Local firm to pay S$35,000 for selling imitation LV wallets
Bloomberg file photo
SINGAPORE — A Singapore company hauled to court by Louis Vuitton Malletier for selling imitations of the luxury house’s wallets has been ordered to pay S$35,000 in statutory damages by the High Court.
In the written judgment released yesterday (July 23), Assistant Registrar Edwin San said the company, which operated a retail shop in Raffles City Shopping Centre, was a commercial competitor that “flagrantly dealt in counterfeit goods” bearing Louis Vuitton’s Epi trademark, and “demonstrated a contumelious disregard” of Louis Vuitton’s intellectual property rights and the legal process.
The shop, called Cuffz, sells fashion accessories, and among its offerings were wallets that resembled those of Louis Vuitton’s Epi range, which is identifiable by textured surfaces resembling ridges and valleys. These ridges and valleys, which are applied to the surfaces of products in the Epi range, have an “immediately recognisable two-tone effect”, and characterise the Epi Mark, a trademark registered by Louis Vuitton Malletier.
In October last year, the High Court had ruled that the defendant had infringed the Epi Mark under the Trade Marks Act. A private investigator engaged by Louis Vuitton Malletier had visited Cuffz in January last year and purchased a vertical bi-fold wallet similar to a Epi line wallet for S$75.90. A subsequent raid by the Criminal Investigation Department saw another two similar wallets seized.
The lawyer acting for Louis Vuitton Malletier, Mr Anthony Soh, had asked for the maximum S$100,000 permissable in statutory damages, noting that the defendant had been “evasive and uncooperative” throughout the proceedings. Statutory damages can be awarded when it is difficult to prove actual losses. Although only three infringing items were seized, Mr Soh also submitted that the defendant could have sold at least 100 units of the infringing items, and stocked another 100 to 250 units.
These figures were dismissed by Mr San as “too speculative”, as no evidence had been submitted to support the inference. What was “aggravating”, said Mr San, was that the defendant appeared to have its own distinctive logo — two small symmetrical diamond shapes under the words “Cuffz” — which was found on the seized wallets. As such, the company was not merely a seller or distributor of the infringing goods but also a manufacturer, and the infringement was clearly calculated to enable it to gain prestige through association with the Epi Mark, Mr San noted.
Mr Soh had also argued for the court to calculate damages based on the royalties the defendant would have paid Louis Vuitton under a hypothetical licence model, but Mr San said there was little basis for this. For one, Louis Vuitton Malletier has never granted such a licence.
Nonetheless, Mr San said there can be “no dispute to the general proposition that the sale of counterfeit goods brings damage to the reputation and goodwill attaching to the brand name trademarks”.
According to a report from the World Trademark Review submitted by the plaintiff, Louis Vuitton was the sixth most counterfeited brand and the most counterfeited luxury brand in 2013. Specific to the Epi Mark, there were eight and 12 instances of infringement in Singapore in 2013 and 2014, and enforcement action has also been taken in Taiwan and Hong Kong.
The need for deterrence is “highly imperative given the evidence of infringement of the Epi Mark in various jurisdictions”, Mr San said. He also took into account the defendant’s “evasive and uncooperative conduct”, which had meant the full extent of the infringement could not be discovered.
