Louis Vuitton v Cuffz: Trademark Infringement and Statutory Damages
Louis Vuitton Malletier, a French company, sued Cuffz (Singapore) Pte Ltd in the High Court of Singapore for trademark infringement of its Epi Mark. The court, presided over by Edwin San AR, found Cuffz liable for selling counterfeit wallets and awarded Louis Vuitton $35,000 in statutory damages. Cuffz was uncooperative throughout the proceedings, and the court considered the flagrancy of the infringement, the loss suffered by Louis Vuitton, the benefit accrued to Cuffz, the need for deterrence, and Cuffz's conduct.
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 sued Cuffz for trademark infringement. The court awarded $35,000 in statutory damages due to Cuffz's flagrant counterfeiting.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Louis Vuitton Malletier | Plaintiff | Corporation | Judgment for Plaintiff | Won | Anthony Soh, Regina Quek, Shawn Poon |
| Cuffz (Singapore) Pte Ltd | Defendant | Corporation | Judgment against Defendant | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Edwin San AR | Assistant Registrar | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Anthony Soh | One Legal LLC |
| Regina Quek | One Legal LLC |
| Shawn Poon | One Legal LLC |
4. Facts
- Plaintiff owns the Louis Vuitton brand and the Epi Mark.
- Defendant operated a retail outlet named “Cuffz” in Raffles City.
- Defendant sold wallets bearing a mark identical or similar to the Epi Mark.
- Plaintiff's investigator purchased an infringing wallet from the defendant for $75.90.
- A raid on the defendant’s outlet seized two wallets bearing the infringing mark.
- The defendant was portraying and marketing its ‘Cuffz” brand as one which conveys a sense of sophistication and elegance.
- The defendant shut down its outlet at Raffles City in May 2014.
5. Formal Citations
- Louis Vuitton Malletier v Cuffz (Singapore) Pte Ltd, Suit No 560 of 2014 (HC/AD 9/2015), [2015] SGHCR 15
6. Timeline
| Date | Event |
|---|---|
| Epi Mark registered in Singapore | |
| Cuffz (Singapore) Pte Ltd incorporated | |
| Test Purchase of infringing wallet | |
| Magistrate’s Complaint filed | |
| Raid on defendant’s outlet | |
| Writ of summons filed | |
| Defendant entered appearance | |
| Defendant’s solicitors discharged | |
| Summary judgment hearing | |
| Judge found that the defendant had infringed the plaintiff’s Epi Mark | |
| Cease and Desist letter sent to Cuffz SDN BHD | |
| Notice of Appointment for Assessment of Damages filed | |
| Notice of Appointment for Assessment of Damages served on the defendant | |
| Assessment of Damages hearing | |
| Judgment reserved |
7. Legal Issues
- Trademark Infringement
- Outcome: The court found the defendant had infringed the plaintiff’s Epi Mark.
- Category: Substantive
- Sub-Issues:
- Use of counterfeit trademark
- Commercial exploitation of trademark
- Damage to brand reputation
- Statutory Damages
- Outcome: The court awarded $35,000 in statutory damages to the plaintiff.
- Category: Substantive
- Sub-Issues:
- Assessment of damages
- Flagrancy of infringement
- Loss suffered by plaintiff
- Benefit accrued to defendant
- Need for deterrence
8. Remedies Sought
- Statutory Damages
- Disclosure of supplier information
9. Cause of Actions
- Trademark Infringement
10. Practice Areas
- Intellectual Property Litigation
- Trademark Infringement
11. Industries
- Fashion
- Retail
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Converse Inc v Ramesh Ramchandani and Fatimah bte Mohd Yusof | High Court | Yes | [2014] SGHCR 11 | Singapore | Cited as a case where the full amount of statutory damages was awarded due to a large quantity of counterfeit shoes. |
| 32Red Plc (A Gibraltar Company) v WHG (International) Limited | High Court of Justice | Yes | [2013] EWHC 815 (Ch) | England and Wales | Cited regarding the hypothetical license model for calculating damages, but the court declined to apply it in this case. |
| PH Hydraulics & Engineering Pte Ltd v Intrepid Offshore Construction Pte Ltd and another | High Court | Yes | [2012] 4 SLR 36 | Singapore | Cited for the purpose of statutory damages under the Copyright Act. |
| Louis Vuitton Malletier S.A. v Singga Enterprises (Canada) Inc | Federal Court | Yes | [2013] 1 F.C.R. 413 | Canada | Cited for the general proposition that the sale of counterfeit goods brings damage to the reputation and goodwill attaching to the brand name trade marks. |
| Facton Ltd & Ors v Azadzoi | Federal Magistrates Court of Australia | Yes | [2012] FMCA 800 | Australia | Cited as an Australian case where additional damages were awarded under the Australian Copyright Act 1968. |
| Facton Ltd & Ors v Yuan | Federal Magistrates Court of Australia | Yes | [2011] FMCA 266 | Australia | Cited as an Australian case where additional damages were awarded under the Australian Copyright Act 1968. |
| Facton Ltd v Erdogan (No 1) | Federal Court of Australia | Yes | [2012] FCA 924 | Australia | Cited as an Australian case where additional damages were awarded under the Australian Copyright Act 1968. |
| G-Star Raw Denim Kft & Anor v Urban Culture Pty Ltd & Anor | Federal Magistrates Court of Australia | Yes | [2009] FMCA 1317 | Australia | Cited as an Australian case where additional damages were awarded under the Australian Copyright Act 1968. |
| Facton Ltd & Ors v Rifai Fashions Pty Ltd and Another | Federal Court of Australia | Yes | [199] FCR 569 | Australia | Cited to explain the nature of additional damages under the Australian Copyright Act 1968. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Mark Act (Cap 332, 2005 Rev Ed) | Singapore |
| Trade Mark Act (Cap 332, 2005 Rev Ed) section 27(1) | Singapore |
| Trade Mark Act (Cap 332, 2005 Rev Ed) section 3(6) | Singapore |
| Trade Mark Act (Cap 332, 2005 Rev Ed) section 31(5) | Singapore |
| Trade Mark Act (Cap 332, 2005 Rev Ed) section 31(5)(c) | Singapore |
| Trade Mark Act (Cap 332, 2005 Rev Ed) section 31(6) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) section 119(2) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) section 119(5) | Singapore |
| Australian Copyright Act 1968 section 115(4) | Australia |
15. Key Terms and Keywords
15.1 Key Terms
- Epi Mark
- Infringing Goods
- Counterfeit
- Statutory Damages
- Flagrancy
- Goodwill
- Deterrence
15.2 Keywords
- Louis Vuitton
- Cuffz
- Trademark Infringement
- Epi Mark
- Counterfeit
- Statutory Damages
16. Subjects
- Intellectual Property
- Trademark
- Counterfeiting
17. Areas of Law
- Intellectual Property Law
- Trademark Law
- Counterfeit Goods