Clinique Laboratories, LLC v Clinique Suisse Pte Ltd and another

• Jurisdiction: Singapore
• Judge: Lai Siu Chiu J
• Judgment Date: 02 July 2010
• Neutral Citation: [2010] SGHC 189
• Plaintiff Counsel: Leck Kwang Hwee Andy, Ang Hsueh Ling Celeste and Ho Weiyun (Wong & Leow LLP)
• Docket Number: Suit No 978 of 2008
• Date: 02 July 2010
• Hearing Date: 26 April 2010,27 April 2010,28 April 2010,30 April 2010
• Subject Matter: infringement,TRADE MARKS AND TRADE NAMES
• Year: 2010
• Citation: [2010] SGHC 189
• Defendant Counsel: Kelvin Lee Ming Hui and Pak Walton (Samuel Seow Law Corporation)
• Court: High Court (Singapore)
• Published date: 25 August 2010

Lai Siu Chiu J: Introduction

In this action, Clinique Laboratories, LLC (“the plaintiff”) sued two companies Clinique Suisse Pte Ltd (“the first defendant”) and Healthy Glow Pte Ltd (“the second defendant”) for trademark infringement. The plaintiff was established in 1968 and is a subsidiary of The Estee Lauder Companies Inc. (“Estee Lauder”) which is one of the world’s leading manufacturers and marketers of skin care, make-up, hair and fragrance products. The plaintiff’s products are sold under the “CLINIQUE” Mark (“the Clinique Mark”). The Clinique Mark was first used by the plaintiff in 1968 and in Singapore in 1976. At all material times, the plaintiff was the registered proprietor of, amongst others, the following trade marks in Singapore (collectively, the “plaintiff’s Registered Trade Marks”):

Trade Mark No.	Mark	Class / Specification
T98/10162Z		Class 03: Cosmetics; toiletries; perfumery; non-medicated preparations for care of hair, skin and body; essential oils.
T02/00465B		Class 44: Beauty consultation services regarding the selection and use of personal care products, cosmetics, make-up, toiletries, perfumery, bath and body products, skin care products, hair care products and beauty treatments, colour analysis and personal appearance, aromatherapy and reflexology products; beauty salon services, beauty treatment services, make-up services, massage services, hair care services, manicure services, pedicure services, cosmetic treatment services: provision of information concerning color analysis, personal care products, cosmetics, toiletries, perfumery, bath and body products, skin care products, hair care products and beauty treatments and personal appearance, including the selection and use of such products.

The plaintiff also owns in Singapore numerous registered and pending marks which contain the word “CLINIQUE”. The Clinique Mark forms the most distinguishing feature of the plaintiff’s corporate name and trading style and has been registered in the trade mark registries of over 20 countries. It has been used and is being used worldwide in connection with a wide range of skin and body care products as well as the provision of beauty consultation/treatment services.

The first defendant is a private limited company, having its registered office address at 290 Orchard Road #08-01/02, The Paragon, Singapore 238859. It was incorporated in or around November 2006 with the name “Clinique Suisse Pte Ltd”. The second defendant is a private limited company, having its registered office address at 7500A Beach Road, #13-320, The Plaza, Singapore 199591. It was incorporated in or around July 1998 with the name “Healthy Glow Pte Ltd”.

In this action, the claim was that the plaintiff’s Registered Trade Marks had been infringed under s 27(2) or s 27(3) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”) by either or both defendants through the use, in the course of trade in Singapore and without the plaintiff’s consent, of signs or marks similar to the plaintiff’s Registered Trade Marks. In particular, the plaintiff referred to the following acts of infringement: (1) the incorporation of the first defendant with the name “Clinique Suisse Pte Ltd”; (2) the use of the trading name “CLINIQUE SUISSE” at a medical clinic (“the Clinique Suisse Business”) located at the registered address of the first defendant and on business cards, carrier bags, packaging, labels, sales invoices and price lists of the Clinique Suisse Business; (3) the sale of skin and body care products bearing the sign “CLINIQUE SUISSE” (“the Clinique Suisse Mark”) by the Clinique Suisse Business; (4) the offer and/or supply of skin care treatment services under the Clinique Suisse Mark by the Clinique Suisse Business; and (5) the registration of an internet domain name www.cliniquesuisse.com and the operation of a website using the said domain name (“the Clinique Suisse Website”) through which the Clinique Suisse Business’ services and a wide range of skin and body care products bearing the Clinique Suisse Mark were promoted and through which a sale of such products had actually taken place on 3 April 2009. The plaintiff also sought an injunction, pursuant to s 55 of the TMA, against the defendants’ use of any mark or business identifier comprising the Clinique Suisse Mark or any mark or business identifier which was identical with or similar to the plaintiff’s Clinique Mark in the course of trade or business. Further, or in the alternative, the plaintiff claimed that either or both of the defendants had or had conspired to pass off or attempt to pass off goods/products not of the plaintiff’s manufacture or origin as and for the goods/products of the plaintiff.

Decision

On 30 April 2010 after a four day trial, I allowed the plaintiff’s claim against both defendants and made the following orders: (a) An injunction was granted to perpetually restrain the defendants, jointly and severally, by themselves, their respective directors, officers, servants or agents or any of them or otherwise howsoever, from doing any of the following acts: (i) Infringing the plaintiff’s Registered Trade Marks (Trade Mark Registration Nos. T98/10162Z and T02/00465B) and/or any colourable imitation thereof, and/or from directing, causing, procuring, instigating, enabling or assisting others to do so; (ii) Passing off or attempting to pass off or causing, enabling or assisting others to pass off the skin and body care products of the first defendant and/or second defendant as and for goods/products of the plaintiff, or as being otherwise associated with, or licensed or endorsed by, the plaintiff in any way howsoever by representing or acting by means of the dissemination of information, use and/or issue of signages, advertisements, carrier bags, packaging, labels, sales invoices or price lists or otherwise in a manner that induces such belief; (iii) Passing off or attempting to pass off or causing, enabling or assisting others to pass off the skin care treatment services of the first defendant and/or second defendant as being developed and/or operated by, or otherwise associated with, or licensed or endorsed by, the plaintiff by representing or acting by means of the dissemination of information, use and/or issue of signages, advertisements, carrier bags, packaging labels, sales invoices or price lists or otherwise in a manner that induces such belief. (b) An injunction, pursuant to s 55 TMA, was granted to perpetually restrain the defendants, jointly and severally, by themselves, their respective directors, officers, servants or agents, or any of them or otherwise howsoever, from: (i) Using, in the course of trade, the Clinique Suisse Mark or any mark which, or an essential part of which, is identical with or similar to the plaintiff’s Clinique Mark (as defined in paragraph 3 of the Statement of Claim (Amendment No. 2) – ie, the mark under which the plaintiff’s products are sold); and/or (ii) Using the business identifier “CLINIQUE SUISSE” or any business identifier which, or an essential part of which, is identical with or similar to the plaintiff’s Clinique Mark. (c) The defendants, jointly and severally, were to take all such steps, including but not limited to the completion and execution of documents and the paying of fees as are within their power or control, and as may be necessary to effect, promote and/or facilitate the: (i) Assignment of the registration of the internet domain name www.cliniquesuisse.com to the plaintiff; (ii) Withdrawal of Trade Mark Application Numbers T07/15273J and T07/15272B from the Singapore Trade Mark Register on or before 6 May 2010, failing which the Registrar of Trade Marks would be directed to cancel and expunge the said applications from the register. (d) An injunction was granted to perpetually restrain the defendants, jointly and severally, by themselves, their respective servants, agents or otherwise howsoever, from doing any of the following acts: (i) Using the internet domain name www.cliniquesuisse.com; (ii) Establishing or operating a website at www.cliniquesuisse.com; (iii) Offering for sale or assignment or transfer or assigning or transferring the registration of the internet domain name www.cliniquesuisse.com to any other entity than the plaintiff; (iv) Relinquishing the registration for the internet domain name www.cliniquesuisse.com without first having given 7 days notice in writing to the plaintiff’s solicitors of their intention to do so; (v) Registering any internet domain name which included the word “CLINIQUE” or any word confusingly similar thereto or any combination of words that are similar thereto; and (vi) Enabling, assisting, causing, procuring or authorising any person other than the plaintiff to do any of the acts aforesaid. (e) The defendants would pay the plaintiff damages to be assessed by the Registrar, with interest and costs of such assessment to be reserved to the Registrar. (f) The defendants were to remove and cease all use of the sign “CLINIQUE SUISSE”, including use on signage and business stationery, on or before 13 May 2010. (g) The defendants were to return to their supplier, One World Australasia Pte Ltd, products bearing the Clinique Suisse Mark, which use or sale or dealing therewith by the first and/or second defendants would offend against the foregoing injunctions.

On 14 May 2010, I ordered that the defendants pay the plaintiff costs of the action on a standard basis, save that all disbursements incurred by the plaintiff would be paid by the defendants to the plaintiff on a reimbursement basis.

The defendants have appealed against my judgment (in Civil Appeal No. 83 of 2010) and I now set out the grounds therefor.

The law

Section 27 of the TMA sets out when a person has infringed a registered trade mark. It reads:

(2) A person infringes a...