Dr. Babor v Sante De Beaute: Groundless Threat of Trade Mark Infringement

Dr. Babor GmbH & Co and His Bounty Associates Pte Ltd initially sued Sante De Beaute Pte Ltd in the High Court of Singapore for trade mark infringement and passing off. Sante De Beaute counterclaimed against His Bounty for groundless threat of trade mark infringement. The initial claims were withdrawn, and the court, presided over by Justice Chan Seng Onn, ruled on 2018-07-12 that His Bounty's threat was justified, dismissing Sante De Beaute's counterclaim.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Sante De Beaute's claim in groundless threat fails.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

The High Court held that His Bounty's threat to sue Sante De Beaute for trade mark infringement was justified, dismissing Sante's counterclaim for groundless threat.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Dr. Babor GmBH & Co. KGPlaintiffCorporationClaim WithdrawnWithdrawn
His Bounty Associates Pte LtdPlaintiff, Defendant in CounterclaimCorporationCounterclaim DismissedDismissed
Sante De Beaute Pte LtdDefendant, Plaintiff in CounterclaimCorporationCounterclaim DismissedLost

3. Judges

Judge NameTitleDelivered Judgment
Chan Seng OnnJudgeYes

4. Counsels

Counsel NameOrganization
Lim Jun Hao AlvinDentons Rodyk & Davidson LLP
Lee Su Yee CatherineDentons Rodyk & Davidson LLP
Dhanwant SinghS K Kumar Law Practice LLP
Selvaraj ChidambaramApex Law LLC

4. Facts

  1. Dr Babor is the registered proprietor of the trade mark “BABOR”.
  2. His Bounty is the sole distributor of Babor products in Singapore.
  3. Sante operates beauty salons in Singapore.
  4. His Bounty sent a Letter of Demand to Sante alleging trade mark infringement.
  5. Sante counterclaimed against His Bounty for groundless threat of trade mark infringement.
  6. His Bounty withdrew the trade mark infringement claim.
  7. Sante continued with the counterclaim for groundless threat.

5. Formal Citations

  1. Dr. Babor GmbH & Co. KG & another v Sante De Beaute Pte Ltd, Suit No 1335 of 2016, [2018] SGHC 159

6. Timeline

DateEvent
Distributorship agreement between His Bounty and Dr Babor signed
Eve Kerk of Sante invited Lawrence Seow of His Bounty to a meeting
Meeting between Sante and His Bounty held
Sante made further orders for Babor products
His Bounty discovered that Sante countermanded a cheque
Ms Wong and Mr Seow of His Bounty entered Sante's Bukit Batok office to demand payment or retrieve Babor products
Ms Wong received word that Sante was printing and distributing materials containing Dr Babor’s intellectual property
Investigation Report completed
Outstanding sums for the purchase of Babor products was eventually paid up
Ms Wong met Ms Genzsch in Taiwan
His Bounty’s solicitors wrote a Letter of Demand to Sante
Representatives from Sante, His Bounty and Dr Babor engaged in email correspondence relating to the Letter of Demand
Ms Genzsch appeared to express appreciation for Sante’s promotional efforts in an email
Writ of summons and statement of claim in respect of trade mark infringement and passing off was filed
Sante filed the defence, as well as the counterclaim in groundless threat against His Bounty
Dr Babor and His Bounty withdrew the trade mark infringement and passing off claim
Trial began
Trial continued
Judgment reserved
Judgment issued

7. Legal Issues

  1. Groundless Threat of Trade Mark Infringement
    • Outcome: The court held that His Bounty's threat to sue Sante for trade mark infringement was justified and dismissed Sante's counterclaim for groundless threat.
    • Category: Substantive
    • Related Cases:
      • [2018] 1 SLR 856
  2. Trade Mark Infringement
    • Outcome: The court found that Sante's use of the BABOR word mark in the Allegedly Infringing Articles constituted an infringement of the BABOR word mark.
    • Category: Substantive
  3. Consent for Use of Trade Mark
    • Outcome: The court found that Sante did not have express or implied consent to use the BABOR word mark at the Clementi and Holland Drive branches at the material time around October 2016 and it was aware of the lack of consent.
    • Category: Substantive
  4. International Exhaustion of Rights
    • Outcome: The court held that s 29 (1) of the TMA is not applicable because the present circumstances do not involve a situation where the BABOR word mark is used to advertise that Sante is offering Babor products for sale.
    • Category: Substantive
    • Related Cases:
      • [2017] 4 SLR 99

8. Remedies Sought

  1. A declaration that the threats are unjustifiable
  2. An injunction against the continuance of the threats
  3. Damages in respect of any loss he has sustained by the threats

9. Cause of Actions

  • Groundless Threat of Trade Mark Infringement

10. Practice Areas

  • Intellectual Property Litigation
  • Trade Mark Infringement

11. Industries

  • Cosmetics
  • Beauty
  • Retail

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Lee Tat Cheng v Maka GPS Technologies Pte LtdCourt of AppealYes[2018] 1 SLR 856SingaporeConfirmed that the Court retains the discretion to determine whether or not to grant relief in the context of groundless threat proceedings relating to patent infringement.
Patrick John Brain v Ingledew Brown Bennison and Garrett (A Firm) and another (No. 3)N/AYes[1997] FSR 511UKCited for the principle that all contemporaneous correspondence should be looked at as a whole.
Best Buy Co Inc v Worldwide Sales Corp Espana SLEnglish Court of AppealYes[2011] FSR 30UKCited to support the proposition that the advertising of services using a mark does not fall within the supply of services under the mark.
Allergan, Inc and another v Ferlandz Nutra Pte LtdN/AYes[2016] 4 SLR 919SingaporeCited as an example where the question of justification is usually resolved concurrently in light of the decision on the trade mark infringement issue.
Samsonite IP Holdings Sarl v An Sheng Trading Pte LtdN/AYes[2017] 4 SLR 99SingaporeCited for the legislative history and policy tensions behind the enactment of s 29 of the TMA and to define parallel imports.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed) s 35Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 27Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 26(1)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 29(1)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 28(1)(c)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Groundless threat
  • Trade mark infringement
  • BABOR word mark
  • Letter of Demand
  • Letter of Authority
  • Business Purchase Agreement
  • International exhaustion of rights

15.2 Keywords

  • Trade mark
  • Infringement
  • Groundless threat
  • Singapore
  • High Court
  • Intellectual property

17. Areas of Law

Area NameRelevance Score
Groundless threat85
Trademarks75
Commercial Litigation25
Contract Law15

16. Subjects

  • Trade Marks
  • Intellectual Property
  • Litigation