What do “POLO”, “VALENTINO” and “AMAN” have in common?
“POLO” is a simple English word. “VALENTINO” is a common Italian name. And “AMAN”? Well, that’s Malay for “peaceful”.
Add “CLINIQUE” to the list, and we have an array of trade marks in languages from around the world making the headlines in legal proceedings here.
“CLINIQUE” is French for “clinic”. And “SUISSE” means “Swiss” in French. The logic goes that if “POLO” is a known English word that cannot be monopolized; and if Valentino the ultra high-end designer brand cannot stop another trader from using “EMILIO VALENTINO”; and if the Court of Appeal did not grant an injunction against all trade marks starting with “AMAN”, then cosmetics giant Clinique Laboratories Inc. should also not object to a medical clinic calling itself and its goods “CLINIQUE SUISSE”.
Clinique Suisse, a medical outfit at Paragon Medical Centre, canvassed the above argument in a trade mark infringement suit filed by Clinique Laboratories. The stage was set for an important question in trade mark law and practice: to what extent should a mark be protected when it consists of a common word in a known language?
On 30 April 2010, the Singapore High Court found in the plaintiffs' favour. The marks of the two parties were similar, the goods and services overlapped, and there was an overall likelihood of confusion. In the written judgment of 2 July 2010, Lai Siu Chiu J addressed in greater detail the defendants' point that "CLINIQUE" means "clinic" in French, finding that the plaintiffs' mark has acquired a distinctive character in the cosmetics industry. It 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."
As for the word "SUISSE", Lai J found that it was merely an add-on to "CLINIQUE". In this case, the defendants’ evidence did not adequately show that their skin care products had a Swiss origin nor that the medical practice was significantly associated with Swiss medical establishments. Would it have made a difference if, on a different set of facts, the defendants’ goods were in fact derived from a Swiss source and the medical practice was in fact associated with Swiss establishments, hence “CLINIQUE SUISSE”?
In addition to the above, Lai J accepted the plaintiffs’ arguments on the grounds that the defendants infringed their well known mark. "CLINIQUE" was found to be well known to the "relevant sector of the public", and also well known to the "public at large" in Singapore. This appears to be the first time that a mark has been found to be well known to the public at large since the legislation protecting well known marks was enacted. It will be a point of interest to know the Court of Appeal's views when the appeal is heard.
October 2010