Louis Vuitton v City Chain: Trade Mark Infringement, Passing Off & Dilution
Louis Vuitton Malletier, a French luxury brand, sued City Chain Stores (S) Pte Ltd in the High Court of Singapore, alleging trade mark infringement, passing off, and dilution of well-known marks. The case centered on City Chain's use of a flower device on its 'Solvil' watches, which Louis Vuitton claimed was identical or similar to its registered 'Flower Quatrefoil' and 'Flower Quatrefoil Diamond' trade marks. Tay Yong Kwang J ruled in favor of Louis Vuitton, finding that City Chain's use of the flower device infringed Louis Vuitton's trade marks, constituted passing off, and diluted its well-known marks. The court issued injunctions and ordered an inquiry into damages or an account of profits.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Judgment for Plaintiff
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Louis Vuitton sues City Chain for trade mark infringement, passing off, and dilution due to similar flower device on watches. Court rules in favor of Louis Vuitton.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Louis Vuitton Malletier | Plaintiff | Corporation | Claims on the grounds of infringement of trade mark under s 27(1) and (2) of the Act, in passing off and under s 55 of the Act succeeds | Won | Wong Siew Hong, G Radakrishnan |
| City Chain Stores (S) Pte Ltd | Defendant, Applicant | Corporation | Claims dismissed | Lost | Tan Tee Jim SC, Christopher de Souza, Ng Guan Zhen |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Tay Yong Kwang | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Wong Siew Hong | Infinitus Law Corporation |
| G Radakrishnan | Infinitus Law Corporation |
| Tan Tee Jim SC | Lee & Lee |
| Christopher de Souza | Lee & Lee |
| Ng Guan Zhen | Lee & Lee |
4. Facts
- Louis Vuitton claimed City Chain's 'Solvil' watches infringed its registered 'Flower Quatrefoil' and 'Flower Quatrefoil Diamond' trade marks.
- City Chain's 'Solvil' watches featured a flower device similar to Louis Vuitton's trade marks.
- Louis Vuitton argued the flower device on 'Solvil' watches was used in a similar manner to its own trade marks.
- City Chain argued the flower device was a mere decorative embellishment and not used as a trade mark.
- Louis Vuitton presented evidence of its brand's goodwill and reputation in Singapore.
- City Chain's target market was the young and trendy, while Louis Vuitton targeted the luxury market.
- Louis Vuitton argued the availability of 'look-alike' watches would diminish its brand's exclusivity.
5. Formal Citations
- Louis Vuitton Malletier v City Chain Stores (S) Pte Ltd, Suit 779/2007, Cr Rev 2/2008, [2009] SGHC 24
6. Timeline
| Date | Event |
|---|---|
| Louis Vuitton founded as a trunk maker. | |
| The Monogram was first registered as a trade mark in France. | |
| Stelux Holdings International Limited founded. | |
| Stelux listed on the Hong Kong Stock Exchange. | |
| Louis Vuitton opened its first outlet in Singapore. | |
| City Chain retail chain was first established in Hong Kong. | |
| LVMH Group formed following a merger between Louis Vuitton and Moët Hennessy. | |
| Louis Vuitton started manufacturing and selling watches. | |
| Louis Vuitton started selling watches bearing the Trade Marks in Singapore. | |
| City Chain launched a range of watches bearing the “Solvil” trade mark and a flower device in Singapore. | |
| Louis Vuitton filed complaints against City Chain alleging trade mark infringements. | |
| Search warrants were executed at City Chain outlets and watches were seized. | |
| Charges were issued against City Chain for breaching s 49(c) of the Trade Marks Act. | |
| Louis Vuitton filed the writ of summons in the present action. | |
| Ms Teh deposed in her affidavit in respect of the Criminal Revision. | |
| Chu KW deposed in his 2nd affidavit in respect of the Criminal Revision. | |
| Parties agreed that the Suit and the Criminal Revision be heard together. | |
| Judgment Date |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court held that the defendant's flower device was identical or similar to the plaintiff's trade marks, leading to infringement under s 27(1) and (2) of the Trade Marks Act.
- Category: Substantive
- Sub-Issues:
- Use of identical or similar sign
- Likelihood of confusion
- Use in the course of trade
- Passing Off
- Outcome: The court found that the plaintiff possessed substantial goodwill and reputation, the defendant misrepresented its products, and there was a likelihood of damage to the plaintiff's brand, thus establishing passing off.
- Category: Substantive
- Sub-Issues:
- Goodwill
- Misrepresentation
- Damage or likelihood of damage
- Related Cases:
- [2008] 2 SLR 32
- Dilution of Well-Known Trade Mark
- Outcome: The court determined that the plaintiff's trade marks were well-known and the defendant's use of a similar device would cause dilution in an unfair manner, entitling the plaintiff to injunctive relief under s 55 of the Trade Marks Act.
- Category: Substantive
- Sub-Issues:
- Tarnishment
- Blurring
- Unfair advantage
- Quashing of Search Warrants
- Outcome: The court dismissed the defendant's application to quash the search warrants, finding no misrepresentation or non-disclosure of material facts by the plaintiff.
- Category: Procedural
- Sub-Issues:
- Non-disclosure of information
- Lack of commission of offence
8. Remedies Sought
- Injunction
- Declaration
- Inquiry into damages or account of profits
- Delivery up of infringing articles
- Full discovery of acts of trade mark infringement and passing off
- Costs
- Interest
9. Cause of Actions
- Trade Mark Infringement
- Passing Off
- Dilution of Well-Known Trade Mark
10. Practice Areas
- Trade Mark Infringement
- Passing Off
- Dilution
- Intellectual Property Litigation
11. Industries
- Fashion
- Retail
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| The Polo/Lauren Co, LP v Shop in Department Store | High Court | Yes | [2006] 2 SLR 690 | Singapore | Cited to argue that mere registration did not render the Flower Quatrefoil distinctive as a trade mark. |
| Amanresorts Limited & Anor v Novelty Pte Ltd | High Court | Yes | [2008] 2 SLR 32 | Singapore | Cited for the elements required to establish the tort of passing off: goodwill, misrepresentation, and damage or likelihood thereof. |
| CDL Hotels International Ltd v Pontiac Marina Pte Ltd | Court of Appeal | Yes | [1998] 2 SLR 550 | Singapore | Cited in Amanresorts Limited & Anor v Novelty Pte Ltd [2008] 2 SLR 32 for the elements required to establish the tort of passing off: goodwill, misrepresentation, and damage or likelihood thereof. |
| Nation Fittings (M) Sdn Bhd v Oystertec plc | High Court | Yes | [2006] 1 SLR 712 | Singapore | Cited for the principle that proof of damage must be established as a matter of probability, not mere possibility. |
| Bulmer Bhd and Showerings Ltd v J Bollinger SA and Champagne Lanson | Unknown | Yes | [1978] RPC 79 | Unknown | Cited in Nation Fittings (M) Sdn Bhd v Oystertec plc [2006] 1 SLR 712 for the principle that proof of damage must be established as a matter of probability, not mere possibility. |
| Louis Vuitton & anor v Lee doing business as K-Econo Merchandise | United States Court | Yes | 875 F.2d 584 | United States | Cited to bolster the argument that the plaintiff and its Trade Marks were well-known. |
| Louis Vuitton Malletier SA v D and L Design Pty Ltd | Federal Court | Yes | [2003] FCA 475 | Australia | Cited to bolster the argument that the plaintiff and its Trade Marks were well-known. |
| Ng Chye Huey and anor v PP | Court of Appeal | Yes | [2007] 2 SLR 106 | Singapore | Cited for the principle that the revisionary powers of the High Court are to be exercised sparingly. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Section 49 Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Section 2(1) Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Section 27 Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Section 55 Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark infringement
- Passing off
- Dilution
- Well-known trade mark
- Flower Quatrefoil
- Solvil watch
- Monogram Canvas design
- Likelihood of confusion
- Goodwill
- Misrepresentation
- Tarnishment
- Blurring
15.2 Keywords
- Louis Vuitton
- City Chain
- Trade mark infringement
- Passing off
- Dilution
- Watches
- Flower Quatrefoil
- Singapore
- Intellectual Property
16. Subjects
- Trade Mark Law
- Intellectual Property Law
- Fashion Law
17. Areas of Law
- Trade Mark Law
- Tort Law
- Intellectual Property Law
- Criminal Procedure