Case Details
- Citation: [2010] SGHC 189
- Title: Clinique Laboratories, LLC v Clinique Suisse Pte Ltd and another
- Court: High Court of the Republic of Singapore
- Date of Decision: 02 July 2010
- Judge: Lai Siu Chiu J
- Case Number: Suit No 978 of 2008
- Coram: Lai Siu Chiu J
- Plaintiff/Applicant: Clinique Laboratories, LLC
- Defendants/Respondents: Clinique Suisse Pte Ltd; Healthy Glow Pte Ltd
- Legal Area: Trade Marks and Trade Names — infringement
- Nature of Proceedings: Action for trade mark infringement and, in the alternative, passing off; remedies included perpetual injunctions and damages to be assessed
- Key Statute Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”)
- Specific Provisions Referenced: ss 27(2), 27(3), 55
- Judgment Length: 18 pages, 9,434 words
- Counsel for Plaintiff: Leck Kwang Hwee Andy, Ang Hsueh Ling Celeste and Ho Weiyun (Wong & Leow LLP)
- Counsel for Defendants: Kelvin Lee Ming Hui and Pak Walton (Samuel Seow Law Corporation)
- Procedural Note: Defendants appealed (Civil Appeal No 83 of 2010)
Summary
Clinique Laboratories, LLC (“Clinique Laboratories”) brought an action in the High Court against Clinique Suisse Pte Ltd (“Clinique Suisse”) and Healthy Glow Pte Ltd for trade mark infringement and passing off. The dispute centred on the defendants’ adoption and use of the sign “CLINIQUE SUISSE” in connection with a medical clinic, the sale of skin and body care products, and the provision of skin care treatment services. The plaintiff relied on its registered trade marks containing the word “CLINIQUE”, including Trade Mark Registration No T98/10162Z (Class 3) and Trade Mark Registration No T02/00465B (Class 44), and also invoked the statutory protection for well-known marks.
The court (Lai Siu Chiu J) found that the defendants’ conduct infringed the plaintiff’s registered trade marks under s 27(2) and/or s 27(3) of the Trade Marks Act. The court also granted extensive perpetual injunctions under s 55 of the TMA, restraining both the use of infringing signs and business identifiers and the operation of the defendants’ internet domain and website. In addition, the court granted injunctions to restrain passing off of both goods and services, reflecting a comprehensive approach to preventing confusion and reputational harm.
What Were the Facts of This Case?
The plaintiff, Clinique Laboratories, LLC, was established in 1968 and is a subsidiary of The Estee Lauder Companies Inc. It manufactures and markets 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. The plaintiff’s brand is not confined to product sales; it is also used worldwide in connection with beauty consultation and treatment services.
At the material time, the plaintiff was the registered proprietor in Singapore of multiple trade marks containing “CLINIQUE”. The judgment highlights, in particular, Trade Mark No T98/10162Z in Class 3 (covering cosmetics, toiletries, perfumery, non-medicated preparations for care of hair, skin and body, and essential oils) and Trade Mark No T02/00465B in Class 44 (covering beauty consultation services, beauty salon and beauty treatment services, make-up services, massage services, hair care services, manicure and pedicure services, cosmetic treatment services, and related information services). The Clinique Mark was described as the most distinguishing feature of the plaintiff’s corporate name and trading style, and as a mark registered in over 20 countries.
The first defendant, Clinique Suisse Pte Ltd, was incorporated in or around November 2006. Its registered office address was at 290 Orchard Road #08-01/02, The Paragon, Singapore. The second defendant, Healthy Glow Pte Ltd, was incorporated in or around July 1998 and had its registered office at 7500A Beach Road, #13-320, The Plaza, Singapore. The plaintiff’s case was that both defendants were involved in the infringing activities, whether directly or through the operation of the Clinique Suisse business.
The plaintiff alleged multiple infringing acts. First, it complained about the incorporation of the first defendant under the name “Clinique Suisse Pte Ltd”. Second, it alleged that the defendants used the trading name “CLINIQUE SUISSE” at a medical clinic (the “Clinique Suisse Business”) located at the first defendant’s registered address and on business cards, carrier bags, packaging, labels, sales invoices and price lists. Third, it alleged that the defendants sold skin and body care products bearing the sign “CLINIQUE SUISSE” through the Clinique Suisse Business. Fourth, it alleged that the defendants offered and/or supplied skin care treatment services under the Clinique Suisse Mark. Fifth, it alleged that the defendants registered the internet domain name www.cliniquesuisse.com and operated a website promoting the Clinique Suisse Business’ services and a wide range of skin and body care products, and that sales were actually made through the website on 3 April 2009.
What Were the Key Legal Issues?
The primary legal issue was whether the defendants’ use of “CLINIQUE SUISSE” and related identifiers infringed the plaintiff’s registered trade marks. The plaintiff framed its infringement claim under s 27(2) and/or s 27(3) of the TMA. Under s 27(2), infringement turns on the use in the course of trade of a sign similar to the registered trade mark for goods or services identical with or similar to those for which the mark is registered, coupled with a likelihood of confusion. Under s 27(3), the plaintiff must show that its mark is well known in Singapore and that the defendants used an identical or similar sign in relation to dissimilar goods or services, where the use indicates a connection, there is a likelihood of confusion, and the plaintiff’s interests are likely to be damaged.
A second issue concerned the scope of injunctive relief. The plaintiff sought an injunction under s 55 of the TMA to restrain the defendants from using infringing marks and business identifiers, including the Clinique Suisse Mark and the business identifier “CLINIQUE SUISSE”, and from using the internet domain and operating the website. The court therefore had to consider not only liability but also the breadth and practical enforceability of the orders.
Third, the plaintiff advanced an alternative claim in passing off. The issue here was whether the defendants’ conduct amounted to passing off goods and services as those of the plaintiff (or as being associated with, licensed by, or endorsed by the plaintiff), by representing to the public through signage, advertisements, packaging, labels, invoices and price lists, and through the website, in a manner likely to induce such belief.
How Did the Court Analyse the Issues?
The court began with the statutory framework for trade mark infringement. Section 27(2) of the TMA provides that a person infringes a registered trade mark if, without the proprietor’s consent, the person uses in the course of trade a sign where the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, and there exists a likelihood of confusion. Section 27(3) extends protection to well-known marks in Singapore, allowing infringement even where the goods or services are not similar, provided that the use indicates a connection, confusion is likely, and the proprietor’s interests are likely to be damaged.
On the facts, the defendants’ use of “CLINIQUE SUISSE” was not a mere incidental reference. It was used as a trading name and as a brand identifier across multiple commercial touchpoints: the clinic’s signage, business cards, carrier bags, packaging, labels, sales invoices and price lists. It was also used to sell products and to market treatment services. The court’s approach reflects the reality that trade mark infringement analysis is grounded in how the relevant public would perceive the sign in the context of trade. The defendants’ adoption of a sign that incorporates the distinctive word “CLINIQUE” was central to the likelihood of confusion inquiry.
Although the extracted judgment does not reproduce the full evidential discussion, the court’s ultimate findings indicate that the similarity between “CLINIQUE” and “CLINIQUE SUISSE” was sufficient, in the relevant market context, to satisfy the statutory requirements. The plaintiff’s registrations covered cosmetics and non-medicated preparations for care of hair, skin and body, as well as essential oils (Class 3), and beauty consultation and treatment services (Class 44). The defendants’ activities—selling skin and body care products and offering skin care treatment services—fell squarely within those categories, supporting infringement under s 27(2). The court also treated the plaintiff’s mark as deserving of heightened protection, consistent with the well-known mark analysis under s 27(3), given the plaintiff’s long-standing use in Singapore and worldwide reputation.
In relation to s 27(3), the court would have required the plaintiff to establish that the Clinique Mark was well known in Singapore and that the defendants’ use of an identical or similar sign in relation to goods or services not necessarily identical to the registered specifications would nonetheless indicate a connection between the defendants’ offerings and the plaintiff. The court’s reasoning, as reflected in the breadth of the injunctions, suggests that it accepted that the defendants’ branding strategy was likely to lead the public to believe there was an association, licensing, endorsement, or other commercial connection with the plaintiff. The court also granted relief for passing off, which aligns with the same underlying concern: consumer confusion and misattribution of origin or affiliation.
The court’s analysis of passing off reinforced the trade mark findings. It granted injunctions restraining the defendants from passing off the defendants’ skin and body care products as those of the plaintiff, or as being otherwise associated with, licensed or endorsed by the plaintiff, and from passing off skin care treatment services as being developed and/or operated by, or otherwise associated with, or licensed or endorsed by the plaintiff. The court’s orders specified that the passing off should be restrained by preventing representations through dissemination of information, including signage, advertisements, carrier bags, packaging, labels, sales invoices and price lists. This indicates that the court viewed the defendants’ entire marketing and commercial presentation as part of the misrepresentation risk.
Finally, the court addressed the internet dimension. The defendants’ registration of www.cliniquesuisse.com and operation of a website promoting services and products bearing the Clinique Suisse Mark, with actual sales occurring, were treated as part of the infringing and passing off conduct. The court therefore ordered not only cessation of the domain and website use but also restrictions on future domain registrations containing “CLINIQUE” or confusingly similar terms. This demonstrates that the court treated online branding and e-commerce channels as integral to the “use in the course of trade” analysis.
What Was the Outcome?
The court allowed the plaintiff’s claim against both defendants after a four-day trial and granted extensive perpetual injunctions. The injunctions restrained the defendants, jointly and severally, from infringing the plaintiff’s registered trade marks (Trade Mark Registration Nos T98/10162Z and T02/00465B) and from passing off both goods and services as those of the plaintiff or as being associated with, licensed or endorsed by the plaintiff. The orders also covered conduct that would enable or assist others to commit the infringing or passing off acts.
Under s 55 of the TMA, the court granted further perpetual injunctions restraining the defendants from using, in the course of trade, the Clinique Suisse Mark or any mark similar to the Clinique Mark, and from using the business identifier “CLINIQUE SUISSE” or similar identifiers. The court also ordered steps to transfer the internet domain name www.cliniquesuisse.com to the plaintiff, withdrawal of certain trade mark applications, and cessation of domain and website operation. Damages were awarded to be assessed by the Registrar, with interest and costs of such assessment reserved to the Registrar, and the defendants were ordered to pay the plaintiff costs on a standard basis (with disbursements reimbursed on a reimbursement basis).
Why Does This Case Matter?
This decision is significant for practitioners because it illustrates how Singapore courts approach infringement where a defendant adopts a sign that “piggybacks” on a distinctive and well-established brand word. The case demonstrates that infringement analysis is not limited to identical copying; it extends to signs that are similar and used in a manner likely to cause confusion in the relevant market context. The court’s willingness to grant wide-ranging injunctions underscores that once confusion and misrepresentation risks are established, the remedial response can be comprehensive.
From a trade mark strategy perspective, the case also highlights the practical importance of the “well-known mark” framework. Where a mark is well known in Singapore, s 27(3) can provide protection even in circumstances involving dissimilar goods or services, provided that the statutory connection, confusion, and likely damage requirements are satisfied. The court’s orders—particularly those restraining online branding and future domain registrations—reflect an understanding that well-known marks are vulnerable to dilution and reputational harm through association.
For enforcement and litigation planning, the case is a strong authority on the breadth of injunctive relief under s 55. The court did not merely restrain the defendants from using particular marks; it required domain transfer, withdrawal of trade mark applications, removal of signage and stationery, and return of infringing goods to the supplier. This signals that courts may tailor orders to eliminate the operational infrastructure enabling infringement and passing off, including e-commerce channels.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed)
- Section 27(2)
- Section 27(3)
- Section 55
Cases Cited
- [2010] SGHC 189 (as provided in the metadata)
Source Documents
This article analyses [2010] SGHC 189 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.