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: 02 July 2010
- Judge: Lai Siu Chiu J
- Case Number: Suit No 978 of 2008
- Tribunal/Coram: High Court; Coram: Lai Siu Chiu J
- Plaintiff/Applicant: Clinique Laboratories, LLC
- Defendant/Respondent: Clinique Suisse Pte Ltd and another (Healthy Glow Pte Ltd)
- Legal Areas: Trade Marks and Trade Names – infringement; passing off
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”)
- Key Provisions: s 27(2), s 27(3), s 55(2)–(4)
- Orders/Relief Sought: Injunctions under s 55 TMA; damages to be assessed by the Registrar; costs
- Trial Outcome (at first instance): Plaintiff’s claim allowed against both defendants
- Appeal Mentioned: Civil Appeal No 83 of 2010
- 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)
- Judgment Length: 18 pages, 9,578 words
- Trade Marks at Issue (examples): T98/10162Z (Class 03); T02/00465B (Class 44)
- Notable Signs/Identifiers Alleged to Infringe: “CLINIQUE SUISSE” (business name and trading name); “CLINIQUE SUISSE” on products and promotional materials; domain name www.cliniquesuisse.com; website operated through that domain
Summary
In Clinique Laboratories, LLC v Clinique Suisse Pte Ltd and another ([2010] SGHC 189), the High Court granted extensive injunctive relief to the well-known cosmetics and skincare brand owner, Clinique Laboratories, LLC (“Clinique Laboratories”). The dispute concerned the defendants’ adoption and use of the sign “CLINIQUE SUISSE” in connection with a medical clinic business, the sale of skin and body care products, and the provision of skin care treatment services. The plaintiff also challenged the defendants’ use of the internet domain name www.cliniquesuisse.com and the operation of a website promoting and selling products and services under that sign.
The court found infringement of the plaintiff’s registered trade marks under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), and also granted injunctions to restrain passing off and related conduct. The judgment is notable for the breadth of the orders: the court not only restrained trade mark infringement and passing off, but also required the defendants to take steps to transfer the domain name to the plaintiff, withdraw certain trade mark applications, remove signage and stationery bearing the infringing sign, and cease establishing or operating websites using the domain name or registering confusingly similar domain names.
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. At the material time, the plaintiff was the registered proprietor of multiple trade marks in Singapore containing the word “CLINIQUE”, including, among others, Trade Mark Registration No T02/00465B (Class 44) and Trade Mark Registration No T98/10162Z (Class 03).
Class 03 covered cosmetics and toiletries, perfumery, non-medicated preparations for care of hair, skin and body, and essential oils. Class 44 covered beauty consultation services and beauty salon and treatment services, including colour analysis, aromatherapy and reflexology products, and related beauty treatment and personal care services. The court accepted that the Clinique Mark formed the most distinguishing feature of the plaintiff’s corporate name and trading style and that it was used worldwide in connection with a wide range of skin and body care products and beauty consultation/treatment services.
The first defendant, Clinique Suisse Pte Ltd, was incorporated in or around November 2006 and operated from 290 Orchard Road #08-01/02, The Paragon, Singapore. The second defendant, Healthy Glow Pte Ltd, was incorporated in or around July 1998 and operated from 7500A Beach Road #13-320, The Plaza, Singapore. The plaintiff’s pleaded case was that both defendants, through their business activities and identifiers, infringed the plaintiff’s registered trade marks without consent.
Specifically, the plaintiff alleged that the defendants infringed by: (1) incorporating the first defendant under the name “Clinique Suisse Pte Ltd”; (2) using 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; (3) selling skin and body care products bearing the sign “CLINIQUE SUISSE” (the “Clinique Suisse Mark”) through the Clinique Suisse Business; (4) offering and/or supplying skin care treatment services under the Clinique Suisse Mark; and (5) registering the internet domain name www.cliniquesuisse.com and operating a website through that domain to promote the business and sell products, with actual sales taking place on 3 April 2009.
What Were the Key Legal Issues?
The central legal issue was whether the defendants’ use of “CLINIQUE SUISSE” and related identifiers infringed the plaintiff’s registered trade marks under s 27(2) 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, used in relation to goods or services identical with or similar to those for which the mark is registered, such that there exists a likelihood of confusion on the part of the public. Under s 27(3), infringement of a well-known mark in Singapore requires, in addition to similarity and likelihood of confusion, that the use indicates a connection between the goods/services and the proprietor and that the proprietor’s interests are likely to be damaged.
A second issue concerned the scope of injunctive relief and whether the defendants’ conduct amounted to passing off or an attempt to pass off. The plaintiff sought injunctions against passing off goods and services as those of the plaintiff, or as being associated with, licensed or endorsed by the plaintiff, by representing or acting through dissemination of information and use of signages, advertisements, packaging, labels, and commercial documents in a manner that induces such belief.
Finally, the court had to consider the appropriate remedial measures for online and branding conduct, including whether it was proper to order transfer of the domain name, cessation of website operation, and restrictions on future domain registrations containing “CLINIQUE” or confusingly similar terms.
How Did the Court Analyse the Issues?
The court began by setting out the statutory framework. Section 27 of the TMA was treated as the key infringement provision. The court reproduced the text of s 27(2) and s 27(3), emphasising that infringement under s 27(2) requires a likelihood of confusion in relation to identical or similar goods or services, while infringement under s 27(3) for well-known marks additionally requires that the use indicates a connection between the goods/services and the proprietor and that the proprietor’s interests are likely to be damaged.
In parallel, the court referred to s 55(2)–(4) of the TMA, which provides for injunctive protection of well-known trade marks. The court’s inclusion of these provisions signals that the plaintiff’s case was not limited to ordinary infringement in the same or similar classes, but also relied on the enhanced protection accorded to well-known marks. The court’s approach reflects a common structure in trade mark litigation: first establish infringement under the relevant limbs of s 27, then determine the appropriate scope of injunctive relief under s 55.
On the facts, the defendants’ conduct was analysed through the lens of “use in the course of trade” and the similarity of the signs. The defendants did not merely adopt a name in isolation; they incorporated the first defendant under a name containing “Clinique Suisse”, used “CLINIQUE SUISSE” as a trading name at a clinic, and used the sign across commercial materials such as business cards, carrier bags, packaging, labels, sales invoices and price lists. They also sold products bearing the sign and offered treatment services under that sign. These are classic indicia of trade mark use, because they function as identifiers of commercial origin and branding in the marketplace.
Crucially, the court also treated the online presence as part of the infringing conduct. The registration of www.cliniquesuisse.com and operation of a website promoting services and products under the Clinique Suisse branding, with actual sales occurring, supported the conclusion that the defendants were actively trading under the infringing sign. This matters because trade mark infringement is not confined to physical storefronts; the TMA’s “in the course of trade” requirement can be satisfied by online promotion and sales where the sign is used to attract customers and communicate commercial origin.
Although the extract provided is truncated after the statutory provisions, the court’s final orders demonstrate the legal conclusions reached. The court granted injunctions restraining infringement of the plaintiff’s registered trade marks, including Trade Mark Registration Nos T98/10162Z and T02/00465B, and restrained “colourable imitation”. It also granted passing off injunctions covering both products and treatment services, including representations made through signages, advertisements, packaging, labels, sales invoices and price lists. This indicates that the court found not only statutory infringement but also the common law tort of passing off (or at least an attempt to pass off) based on the likelihood that consumers would be misled into believing there was an association, licence or endorsement by the plaintiff.
Finally, the court’s remedial reasoning is reflected in the breadth and specificity of the injunctions. The orders were designed to prevent recurrence and to remove the commercial infrastructure that enabled confusion—particularly the domain name and website. The court required steps to transfer the domain name to the plaintiff and to withdraw certain trade mark applications, and it imposed restrictions on future domain registrations containing “CLINIQUE” or confusingly similar terms. This remedial architecture aligns with the principle that injunctive relief should be effective, not merely declaratory, and should address the practical means by which infringement and passing off could continue.
What Was the Outcome?
The High Court allowed the plaintiff’s claim against both defendants after a four-day trial. The court granted a perpetual injunction restraining the defendants, jointly and severally, from infringing the plaintiff’s registered trade marks (including T98/10162Z and T02/00465B) and from directing, causing, procuring, instigating, enabling or assisting others to do so. The injunction also restrained passing off or attempting to pass off the defendants’ skin and body care products as those of the plaintiff, or as being associated with, licensed or endorsed by the plaintiff, and similarly restrained passing off of skin care treatment services as being developed and/or operated by, or otherwise associated with, or licensed or endorsed by, the plaintiff.
In addition, the court granted further injunctions under s 55 of the TMA to restrain use of the Clinique Suisse Mark and the business identifier “CLINIQUE SUISSE” (or essential parts identical or similar to the Clinique Mark). The defendants were ordered to take steps to assign the domain name www.cliniquesuisse.com to the plaintiff, withdraw specified trade mark applications, and cease using the sign “CLINIQUE SUISSE” on signage and business stationery. The court also ordered damages to be assessed by the Registrar, with interest and costs of such assessment reserved to the Registrar, and it ordered costs of the action on a standard basis (with disbursements reimbursed on a reimbursement basis).
Why Does This Case Matter?
This case is significant for practitioners because it illustrates how Singapore courts approach infringement where a defendant adopts a closely related branding strategy across multiple commercial touchpoints—company name, trading name, product labelling, promotional materials, and online presence. The court’s willingness to treat domain name registration and website operation as part of the infringing “use in the course of trade” reinforces that brand owners can seek effective remedies against online conduct that creates confusion about commercial origin or endorsement.
From a trade mark strategy perspective, the case also demonstrates the value of pleading both statutory infringement and passing off. The court’s orders show that even where trade mark infringement is established, passing off relief can be granted to address broader consumer deception concerns, including misrepresentations that induce belief in association, licensing or endorsement. This dual-track approach can be particularly useful where the defendant’s conduct is designed to capture goodwill and consumer perception rather than to compete on independent branding.
Finally, the remedial scope is a practical takeaway. The court did not limit relief to “stop using the mark”. Instead, it required concrete steps: transfer of the domain name, withdrawal of trade mark applications, removal of signage and stationery, and restrictions on future domain registrations. For lawyers advising brand owners, this supports the proposition that courts may craft tailored injunctions that neutralise the defendant’s ability to continue trading under the confusing identifier. For defendants, it underscores the risk that adopting a confusingly similar brand name can trigger not only liability but also extensive operational constraints.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), s 27(2) [CDN] [SSO]
- Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), s 27(3) [CDN] [SSO]
- Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), s 55(2)–(4) [CDN] [SSO]
Cases Cited
- [2010] SGHC 189 (the present case)
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.