Converse Inc v Ramesh Ramchandani and another

Converse Inc v Ramesh Ramchandani and another

Statutory damages under s31(5) must be assessed on compensatory principles by applying the s31(6) factors and based on the evidence adduced; a plaintiff cannot recover the statutory maximum merely by adopting a foreign 'tariff' without case‑specific evidence. Where the evidence shows flagrant, organized counterfeiting, defendants benefited and deterrence is required, the court may award the statutory maximum. Applying these principles here, the court awarded SGD100,000.

Citation
[2014] SGHCR 11
Parties
Plaintiff: Converse Inc; First Defendant: Ramesh Ramchandani; Second Defendant: Fatimah bte Mohd Yusof
Court
High Court Registrar
Jurisdiction
Singapore
Judgment Date
23 May 2014
Case Number
Suit No. 828 of 2012 (AD 81 of 2013)
Procedural Posture
Trade Mark Infringement and Passing Off / Assessment of Quantum of Statutory Damages Under S31(5) Trade Marks Act
Outcome
Judgment for plaintiff; statutory damages of SGD100,000 awarded; costs fixed for assessment of damages in favour of plaintiff.
Legal Topics
Statutory Damages, Counterfeiting, Passing Off, Quantification of Damages, Deterrence
Source Language
English
Intellectual Property Trade Marks Civil Procedure Statutory Damages Counterfeiting Passing Off Quantification of Damages Deterrence

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 3 Authorities cited 4 Party arguments 2 Amounts and remedies 5
Sign in to unlock

Parties

Converse Inc

Plaintiff

Ramesh Ramchandani

First Defendant

Fatimah bte Mohd Yusof

Second Defendant

Procedural Posture

Trade Mark Infringement and Passing Off / Assessment of Quantum of Statutory Damages Under S31(5) Trade Marks Act

Legal Issues

  1. 1 Whether statutory damages under s31(5) Trade Marks Act should be awarded and in what quantum
  2. 2 Whether plaintiff must adduce evidence of loss when electing statutory damages
  3. 3 How the factors in s31(6) should be applied to determine statutory damages

Ratio Decidendi

Statutory damages under s31(5) must be assessed on compensatory principles by applying the s31(6) factors and based on the evidence adduced; a plaintiff cannot recover the statutory maximum merely by adopting a foreign 'tariff' without case‑specific evidence. Where the evidence shows flagrant, organized counterfeiting, defendants benefited and deterrence is required, the court may award the statutory maximum. Applying these principles here, the court awarded SGD100,000.

Court Disposition

Judgment for plaintiff; statutory damages of SGD100,000 awarded; costs fixed for assessment of damages in favour of plaintiff.

Orders

  • Statutory damages awarded to plaintiff in the sum of SGD100000
  • Costs of the assessment of damages fixed at SGD12000 plus reasonable disbursements payable by the defendants to the plaintiff