LV applies for summary judgement against ValueMax in alleged trademark infringement lawsuit

Global luxury and fashion goods company Louis Vuitton has applied for summary judgement for its lawsuit against a wholly owned subsidiary of mainboard-listed ValueMax Group over alleged trademark infringement and passing off.

Louis Vuitton, known popularly as LV, lodged a lawsuit in mid-September against ValueMax Retail, alleging that it was selling a gold charm and offering for sale a pair of gold earrings that are counterfeits that infringed its trademarks.

ValueMax Retail denied infringing LV’s trademarks or passing off, pointing out in its defence filed in October that the items under dispute had symbols that were neither identical nor similar to any of the LV marks.

However, LV has proceeded to seek summary judgement from the Singapore High Court, which is set to be heard on Jan 6. The application means it is claiming that ValueMax Retail plainly has no defence to its claim, and is asking the court to decide in its favour without going through a trial.

A claimant must first show that it has a prima facie case – meaning, on first impression – for summary judgment for such an application. If it fails to do that, its application will be dismissed.

However, once it shows that it has a prima facie case, the burden is then shifted to the defendant who will have to establish that there is a fair or reasonable probability that there is a triable issue, a real defence or that for some other reason there ought to be a trial.

If the defendant is able to do that, it will be allowed to continue to defend the action. Conversely, summary judgement will be awarded to the claimant.

Yeah Lee Ching, managing director (retail and trading) at ValueMax Group, told The Business Times on Tuesday (Dec 30) that the defendant will be opposing LV’s summary judgement application.

LV’s allegations

LV has four trademarks registered in Singapore: the LV monogram and three graphic motifs. It said its brand is one of the world’s most valuable, and is also one of the most counterfeited luxury brands in the world. There is therefore a need to deter similar infringement, as its reputation and goodwill will be damaged by counterfeit goods.

Apart from alleging ValueMax Retail of infringing its trademarks, LV further alleged that ValueMax Retail had made misrepresentations to the public that the jewellery in question were LV goods or that there was an economic association or relationship between the jewellery and LV.

This would not only create confusion for the consumer, but also damage LV’s interest and dilute the distinctive character of its trademarks, LV argued. It claimed that it has suffered or is likely to suffer loss and damage.

The French behemoth said it is entitled to statutory damages under the Trademarks Act, which are up to S$100,000 for each type of goods or service in relation to which the trademark has been infringed, and up to S$1 million in total unless the claimant proves that its actual loss from such infringement exceeds S$1 million.

It is seeking an inquiry into the damages, an account of profits made by ValueMax Retail from the sale of the alleged counterfeits, or statutory damages.

It is also applying for an injunction to restrain ValueMax Retail from infringing the LV trademarks, passing off or attempting to pass off the defendant’s goods as LV’s and misrepresenting as having an economic association or relationship with the French company.

It is seeking an order for the delivery and forfeiture of all goods, materials or articles with ValueMax Retail in relation to the alleged counterfeits.

The other order it is seeking is for the full disclosure by ValueMax Retail of all of its trademark infringements and passing off.

ValueMax Retail denies misrepresentation

In its defence, ValueMax Retail said it is a dealer in second-hand jewellery made of gold and precious stones, as well as branded watches and branded bags, buying these from various parties, including other second-hand dealers, pawnshops and consumers.

The store accused of selling counterfeits is a pawnshop with sales counters, it said.

It claimed that it made no representations as to the origin of the alleged counterfeits, nor any alleged economic association or relationship between the jewellery and LV.

ValueMax Retail rejected the claim that it is in direct competition with LV, as the nature of its business is different from that of the French group.

In a regulatory filing made to the Singapore Exchange on Dec 18, the mainboard-listed ValueMax Group said its subsidiary will “vigorously and robustly defend these claims brought forward by LV at every appropriate legal stage, and will take all necessary action to defend its reputation”.

It also said the gold charm and gold earrings were unredeemed pawned items procured through separate sources by the group.

Source: The Business Times © SPH Media Limited. Permission required for reproduction.

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