Court of Appeal Clarifies Statutory Limits on Damages for Trade Mark Infringement

In an action for infringement of a registered trade mark in relation to goods or services, section 31(5)(c) of the Trade Marks Act 1998 (“TMA“) entitles a claimant to statutory damages that are subject to two caps, namely:

1. S$100,000 for “each type of goods or service in relation to which the counterfeit trade mark has been used”; and
2. S$1 million in the aggregate, unless the claimant’s actual loss from such infringement exceeds S$1 million.

However, where a type of good bears multiple counterfeit trade marks, does the S$100,000 limit apply per mark (“Per Mark Interpretation“) or per type of good (“Per Goods Interpretation“)? Further, does the S$1 million limit apply to each counterfeit mark used (i.e. the Per Mark Interpretation), or to each action regardless of the number of types of goods or services involved (“Per Action Interpretation“)?

In Louis Vuitton Malletier v Ng Hoe Seng (formerly trading as EMCASE SG) [2026] SGCA 22 (“LVM“), the Court of Appeal (“CA“) rejected the Per Mark Interpretation, upholding the Per Goods Interpretation and Per Action Interpretation. It also increased the damages awarded from S$200,000 to S$510,000 after considering the factors set out in section 31(6) of the TMA, namely:

1. flagrancy of the infringement;
2. any loss that the claimant has suffered or is likely to suffer;
3. any benefit accrued to the defendant;
4. deterrence; and
5. all other relevant matters.

Background

The Appellant was the proprietor of 13 “Louis Vuitton” trade marks registered in Singapore (“Registered Marks“). The Respondent operated an online store through Instagram, advertising, offering or exposing for sale goods affixed with signs identical to one or more of Registered Marks without the Appellant’s consent (“Offending Goods“). There were nine types of Offending Goods. Several of them bore multiple counterfeit marks – for instance, the phone cases sold by the Respondent bore five counterfeit marks.

Despite a cease-and-desist letter and an injunction restraining him from continuing the infringing acts, the Respondent continued to advertise the Offending Goods for sale.

The Appellant commenced an action for trade mark infringement against the Respondent and obtained judgment in default. The Judge of the High Court (“Judge“) found that the Respondent had committed at least 121 instances of infringement. The Judge also found that the Respondent used counterfeit trade marks in relation to the Offending Goods, thus satisfying the requirement for an award of statutory damages.

Before the Judge, the Appellant advanced the Per Mark Interpretation. This meant that the relevant prescribed limit for the phone cases, for instance, would be S$500,000 rather than S$100,000 under the Per Goods Interpretation. Similarly, the aggregate limit would be S$13 million pursuant to the 13 trade marks used, rather than S$1 million under the Per Action Interpretation.

The Judge upheld the Per Goods Interpretation and Per Action Interpretation, and awarded statutory damages of S$200,000. Dissatisfied with the Judge’s rejection of the Per Mark Interpretation and the quantum of damages awarded, the Appellant appealed.

On appeal, the CA addressed:

1. whether the Judge erred in rejecting the Per Mark Interpretation; and
2. whether the Judge erred in his assessment of the statutory damages awarded to the Appellant given the flagrancy of infringement and other section 31(6) factors.

Decision of the CA

The CA rejected the Per Mark Interpretation, finding that:

1. The plain text of section31(5)(c) of the TMA supported the Per Goods Interpretation and the Per Action Interpretation. The references to “a registered trade mark” and “a counterfeit trade mark” in the opening words of section 31(5) in the singular described the nature of the action that triggered the assessment of damages regime. Similarly, the phrase “in relation to which the counterfeit trade mark has been used” in section 31(5)(c)(i) described the type of goods relevant to the assessment.

2. The legislative purpose of the statutory damages regime in Singapore was to compensate the claimant and deter the defendant and other potential infringers, but not to punish the wrongdoer. This dual purpose must be achieved within boundaries that bore a reasonable relationship to the harm caused to the claimant or benefit derived by the defendant.

3. The courts in Singapore have not assessed damages on a “per mark” basis, despite similar statutory language in section 31(2) of the TMA referring to “an action for an infringement” in the singular.

4. Singapore’s statutory damages regime was deliberately modelled differently from the equivalent United States of America (“US“) provision. Section 1117(c) of the US Lanham Act expressly imposes damages “per counterfeit mark per type of goods or services”. Parliament’s conscious choice not to adopt this language signals that the Per Mark Interpretation was not intended. This is reinforced by the absence of punitive features present in the US regime, such as the tenfold uplift in the damages limit for wilful infringement – a feature with no equivalent in the TMA, where the statutory limits remain the same regardless of whether the infringement is negligent, inadvertent or wilful.

In assessing damages, the CA set out considerations relevant to the factors under section 31(6).

1. Flagrancy of infringement under section 31(6)(a) 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.

2. The assessment of loss under section 31(6)(b) should consider whether the field of business activities of the parties gave rise to direct competition. Nonetheless, where the infringement involved the sale of counterfeit goods which were significantly cheaper than the genuine goods, the loss of sales was unlikely to be significant. Beyond direct commercial loss, there was also damage to exclusivity, reputation and goodwill.

3. Under section 31(6)(c), the defendant’s benefit may be measured by estimating the profit margins. The advantage of free-riding off the quality associated with the registered marks was also relevant.

4. Deterrence under section 31(6)(d) constituted two aspects, general deterrence (i.e. the prevalence of counterfeit luxury goods and the ease with which online platforms facilitate infringement) and specific deterrence requiring consideration of the defendant’s conduct.

On the facts, the Respondent’s infringement was highly flagrant and warranted both general and specific deterrence. He was evasive and uncooperative throughout the proceedings and was a recalcitrant infringer who breached the injunction. The only factor militating against a higher award of damages was the fact that the scope of the Respondent’s operations appeared to be limited. However, there was ultimately no evidence before the Court as to the true extent of the Respondent’s counterfeiting operations.

The CA divided the nine different types of goods into four broad categories, which were conceptualised based on several factors including:

1. the quantum of the Respondent’s sales and/or advertising (based on the limited evidence before the court);
2. the price disparity between the Offending Goods and the same type of products without the counterfeit marks associated with the Registered Marks; and
3. whether the Appellant dealt in the same type of goods.

On the facts, the CA found that damages should provisionally land on the higher side of the mid-point of S$50,000 per type of goods. This provisional figure was subject to adjustments based on how each type of goods was categorised. In this case, S$510,000 in statutory damages was awarded to the Appellant: (i) S$70,000 each for phone cases, key cases and pouches/purses; (ii) S$60,000 each for watch straps and card wallets/holders; (iii) S$50,000 each for passport covers, phone bags and spectacle cases; and (iv) S$30,000 for cigarette cases.

Concluding Remarks

LVM clarifies the interpretation of section 31(5)(c) of the TMA, namely that the statutory limits apply per type of goods and per action, not per mark. It underscores that Singapore’s statutory damages regime under the TMA is compensatory and deterrent, not punitive.

This decision is particularly significant for brand owners, because it moves the assessment of statutory damages beyond a broad, impressionistic exercise, and requires claimants to present evidence by reference to the specific infringing goods. Rights holders must be ready to build an evidential record from the outset of any enforcement action, including by preserving evidence of online reach, price comparisons, customer-facing representations, trap purchases and post-injunction conduct. All of these may be critical in persuading the court that a higher statutory damages award is justified.