Clinique Laboratories v Clinique Suisse: Trademark Infringement & Passing Off

Clinique Laboratories, LLC sued Clinique Suisse Pte Ltd and Healthy Glow Pte Ltd in the High Court of Singapore, alleging trademark infringement and passing off due to the defendants' use of the "CLINIQUE SUISSE" mark. The plaintiff argued that the defendants' use of a similar mark for similar goods and services created a likelihood of confusion among consumers. The court, presided over by Lai Siu Chiu J, found in favor of the plaintiff, granting injunctions against the defendants and ordering damages to be assessed by the Registrar.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Judgment for Plaintiff

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Clinique Laboratories sued Clinique Suisse for trademark infringement and passing off, alleging unauthorized use of the CLINIQUE mark. The court ruled in favor of Clinique.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Clinique Laboratories, LLCPlaintiffCorporationJudgment for PlaintiffWon
Clinique Suisse Pte LtdDefendantCorporationInjunction Granted Against DefendantLost
Healthy Glow Pte LtdDefendantCorporationInjunction Granted Against DefendantLost

3. Judges

Judge NameTitleDelivered Judgment
Lai Siu ChiuJudgeYes

4. Counsels

Counsel NameOrganization
Ang Hsueh Ling CelesteWong & Leow LLP
Leck Kwang Hwee AndyWong & Leow LLP
Ho WeiyunWong & Leow LLP
Kelvin Lee Ming HuiSamuel Seow Law Corporation
Pak WaltonSamuel Seow Law Corporation

4. Facts

  1. Clinique Laboratories, LLC owns the registered "CLINIQUE" trademark.
  2. Clinique Suisse Pte Ltd used the name "Clinique Suisse" for its business.
  3. Clinique Suisse Business sold skin and body care products bearing the sign “CLINIQUE SUISSE”.
  4. Clinique Suisse Business offered skin care treatment services under the Clinique Suisse Mark.
  5. Clinique Suisse operated a website www.cliniquesuisse.com.
  6. The packaging of the defendants’ products bore an uncanny resemblance to that of the plaintiff’s products.
  7. The first defendant had applied to register the Clinique Suisse Mark as a trade mark under Class 03 and Class 44.

5. Formal Citations

  1. Clinique Laboratories, LLC v Clinique Suisse Pte Ltd and another, Suit No 978 of 2008, [2010] SGHC 189

6. Timeline

DateEvent
Clinique Laboratories, LLC established
Clinique Mark first used in Singapore
Healthy Glow Pte Ltd incorporated
Clinique Suisse Pte Ltd incorporated
Clinique Suisse Pte Ltd applied to register the Clinique Suisse Mark
Ministry of Health issued license to Dr. Wong Yoke Meng
Online purchase of Clinique Suisse product made
Judgment delivered in favor of Clinique Laboratories, LLC
Defendants ordered to pay costs to the plaintiff

7. Legal Issues

  1. Trademark Infringement
    • Outcome: The court ruled that the defendant's use of the 'Clinique Suisse' mark infringed the plaintiff's registered trademarks due to the similarity of the marks, the related goods/services, and the likelihood of consumer confusion.
    • Category: Substantive
    • Sub-Issues:
      • Similarity of Marks
      • Similarity of Goods/Services
      • Likelihood of Confusion
  2. Passing Off
    • Outcome: The court found that the defendant's actions constituted passing off, as the plaintiff had established goodwill in its brand, the defendant's actions misrepresented their products as associated with the plaintiff, and this caused damage to the plaintiff's goodwill.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage to Goodwill

8. Remedies Sought

  1. Injunction
  2. Damages
  3. Assignment of Domain Name

9. Cause of Actions

  • Trademark Infringement
  • Passing Off

10. Practice Areas

  • Trademark Infringement
  • Commercial Litigation

11. Industries

  • Cosmetics
  • Healthcare

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
City Chain Stores (S) Pte Ltd v Louis Vuitton MalletierN/AYes[2010] 1 SLR 382SingaporeCited for the principle that in assessing likelihood of confusion, the court may ascertain who the target consumers are.
Jumbo Seafood Pte Ltd and Anor v Hong Kong Jumbo Seafood Restaurant Pte LtdN/AYes[1997] 3 SLR(R) 878SingaporeCited as evidence indicative of confusion where 40% of survey interviewees thought the defendant's restaurant was associated with the plaintiff's restaurant.
Novelty Pte Ltd v Amanresorts Ltd and anotherCourt of AppealYes[2009] 3 SLR(R) 216SingaporeCited for the principles of blurring and tarnishment as means by which goodwill can be damaged.
Unique Frischkosmetik, Irmgard Schade Naturkosmetik v Clinique Laboratories Inc.Federal Commission for Appeals in Intellectual Property MattersYesMA-WI 42/96SwitzerlandCited for the observation that the Clinique Mark had attained a high degree of fame such that it was no longer understood as corresponding to the English word “clinic” when used as a sign on a cosmetic product.
In the matter of Application No. 2460800 by Ozone UK Limited to register the trade mark in Class 3 and In the matter of Opposition thereto under No. 96252 by Ozone Laboratories LimitedN/AYesO-245-09United KingdomCited for the proposition that the gap between pharmaceuticals and cosmetics is becoming increasingly blurred.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks ActSingapore

15. Key Terms and Keywords

15.1 Key Terms

  • Clinique Mark
  • Clinique Suisse Mark
  • Trademark Infringement
  • Passing Off
  • Likelihood of Confusion
  • Goodwill
  • Blurring
  • Tarnishment
  • Cosmeceuticals

15.2 Keywords

  • trademark infringement
  • passing off
  • Clinique
  • Clinique Suisse
  • cosmetics
  • skincare
  • Singapore
  • intellectual property

17. Areas of Law

Area NameRelevance Score
Trademarks95
Trademark Infringement95
Passing Off70
Corporate Law10
Business Law5

16. Subjects

  • Trademark
  • Intellectual Property
  • Cosmetics
  • Healthcare