Case Details
- Citation: [2006] SGCA 19
- Case Number: CA 57/2006
- Decision Date: 22 June 2006
- Court: Court of Appeal of the Republic of Singapore
- Coram: Chan Sek Keong CJ; Andrew Phang Boon Leong JA
- Judges: Chan Sek Keong CJ (delivering grounds); Andrew Phang Boon Leong JA
- Plaintiff/Applicant: Da Vinci Collection Pte Ltd
- Defendant/Respondent: Richemont International SA
- Legal Areas: Injunctions (interim injunction); Trade Marks and Trade Names (infringement)
- Procedural Posture: Appeal against grant of an interim injunction restraining advertising of a composite mark in connection with the release of “The Da Vinci Code”
- Key Statutory Provisions Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed), ss 27(1) and 27(2)
- Other Statutory Provisions Mentioned (in pleadings/counterclaim): ss 22, 23, 7(6), 105 of the Trade Marks Act
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed)
- Judgment Length: 8 pages, 4,882 words
- Counsel: Tan Tee Jim SC (Lee & Lee) for the appellant; Dedar Singh Gill and Penny Leng (Drew & Napier LLC) for the respondent
- Related/Contextual Case Mentioned in Metadata: [2006] SGCA 14
Summary
Da Vinci Collection Pte Ltd v Richemont International SA [2006] SGCA 19 concerned an appeal against an interim injunction granted by a trial judge to restrain the appellant from advertising watches and watch straps using a “composite mark” in connection with the scheduled release in Singapore of the movie “The Da Vinci Code”. The respondent, Richemont, relied on its registered “name mark” DA VINCI in Class 14 for watches and watch straps and alleged infringement under ss 27(1) and 27(2) of the Trade Marks Act.
The Court of Appeal approached the appeal through the well-established interlocutory framework derived from American Cyanamid Co v Ethicon Ltd [1975] AC 396: whether there is a serious question to be tried, whether damages would be an adequate remedy, and where the balance of convenience lies. While the parties disputed whether there was a likelihood of confusion between the respondent’s DA VINCI name mark and the appellant’s composite mark (which combined DA VINCI with a device), the Court ultimately resolved the appeal without definitively deciding the “serious issue” question on confusion, because the outcome could be determined on the other interlocutory considerations.
In practical terms, the decision underscores that interim injunctions in trade mark disputes—especially those involving marketing campaigns tied to external events—turn heavily on the likely effects of the contested conduct, the adequacy of damages, and the balance of convenience, rather than solely on a visual comparison of marks at the interlocutory stage.
What Were the Facts of This Case?
The respondent, Richemont International SA, is the registered proprietor of the trade mark “IWC” and also of the name mark “DA VINCI” in Class 14 for watches and watch straps. Richemont claimed that it had sold watches bearing both the IWC and DA VINCI marks in Singapore since 1987, and that sales between 2000 and 2006 were approximately $6 million. The watches were sold at prices ranging from about $5,000 to $40,000 each through accredited agents.
The appellant, Da Vinci Collection Pte Ltd, applied on 25 March 2004 to register a composite mark in Class 14, including for watches and watch straps. The composite mark was designed for use in connection with the appellant’s “DA [device] VINCI” jewellery collection and, crucially, was advertised in Singapore in conjunction with the release of the movie “The Da Vinci Code” scheduled for 18 May 2006. The advertisement featured a diamond-encrusted watch bearing initials “DV” on the dial, and the appellant marketed the watch as part of its DA [device] VINCI collection.
Richemont commenced Suit No 800 of 2005 against the appellant for infringement of its DA VINCI name mark under ss 27(1) and 27(2) of the Trade Marks Act, seeking damages. The appellant denied infringement and counterclaimed for revocation and invalidity, including on grounds of non-use and bad faith. Separately, the trial judge had already granted summary judgment to Richemont for infringement of the DA VINCI name mark, and an injunction restraining the appellant from infringing the respondent’s registered trade mark DA VINCI by use of the name mark in relation to watches.
However, the summary judgment did not address the appellant’s use of the composite mark as part of the advertising campaign; that aspect was to proceed to trial. After the summary judgment, the appellant began advertising its watches in the manner shown in the advertisement, linking the promotion to the movie release. Richemont then applied on 10 May 2006 for an interim injunction to restrain this advertising campaign. On 15 May 2006, the trial judge granted an interim injunction in broad terms, subject to an undertaking to pay damages fortified by a banker’s guarantee of $800,000.
What Were the Key Legal Issues?
The appeal required the Court of Appeal to apply the interlocutory injunction test. Specifically, the Court had to consider: (1) whether there was a serious question to be tried; (2) whether damages would not be an adequate remedy if the injunction were not granted; and (3) where the balance of convenience lay.
Although the parties’ arguments focused on the likelihood of confusion between the respondent’s DA VINCI name mark and the appellant’s composite mark, the Court noted that the respondent’s complaint was not directed at the appellant’s use of the DV initial mark on the watch dial, nor even at the composite mark in the abstract. Rather, the complaint was directed at the use of the composite mark in the advertisement in connection with the scheduled release of “The Da Vinci Code”. The respondent’s concern was that the advertising campaign would lead potential buyers to believe that the advertised watches originated from, or were connected with, Richemont.
Accordingly, the legal issues were not merely about whether two marks were visually similar, but about whether the particular advertising context created a real risk of confusion and whether that risk warranted urgent injunctive relief. The Court also had to consider the practical consequences of allowing the campaign to proceed during the critical period leading up to the movie’s release.
How Did the Court Analyse the Issues?
The Court of Appeal began by reiterating the nature and scope of the interim injunction. The injunction was “extremely wide” in that it covered all watches and watch straps, whether or not they had any marks on the dials or backs, and whatever the marks might be. The Court emphasised that Richemont’s objective was not to stop the appellant from selling watches with any mark other than DA VINCI. Instead, Richemont sought to prevent the appellant from advertising its watches using the composite mark for the purpose of capitalising on the movie release.
In applying the American Cyanamid framework, counsel for the appellant argued that there was no serious question to be tried because the composite mark was so different visually from the respondent’s name mark that there was no likelihood of confusion among buyers. The appellant relied on differences in price, design, sales outlets, and target consumers, and also argued that the respondent had never used DA VINCI on the dial of its watches—only on the back—suggesting that DA VINCI functioned as a secondary indicator of a watch line rather than as an origin mark. The appellant further pointed to the absence of evidence of actual confusion from May 2004 until Richemont’s action in November 2005, and to the relatively small sales volume of DA VINCI watches in Singapore.
Richemont’s position was that there was a likelihood of confusion because the two marks used the words “DA VINCI” and were identical except for the device placed between “DA” and “VINCI” in the composite mark. Richemont also argued that the device was not readily pronounceable, so consumers would likely refer to and perceive the composite mark as “DA VINCI”. Richemont further submitted that its DA VINCI name mark was used as a secondary mark in the trade to indicate origin, which is consistent with how consumers may identify brands even where the mark is not displayed on the dial.
However, the Court of Appeal indicated that it did not need to decide the “serious issue” question on confusion. The Court reasoned that the substantive action would depend largely on the confusion issue, and it did not want any observations made at the interlocutory stage to be misconstrued or to influence the trial determination. The Court therefore assumed, for the purpose of analysis, that the threshold of a serious issue could be crossed, and proceeded to determine the appeal on the other interlocutory factors.
On the adequacy of damages and balance of convenience, the Court’s focus was on the effect of the advertising campaign. The movie release created a time-sensitive marketing event. If the appellant were allowed to proceed with the advertising campaign, the respondent would face the risk that consumers would be exposed to the allegedly infringing message during the critical period, potentially causing reputational harm and confusion that would be difficult to quantify after the fact. The Court treated the harm as not purely monetary and not readily compensable by damages alone, particularly given the nature of trade mark infringement and the role of consumer perception.
Conversely, the Court considered the appellant’s position that it had already incurred costs associated with the advertising campaign and that the injunction should not be granted if damages were adequate. The trial judge had required an undertaking to pay damages fortified by a banker’s guarantee of $800,000, reflecting an attempt to protect the appellant if it ultimately succeeded at trial. The Court of Appeal, while acknowledging that the injunction was broad, treated the urgency and the potential for immediate consumer confusion as significant factors tilting the balance of convenience in favour of granting interim relief.
In short, the Court’s analysis reflects a pragmatic approach: where the alleged infringement is tied to a specific, imminent event and where the likely harm involves consumer confusion and brand association, the courts may conclude that damages are not an adequate remedy and that the balance of convenience favours maintaining the status quo through an interim injunction. The Court also demonstrated caution in not prejudging the ultimate confusion question, thereby preserving the integrity of the trial process.
What Was the Outcome?
The Court of Appeal dismissed the appeal and upheld the interim injunction granted by the trial judge. The practical effect was that the appellant was restrained from advertising in any manner the composite mark in relation to watches and watch straps in conjunction with and/or in relation to the release of “The Da Vinci Code” in Singapore on 18 May 2006.
The injunction remained subject to the trial judge’s undertaking to pay damages fortified by a banker’s guarantee of $800,000. This structure aimed to balance the respondent’s need for urgent protection against the risk of wrongful restraint, while ensuring that the substantive infringement issues would be determined at trial.
Why Does This Case Matter?
Da Vinci Collection v Richemont is significant for practitioners because it illustrates how Singapore courts apply the interlocutory injunction test in trade mark disputes where the alleged infringement is embedded in marketing and publicity campaigns. The decision shows that courts will look beyond formal mark comparison and consider the real-world impact of the contested advertising—particularly where the campaign is time-bound and likely to shape consumer perceptions quickly.
The case also highlights the Court of Appeal’s approach to interlocutory reasoning in trade mark cases: even where the parties dispute likelihood of confusion, the appellate court may avoid making definitive findings on that issue at the interim stage to prevent unintended influence on the trial. This is a useful reminder for litigators that interlocutory hearings are not substitutes for full merits determination, and that careful judicial restraint may be exercised to preserve the trial’s role.
For brand owners and defendants alike, the decision underscores the importance of assessing not only whether infringement is arguable, but also whether damages would be an adequate remedy. Where the harm involves consumer confusion, brand association, and reputational effects that are difficult to quantify, interim injunctions may be more readily justified. For advertisers and retailers, the case serves as a cautionary example of how promotional tie-ins to popular culture can trigger trade mark enforcement risk, especially where the promotion uses elements closely connected to registered marks.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), ss 27(1) and 27(2)
- Trade Marks Act (Cap 332, 2005 Rev Ed), ss 22, 23, 7(6), 105 (mentioned in counterclaim context)
Cases Cited
- American Cyanamid Co v Ethicon Ltd [1975] AC 396
- The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] SGCA 14
- Baywatch Production Co Ltd v Home Video Channel (1996) 37 IPR 12
- Da Vinci Collection Pte Ltd v Richemont International SA [2006] SGCA 19 (this case)
Source Documents
This article analyses [2006] SGCA 19 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.