Ng Hoe Seng (formerly trading as EMCASE SG)

Assessing Statutory Damages in Cases Involving the Use of Counterfeit Trade Marks
Louis Vuitton Malletier v Ng Hoe Seng (formerly trading as EMCASE SG) 
[2026] SGCA 22; [2026] 1 SLR 503

I. Executive Summary

Louis Vuitton Malletier (“LV”), the owner of the well-known “Louis Vuitton” trade mark, commenced proceedings against Ng Hoe Seng (“Ng”) for trade mark infringement. After obtaining judgment in default, LV elected to claim statutory damages under section 31(5)(c) of the Trade Marks Act 1998 (2020 Rev Ed) (“TMA”). The General Division of the High Court (“HC”) assessed those damages at S$200,000. LV appealed, arguing that the statutory limits should apply separately to each counterfeit mark used and that it was therefore entitled to S$1.45m. Alternatively, LV sought S$675,000, which represented 75% of the S$900,000 statutory limit applicable under the HC’s interpretation.

Statutory damages are available where the infringement of a registered trade mark involves the use of a “counterfeit trade mark”. They provide an alternative to damages or an account of profits where it may be difficult to prove the trade mark owner’s actual loss or ascertain the infringer’s profits. Such difficulties may arise where the infringer has not maintained clear sales records, refuses to participate in the proceedings or fails to provide discovery.

This regime gives the court broad discretion to assess damages by considering the factors in section 31(6), within the limits prescribed in section 31(5)(c) of the TMA:

• Under section 31(5)(c)(i) of the TMA, statutory damages must not exceed “$100,000 for each type of goods or service in relation to which the counterfeit trade mark has been used”; and under section 31(5)(c)(ii) of the TMA, statutory damages “in any action” must not exceed “in the aggregate $1 million”, unless the claimant proves that its actual loss from such infringement exceeds $1 million.

• Section 31(6) of the TMA then guides the court’s assessment within those limits by requiring it to consider factors such as the flagrancy of the infringement, the claimant’s actual or likely loss, any benefit gained by the infringer, the need for deterrence, and all other relevant matters.

On appeal, the Court of Appeal (“CA”) considered whether: the limits in section 31(5)(c) of the TMA applied separately to each counterfeit mark used; and the HC’s award of S$200,000 adequately reflected the factors in section 31(6) of the TMA.

On the first issue, the CA rejected LV’s argument that the statutory limits applied separately to each counterfeit mark. The statutory text supported applying the S$100,000 limit to each type of goods or service, and the S$1m aggregate limit to the action as a whole. This interpretation was consistent with the purpose and wider scheme of section 31 of the TMA. Further, statutory damages were intended to compensate and deter, rather than punish. 

On the second issue, however, LV succeeded in obtaining a higher award. The CA noted that the HC had applied the factors in section 31(6) of the TMA collectively across all nine types of goods and awarded a lump sum of S$200,000 without explaining how that figure was derived. The CA held that the more principled approach was to apply the factors in section 31(6) of the TMA separately to each type of goods. It therefore made individual awards ranging from S$30,000 to S$70,000 for the nine types of goods, producing a total award of S$510,000.

II. Material Facts

LV owned thirteen registered “Louis Vuitton” trade marks in Singapore (the “Registered Marks”). Ng was the sole registered proprietor of EMCASE SG (“EMCASE”), which operated an online store through the Instagram account “emcase_sg” (the “EMCASE IG Page”). 

Through the EMCASE IG Page, Ng advertised, offered, or exposed for sale goods affixed with signs identical to one or more of the Registered Marks without LV’s consent (the “Offending Goods”). The nine types of Offending Goods were phone cases, watch straps, passport covers, key cases, card wallets or holders, pouches or purses, phone bags, spectacle cases, and cigarette cases. After LV made a trap purchase, it sent Ng a cease-and-desist letter. EMCASE later ceased registration and the EMCASE IG Page became inactive, but Ng continued similar activities through another Instagram account, “emcrafts_sg” (the “EMCRAFTS IG Page”). 

LV then commenced proceedings against Ng for trade mark infringement and passing off. It obtained a judgement in default against Ng, after he failed to file a notice of intention to contest or not contest. The HC also granted an injunction restraining Ng from continuing his infringing acts. However, even after the injunction was brought to Ng’s attention, he continued advertising the Offending Goods for sale on the EMCRAFTS IG Page. Ng also changed that page to a private account, so only existing followers could see it, and new requests had to be manually accepted.

The HC further ordered an inquiry as to damages or, at LV’s election, an account of profits or statutory damages. LV elected for statutory damages under section 31(5)(c) of the TMA, or alternatively, an award of general compensatory damages. 

The HC decision regarding damages

The HC found that Ng had used counterfeit trade marks in relation to the Offending Goods; thus the remedy under section 31(5)(c) of the TMA was available. However, it declined to adopt LV’s interpretation of the TMA, which relied on the number of marks infringed (the “Per Mark Interpretation”). LV’s argument was based on the scale for quantifying damages in cases involving the sale of counterfeit goods in Canadian jurisprudence (the “Canadian Scale”): under this method, general compensatory damages are quantified on a per incidence of infringement basis, considering the nature of the infringer. As there were 121 instances of infringement, LV argued that the quantum of statutory damages should be S$4.84m (under the Canadian Scale) but capped at a statutorily recoverable amount of S$2.9m. 

The HC disagreed. Instead, it considered that section 31(5)(c) applied to each type of goods or service on which counterfeit marks were used, regardless of the number of counterfeit marks used on those goods or services (the “Per Goods Interpretation”), and to each action, regardless of the number of types of goods or services on which counterfeit marks were used (the “Per Action Interpretation”). As such, the maximum statutory damages that could be awarded was S$900,000. After assessing the relevant factors, the HC awarded LV S$200,000 in statutory damages. LV appealed.

III. Issues on Appeal

In the appeal, the CA decided two issues: 
(a) First, did the HC err in the interpretation of section 31(5)(c) of the TMA, in particular its finding that the prescribed statutory damages limits do not apply on a “per mark” basis; and 
(b) Second, did the HC err in the assessment of the statutory damages awarded to LV?

A. Did the HC err in the interpretation of section 31(5)(c) of the TMA, in particular its finding that the prescribed statutory damages limits do not apply on a “per mark” basis 

The CA determined this by applying the three-step purposive interpretation framework set out in Tan Cheng Bock v Attorney-General [2017] 2 SLR 850. This required: ascertaining the possible interpretations of section 31(5)(c), ascertaining the legislative purpose of the provision, and comparing the possible interpretations of the text against the purpose.

i. Possible interpretations of section 31(5)(c) of the TMA

Two interpretations of section 31(5)(c)(i) had been offered. The S$100,000 limit could apply to each type of goods or service on which counterfeit marks were used, regardless of the number of marks used, i.e., the Per Goods Interpretation. Alternatively, the limit could apply to each counterfeit mark used for each type of goods or service, i.e., the Per Mark Interpretation. Two interpretations of section 31(5)(c)(ii) were also offered. The S$1m aggregate limit could apply to the action, i.e., the Per Action Interpretation, or separately to each counterfeit mark used, i.e., the Per Mark Interpretation. 

The CA agreed with the HC that the plain words of section 31(5)(c) supported the Per Goods Interpretation and the Per Action Interpretation. Section 31(5)(c)(i) of the TMA sets the limit at “$100,000 for each type of goods or service”. Likewise, section 31(5)(c)(ii) of the TMA limits damages “in any action” to an aggregate S$1m without qualification. If Parliament had instead intended LV’s interpretation, it would have used clear words to that effect.

The CA rejected LV’s arguments that the phrases “a registered trade mark” and “a counterfeit trade mark,” and “in relation to which the counterfeit trade mark has been used” (from section 31(5)(c) with [emphasis added]) indicated that Parliament intended that damages should be assessed on a “per mark” basis. The CA held that the first two phrases did not concern how the quantum of statutory damages should be assessed. Rather, they described the nature of the action that triggered the assessment of damages regime, while the third identified the type of goods relevant to the assessment. In any event, section 2 of the Interpretation Act 1965 (2020 Rev Ed) provides that words in the singular generally include the plural, unless the context requires otherwise. 

ii. Legislative purpose of section 31(5)(c) of the TMA

The CA then considered the legislative purpose of the statutory damages regime, by placing it within the wider scheme of section 31 of the TMA. Under section 31(5) of the TMA, where counterfeit trade marks are involved, the claimant may elect between three mutually exclusive forms of relief: damages and an account of profits attributable to the infringement that have not been taken into account in computing the damages; an account of profits; or statutory damages. The first two remedies are not punitive: damages are meant to compensate the claimant, while an account of profits compels a defendant to disgorge gains earned from his wrongdoing. In both cases, the quantum awarded must bear some reasonable relationship to either the loss suffered by the claimant or the benefit obtained by the defendant. 

Statutory damages, as an alternative to those remedies, should logically operate within this same principle, i.e., as reflecting the extent of the claimant’s loss or the defendant’s benefit from the use of counterfeit marks on the defendant’s goods. There is nothing in section 31(5) of the TMA to suggest that the remedy of statutory damages should be assessed more generously than the other forms of relief, or that it is intended to be punitive. 

Given this, applying the Per Mark Interpretation could potentially allow a claimant to recover statutory damages substantially exceeding both the claimant’s actual loss and the defendant’s actual gain from the infringement, thereby rendering the award punitive in effect. For example, where the defendant sells only one type of goods using counterfeit marks which infringe three of the claimant’s trade marks, the Per Mark Interpretation raises the limit of damages to S$300,000. This would not serve to compensate the claimant for its actual loss or to disgorge the defendant’s actual gain, but to punish the defendant.

The requirement to consider deterrence under section 31(6)(d) of the TMA did not change this conclusion. The assessment of statutory damages is left to the court’s discretion, considering the broad factors in section 31(6) of the TMA, within the limits prescribed by section 31(5) of the TMA. Because that assessment is necessarily imprecise, there will often be a reasonable range of permissible awards. Deterrence may operate as a factor justifying an amount towards the higher end of that range, but it does not transform the remedy into a punitive one.

This analysis was also consistent with the case law on the assessment of damages under section 31 of the TMA. If LV’s Per Mark Interpretation and reliance on the singular phrasing in section 31(5) were correct, an action for infringement under the similarly worded section 31(2) of the TMA should be assessed in the same way. The CA observed, however, that neither the Singapore nor UK courts had assessed damages under section 31(2) of the TMA on a “per mark” basis. Sections 31(1)–31(3) of the TMA were modelled on sections 14(1)–14(2) of the UK Trade Marks Act 1994. The UK cases suggest that damages for trade mark infringement are generally assessed by (a) calculating the profits lost by the trade mark owner due to the infringement; or (b) applying the user principle, which estimates the notional licence fee that would have been agreed between the defendant and the claimant for their use of the infringing trade mark. Although the precise formulations differed across the cases, none treated each infringed mark as a separate unit of assessment or calculated damages on a “per mark” basis.

Consideration of extraneous material
Despite the above analysis, the CA further considered LV’s argument that there was ambiguity on the face of the provisions, thereby requiring the court to consider extraneous materials to ascertain the meaning of the text of the provisions, including Parliament’s intent. The relevant materials would be the Parliamentary debates during the amendment of the Trade Marks Bill in 2004 (“2004 Parliamentary debates”), the US–Singapore Free Trade Agreement signed in May 2003 (the “USSFTA”) and the relevant provisions of the United States Trademark Act of 1946 (the “2004 Lanham Act”) on which section 31(5) of the TMA was loosely modelled.

The CA first held that both the USSFTA and the 2004 Parliamentary debates confirmed that the statutory damages remedy had both compensatory and deterrent purposes, but not punitive ones. The USSFTA required Singapore to provide pre-established damages at a level capable of deterring future infringement while compensating the rights holder for the harm caused. The 2004 Parliamentary debates emphasised the compensatory aim of the remedy and explained that statutory damages were introduced as an option because it might be difficult for a claimant to prove its actual losses or obtain an account of profits, e.g., where the infringer had not maintained clear sales records. 

Parliament’s deliberate departure from the terms of the 2004 Lanham Act reinforced this interpretation. Although both statutes referred to the use of a counterfeit mark in the singular, the 2004 Lanham Act expressly provided for statutory damages “per counterfeit mark per type of goods or services”. Had Parliament intended the Per Mark Interpretation, it could have adopted this language, particularly since the amendments to the TMA were introduced under the USSFTA. Its omission of that wording indicated a conscious legislative choice to adopt a different approach.

Further, US case law indicates that the assessment of statutory damages in the US does indeed involve punitive considerations, including treble damages. The 2004 Lanham Act also includes a tenfold uplift in the limit where infringement is wilful. In contrast, the limits under the TMA remain unchanged whether the infringement is negligent, inadvertent, or wilful. Flagrancy is relevant as only one of several factors under section 31(6). The TMA also imposes the aggregate limit under section 31(5)(c)(ii), which has no equivalent in the 2004 Lanham Act. It does not authorise a Singapore court to treble an estimate of actual damages even when the infringement is wilful or flagrant. The 2004 Parliamentary debates also showed that the amendments to the TMA were not intended to amount to a wholesale adoption of the rights and remedies conferred by US legislation.

iii. The legislative purpose supports limits by goods type and by action
The CA concluded that the legislative purpose of section 31(5)(c) of the TMA plainly supported the Per Goods Interpretation under section 31(5)(c)(i) and the Per Action Interpretation under section 31(5)(c)(ii) of the TMA. Adopting the Per Mark Interpretation would have introduced punitive elements into Singapore’s statutory damages regime, contrary to Parliament’s deliberate decision to exclude such elements.

B. Did the HC err in the assessment of the statutory damages awarded to LV

The CA first set out the applicable framework for assessing statutory damages, concluding that a goods-by-goods assessment was the more appropriate approach. It then applied the factors in section 31(6) of the TMA to each of the nine types of goods and concluded that a total award of S$510,000 was justified.

i. The applicable framework requires a goods-by-goods assessment
The CA noted that it broadly concurred with the HC’s reasoning on the factors under section 31(6) of the TMA; its concern lay instead with how those factors had been applied. The CA noted that the HC had considered the factors across all nine types of goods collectively and awarded a lump sum of S$200,000, but had not explained how it arrived at the figure. As section 31(5)(c)(i) of the TMA imposes a separate limit of S$100,000 for each type of goods or service in relation to which the counterfeit trade mark was used, the more appropriate approach was to apply the factors in section 31(6) of the TMA separately to each of the nine types of goods.

The CA provided guidance on the factors, stressing that these were non-exhaustive and intended only as general guidance:

• Flagrancy of infringement may be assessed by reference to the number of counterfeit marks used, the number of types of goods as well as the scope of the defendant’s operations (e.g., whether the defendant was a retailer, manufacturer, importer, or distributor). Here, the CA accepted as sensible the principles underlying the gradations in the Canadian Scale. It would also be aggravating where, for instance, the defendant promotes the counterfeit goods by using the claimant’s name and represents the counterfeit goods as being authentic.

• Loss suffered by the claimant may be assessed by considering whether the parties’ fields of business activities place them in direct competition. Although loss of sales in cases such as the present is unlikely to be significant because most consumers who choose to buy counterfeit goods would likely be aware that they are not genuine given the significant price disparity, beyond commercial loss there may nevertheless be damage to exclusivity, reputation and goodwill.

• Benefit gained by the defendant may be assessed through estimating profit margins, as well as considering the advantage of free-riding off the quality associated with the registered marks. 

• Deterrence includes two aspects: general deterrence, which requires awards that meaningfully discourage similar conduct by other potential infringers; and specific deterrence, which requires consideration of the defendant’s conduct, including recalcitrant behaviour, attempts at evasion, non-cooperation with legal proceedings and persistence in infringing activities in disregard of court orders. 

ii. Applying the factors in section 31(6) justified a total award of S$510,000
The CA then held that the factors common to all nine types of goods were aggravating. Ng’s infringement was “highly flagrant”. He free-rode off the quality associated with the Registered Marks by labelling his goods as “LV” products and representing them as made from “authentic” materials, likely allowing him to attract more customers and sales at higher prices. The most aggravating factor was his conduct throughout the proceedings: he was evasive and uncooperative, failed to make an appearance, and deprived the court and LV of evidence revealing the full extent of his counterfeiting operations or profits. He also showed blatant disregard for the law by continuing his infringing acts after the injunction was granted and brought to his attention, demonstrating that he was not merely an opportunistic infringer but a recalcitrant violator who showed no respect for court orders. General deterrence was also warranted because the “Louis Vuitton brand” is widely counterfeited and technology has made it easier for infringing items to be marketed and sold, while his conduct warranted a higher level of statutory damages for specific deterrence. 

The apparently limited scale of Ng’s operations was the only consideration pointing against an even higher award. He appeared to make the goods only for sale through his own online store and not for distribution to other retailers. Even so, the 121 documented instances of infringement probably represented only a fraction of his activities, whose true extent could not be determined because he did not participate in the proceedings below. There was ultimately no evidence before the court as to the true extent of his counterfeiting operations. The CA thus held that damages should provisionally land on the higher side of the mid-point of S$50,000 per type of goods, subject to adjustments based on the factors specific to each type of goods.

To make those adjustments, the CA grouped the nine types of goods into four broad categories, in descending order of quantum. The categories were based on several factors, including: the quantum of Ng’s sales or advertising; the price disparity between the Offending Goods and products without the counterfeit marks; and whether LV dealt in the same type of goods. The CA stressed that these considerations were not exhaustive; further, such categorisations are imprecise given the nature of the assessment of statutory damages in a case such as this where there is little evidence of the actual total sales before the court.

Based on the above, the first category comprised phone cases, key cases, and pouches/purses. These warranted the highest awards of S$70,000 for each type of goods because the evidence showed extensive use of counterfeit marks, significant documented infringement, a higher likelihood of loss since LV dealt in those goods, and relatively high profit margins based on price comparisons. The second category comprised watch straps and card wallets or holders, which warranted awards of S$60,000 per type of goods. Although fewer counterfeit marks were used, the evidence showed meaningful numbers of documented infringements, substantial price disparities suggesting significant profit margins, and a likelihood of loss because LV sold both types of goods. The third category comprised passport covers, phone bags and spectacle cases, which warranted awards of S$50,000 for each type of goods. The documented scale of infringement was lower than for the first two categories, although the available price comparisons showed substantial disparities for passport covers and phone bags. The final category was cigarette cases for which the CA awarded S$30,000. LV had established only one instance of infringement and there was no evidence that it sold cigarette cases, making it difficult to show any considerable loss. 

Taken together, the category-by-category awards amounted to S$510,000. Although the CA acknowledged that some imprecision was inevitable given the dearth of evidence resulting from Ng’s lack of cooperation, it considered the assessment to be as principled as the circumstances permitted.

IV. Conclusion

The CA allowed the appeal in part, setting aside the HC’s award of S$200,000 and substituting an award of S$510,000 in statutory damages.