1 The first defendant (“Herbs Health”) was an authorised retailer of the claimant’s (“Beauty Nation”) products. Herbs Health sold goods bearing Beauty Nation’s trade marks in a physical retail outlet and online. Herbs Health’s related entity, the second defendant (“TCM Shop”), similarly sold goods bearing Beauty Nation’s trade marks online. Further, Herbs Health and TCM Shop (collectively, the “Defendants”) advertised these goods using photographs taken by a director of Herbs Health and materials in which the copyright was owned by Beauty Nation. Beauty Nation claims against the Defendants for copyright infringement, trade mark infringement and inverse passing off for the Defendants’ online sales. The Defendants counterclaim against Beauty Nation for groundless threats of copyright and trade mark infringement proceedings. For the reasons that follow, I dismiss Beauty Nation’s claims. In respect of the Defendants’ counterclaim, I make no order as I find no basis to grant any of the reliefs asked for.

2 Beauty Nation was founded in 2004 and is in the business of developing, producing, marketing and selling supplements incorporating Traditional Chinese Medicine (“TCM”). ¹ Its main lines of products include: “Miri”, “Vitroman”, “Root King” and “Quan Wei” (collectively,
“Products” and in the singular, “Product”). ² Mr Tan See Leng (“Mr Tan”) and his wife, Ms Tan Chiew Peng (“Ms Tan”) are the directors and shareholders of Beauty Nation. ³

3 Principally, Beauty Nation functions as a holding company that owns the intellectual property relating to the Products. ⁴ It is the proprietor of 15 registered trade marks in Singapore (“Trade Marks”). ⁵ I highlight a few examples of the Trade Marks:

(a) Trade mark no. T1004068I “” registered on 5 April 2010 in Class 5 for, inter alia, goods relating to pharmaceuticals and dietary supplements.

(b) Trade mark no. 40202124365S “” registered on 12 October 2021 in Class 35 for, inter alia, advertising, marketing and promotional services.

(c) Trade mark no. 40202124369P “” registered on 12 October 2021 in Class 35 for, inter alia, advertising, marketing and promotional services.

4 Relatedly, Root King Pte Ltd (“RKPL”) was incorporated to distribute the Products to local retailers. ⁶ Both RKPL and Beauty Nation share the same directors and shareholders. ⁷

5 Mr Chong Tuck Seng (“Mr Chong”) is a director and shareholder of both Herbs Health and TCM Shop. ⁸ As a fifth-generation TCM physician, Mr Chong incorporated Herbs Health in 2010 as a registered TCM clinic and a physical retail outlet to sell TCM health products and supplements. ⁹ In 2016, to keep up with the rise of e-commerce, TCM Shop was incorporated as the online retail arm of Herbs Health. ¹⁰ From 2017, online sales were made through TCM Shop’s website, www.tcmshop.sg (“TCM Shop’s Website”). ¹¹ In 2022, Herbs Health expanded such online sales to e-commerce platforms such as Shopee and Lazada. ¹²

6 Herbs Health and TCM Shop were related entities in so far as the sale of Herbs Health’s goods was concerned. Mr Chong explained that to maintain proper accounting records, Herbs Health consigned its goods to TCM Shop. ¹³ Apart from the separation of such accounting records, Mr Chong’s evidence was that he treated Herbs Health and TCM Shop as the same entity in terms of their operation and sales. ¹⁴

7 Some time in 2011, Herbs Health’s physical retail outlet began to offer the Products for sale. ¹⁵ Herbs Health was an authorised retailer of the Products. ¹⁶ Mr Allan Ng (“Mr Ng”), as a sales representative from RKPL, managed the distribution of the Products to Herbs Health. ¹⁷ It is undisputed that at all material times, the Defendants sold only genuine products from Beauty Nation. ¹⁸ The greater the quantity of genuine products sold by an authorised retailer, the more beneficial it would be for the trade mark owner. Accordingly, it was not contested by Mr Tan that Herbs Health, as an authorised retailer of the Products, would exercise its best efforts to sell the Products. ¹⁹

8 Mr Tan and Mr Chong both agreed that this long-standing working relationship of over a decade between Herbs Health and RKPL was built on trust and confidence, ²⁰ with Mr Tan confirming that Herbs Health was one of Beauty Nation’s “trusted retailers”. ²¹ Additionally, Mr Chong described the informal working relationship between Herbs Health and RKPL in the context of Herbs Health’s “traditional neighbourhood business” as follows: ²²

9 The supply of the Products from RKPL to Herbs Health, which spanned more than a decade, took place from 2011 until the termination of their relationship some time in October 2023: ²³

10 Before me, various documents for transactions between RKPL and Herbs Health were tendered, including:

(a) Delivery orders dated 9 June 2015, 31 July 2015 and 21 September 2015, 29 November 2017 and 27 October 2022 (“Delivery Orders”). ²⁴

(b) Terms and conditions governing the supply of goods on a consignment basis, dated 20 September 2017 and 3 October 2022 (“Terms and Conditions”). ²⁵ The consignment notes dated 29 November 2017 and 27 October 2022 deemed that the retailer had read and agreed to the Terms and Conditions. ²⁶

(c) Numerous invoices issued nearly every month from the period of 12 October 2022 to 17 January 2024 (“Invoices”) reflecting the supply of varying types and quantities of the Products on cash on delivery terms. ²⁷ Two of the Invoices dated 15 November 2023 and 17 January 2024, issued after the termination of RKPL and Herbs Health’s relationship, were meant to “tidy up” the consignment of goods from 2022 whereby Mr Chong returned the balance stock and paid RKPL for the consigned Products that had been sold. ²⁸

11 Both Beauty Nation and Herbs Health agree that the supply of Products between RKPL and Herbs Health first started on a consignment basis in 2017. After the initial consignment of Products, while Beauty Nation maintains that the supply of Products was on a consignment basis for the entire period of dealing, ²⁹ the Defendants argue that the goods were subsequently sold on a cash on delivery basis. ³⁰

12 To my mind, the subsequent legal analysis would not turn on whether the parties proceeded on the basis of a consignment or sale. In both scenarios, RKPL would have supplied the Products and consented to Herbs Health offering the Products for sale. The consistent supply of the Products from 2011 to 2023 occurred regardless of whether it was based on a consignment or sale (see [9] above).

13 In any event, I find that RKPL sold, and not consigned, the Products to Herbs Health for a long duration of their relationship. Apart from the supply of the Products on a consignment basis some time in 2017 and 2022 (see [10(b)] above), for a better part of their relationship, RKPL sold the products to Herbs Health on a cash on delivery basis (see [10(c)] above). Once cash was paid to RKPL upon delivery of the Products, the Products became Herbs Health’s property, which points against a supply on a consignment basis throughout their entire relationship. It is also significant that Mr Tan made the following concession at trial: ³¹

Thereafter, RKPL, for a substantial period of their relationship, sold the Products to Herbs Health on a monthly basis, as described by Mr Chong: ³²

14 As Mr Tan acknowledged in cross-examination, there was no restriction on the manner in which authorised retailers could sell the Products, or prohibition on selling the Products online. ³³ In principle, it was open to Herbs Health to sell the Products on third-party e-commerce platforms and/or deal with the Products under TCM Shop’s name.

15 In the course of its marketing and branding efforts, Beauty Nation commissioned designers to create advertising materials. These were “write-ups that represent the Products for the purpose of advertising”, the packaging design of the Products, and corresponding photographs of the Products. ³⁴ As parties do not dispute that Beauty Nation owns the copyright subsisting in the aforesaid advertising materials, ³⁵ I will proceed on that basis and collectively refer to the same as the “Copyright Materials”.

16 Between 2017 and 2021, TCM Shop, in its listings on TCM Shop’s Website (“TCM Shop’s Listings”), used photographs of the Products taken by Mr Chong (“Mr Chong’s Photographs”). ³⁶ In or around December 2020 to January 2021, Mr Chong caused to be removed the said listings containing Mr Chong’s Photographs. ³⁷ According to Mr Chong, he did so as he was informed that TCM Shop’s Listings contained outdated photographs of the Products. ³⁸ TCM Shop also temporarily ceased online sales of the Products on TCM Shop’s Website. ³⁹ While Beauty Nation pleaded that the Copyright Materials were used by the Defendants from at least 18 January 2017, ⁴⁰ it eventually accepts in its closing submissions that the Defendants only used Mr Chong’s Photographs from 2017 to 2021. ⁴¹

17 In mid-2022, TCM Shop recommenced online sales of the Products on TCM Shop’s Website. Mr Chong used the Copyright Materials in TCM Shop’s Listings. ⁴² Similarly, in July 2022, Herbs Health also used the Copyright Materials in Herbs Health’s listings of the Products on Shopee and Lazada (“Herbs Health’s Listings”). ⁴³ I shall refer to the Defendants’ online listings of the Products generally as the “Online Listings”. In some of the Online Listings, the Defendants also included new photographs taken by Mr Chong depicting other angles of the Products (“Mr Chong’s Subsequent Photographs”). ⁴⁴

18 Thus, the Online Listings from 2022 to 2023 generally featured a mix of the Copyright Materials and Mr Chong’s Subsequent Photographs. ⁴⁵ I reproduce an example of TCM Shop’s use of the Copyright Materials and Mr Chong’s Subsequent Photographs, ie, the top and bottom photographs respectively: ⁴⁶

19 Beauty Nation draws attention to two features regarding the manner in which the Defendants listed the Products online:

(a)  In the title of Herbs Health’s Listings and several of TCM Shop’s Listings, the name “Herbs Health” was included before the respective name of the Product. ⁴⁷

(b) Some of Herbs Health’s Listings were purportedly classified under “No Brand”. ⁴⁸

20 On 13 October 2023, Beauty Nation issued a cease and desist letter to Herbs Health (“Cease and Desist Letter”). ⁴⁹ The Cease and Desist Letter stated, inter alia, that:

21 Consequently, the Defendants ceased all online sales of the Products. ⁵⁰ The remaining stock of the Products was sold in Herbs Health’s physical retail store. ⁵¹ Herbs Health stopped placing orders for the Products with RKPL and thus ceased to be an authorised retailer of the Products. ⁵²

22 On 6 November 2023, Herbs Health’s lawyers replied to the Cease and Desist Letter. On 19 September 2024, Beauty Nation issued a second letter to Herbs Health making an amicable settlement offer. ⁵³ After a failed attempt to resolve the dispute amicably through mediation on 19 December 2024, ⁵⁴ Beauty Nation filed the present proceedings.

23 During the trial, Mr Tan and Mr Chong were respectively called as the sole factual witnesses for Beauty Nation, and the Defendants.

24 First, regarding the copyright infringement claim, the Defendants used copyright materials owned by Beauty Nation from at least 18 January 2017. ⁵⁵ In its closing submissions, Beauty Nation states that it takes issue with the Defendants’ use of Mr Chong’s Photographs from 2017 to 2021, and their subsequent use of the Copyright Materials and Mr Chong’s Subsequent Photographs from 2022 to 2023. ⁵⁶ Beauty Nation contends that the Defendants had no express licence for the aforesaid uses. ⁵⁷ Moreover, no implied contractual licence arose under the test for the implication of terms as laid down by Sembcorp Marine Ltd v PPL Holdings Pte Ltd [2013] 4 SLR 193 (“Sembcorp Marine”). ⁵⁸

25 Second, Beauty Nation’s claim for trade mark infringement is based on s 27 of the Trade Marks Act 1998 (2020 Rev Ed) (“TMA”). ⁵⁹ Beauty Nation pleads that since at least 18 January 2017, it has observed the Defendants “advertising, marketing and selling” the Products by using “imagery and/or words which are identical to [the Trade Marks]” in their Online Listings. ⁶⁰ Beauty Nation argues that it did not expressly or impliedly consent to the Defendants’ use of the Trade Marks in the online sales and advertising of the Products. ⁶¹ Beauty Nation does not challenge Herbs Health’s sale of the Products in its physical retail store.

26 Third, Beauty Nation submits that inverse passing off occurred as the Defendants passed themselves off as the source of the Products. ⁶² Beauty Nation alleges that there has been longstanding use, publicity and promotion of the Trade Marks. ⁶³ Amongst other conduct which Beauty Nation alleges resulted in confusion to the public, Beauty Nation contends that the Defendants misrepresented themselves as the commercial source of the Products by including “Herbs Health” in the title of their Online Listings. ⁶⁴ This reportedly caused damage to Beauty Nation’s goodwill, such as the “tarnishment of its brands” and diversion of business away from Beauty Nation. ⁶⁵

27 Beauty Nation thus claims: ⁶⁶

(a) an injunction to restrain the Defendants from “permitting and/or causing any further infringement” involving the Copyright Materials and Trade Marks, and engaging in acts of passing off;

(b) an order for the Defendants to remove the Online Listings;

(c) an order for delivery up or destruction of all infringing articles in the Defendants’ possession, power, custody or control;

(d) an inquiry as to damages or an account of profits made by the Defendants derived from the copyright and trade mark infringement and passing off; and

(e) interest, costs and such further or other relief that this court deems appropriate.

28 The Defendants did not plead any of the statutory defences under the Copyright Act 2021 (2020 Rev Ed) (“CA”) or the TMA.

29 On copyright infringement, the Defendants take the view that they acted with licence. ⁶⁷ The Defendants plead that Beauty Nation granted them a licence, “expressly … and/or impliedly by conduct”, to use the Copyright Materials to promote and sell the Products: ⁶⁸

(a) The Defendants contend that Beauty Nation consented through express permission given by Mr Ng. ⁶⁹ Mr Chong allegedly informed Mr Ng that he intended to use the Copyright Materials and no objections were raised up till the Cease and Desist Letter. ⁷⁰

(b) Alternatively, the Defendants advance several bases which gave rise to an implied licence. First, an implied contractual licence pursuant to Sembcorp Marine arose. ⁷¹ Second, that Beauty Nation and RKPL knew of the Defendants’ online sales yet continued the supply of the Products, supports a case on consent and acquiescence. ⁷²

30 Turning to the trade mark infringement claim, the Defendants rely on Beauty Nation’s express and/or implied licence to use the Trade Marks for the purposes of promoting and selling the Products. ⁷³ In addition, the Defendants allege that they had been promoting and selling the Products online since 2017 without objections from Beauty Nation. ⁷⁴ The Defendants further argue that an authorised retailer’s use of a trade mark in relation to the proprietor’s genuine goods does not amount to infringement. ⁷⁵

31 Regarding the inverse passing off claim, the Defendants deny that they passed off the Products as their own products. ⁷⁶ The Defendants assert that there was no misrepresentation of the source of the Products. ⁷⁷ Further, the alleged damage to Beauty Nation’s goodwill stemmed from “price competition” which related to “commercial strategy, not misrepresentation of source”. ⁷⁸

32 The Defendants’ view is that Beauty Nation has made groundless threats of infringement proceedings pursuant to s 499 of the CA and s 35 of the TMA: ⁷⁹

(a) The Defendants posit that the threat of copyright infringement proceedings was unjustified as they had acted with licence in using the Copyright Materials. ⁸⁰

(b) For the threat of trade mark infringement proceedings, the Defendants allege that the Cease and Desist Letter is actionable as it related to acts other than those excluded by ss 35(1)(a)–(c) of the TMA. ⁸¹

(c) The Defendants claim to be aggrieved persons under s 499 of the CA and s 35 of the TMA as the threats had caused a halt to their online sales, removal of the Online Listings and forced stock clearance. ⁸²

33 Beauty Nation denies that its allegations of copyright and trade mark infringement were groundless. ⁸³ Beauty Nation states that it was justified in issuing the Cease and Desist Letter to Herbs Health and the demands therein related to acts falling within ss 35(1)(a)–(c) of the TMA. ⁸⁴ Beauty Nation also contends that Herbs Health is not an aggrieved person. ⁸⁵

34 Before me, four main issues arise.

35 First, whether the Defendants’ use of Mr Chong’s Photographs, the Copyright Materials and Mr Chong’s Subsequent Photographs (collectively, “Defendants’ Uses”) in the Online Listings constitutes copyright infringement. This turns on whether the Defendants had an express or implied licence for such use.

36  Second, whether the Defendants’ use of the Trade Marks in the sale and advertising of the Products amounts to trade mark infringement. The crux of the issue lies in whether there was consent for the Defendants to use the Trade Marks.

37 Third, whether the Defendants passed themselves off as the source of the Products.

38 Fourth, whether Beauty Nation’s issuance of the Cease and Desist Letter gives rise to actionable groundless threats of infringement proceedings under s 499 of the CA and/or s 35 of the TMA. If so, whether it is appropriate to grant relief for the groundless threats.

39 An infringement of copyright occurs when a person, without the licence of the copyright owner, does an act comprised in copyright: s 146(1) of the CA. An act comprised in copyright encompasses, inter alia, the act of making a copy of a copyright work: ss 112(1)(a) and 113(a) of the CA. This includes the making of a copy of a substantial part of a copyright work: ss 39(1) and 49 of the CA.

40 Copyright is not infringed where there is a licence issued by the copyright owner to use the copyright work. A licence generally refers to permission by or on behalf of the copyright owner: see Ng-Loy Wee Loon, Law of Intellectual Property of Singapore (Sweet & Maxwell, 3rd Rev Ed, 2022) at paras 13.3.2–13.3.3:

41 The two broad situations when an implied licence may arise are summarised in Gwilym Harbottle, Nicholas Caddick KC & Uma Suthersanen, Copinger and Skone James on Copyright (Sweet & Maxwell, 19th Ed, 2025) (“Copinger and Skone James on Copyright”) at para 4-259:

Specifically, in a non-contractual situation, a licence may be implied from, inter alia, conduct or trade practice: Copinger and Skone James on Copyright at paras 4-260–4-261.

42 Accordingly, the issue that arises for my consideration is whether a licence was granted by or on behalf of Beauty Nation to the Defendants to allow the Defendants’ Uses. In this regard, the Defendants say that an express or implied licence was granted. The main bases on which the Defendants claim that an implied licence was granted are an implied contractual licence, and/or “impliedly by conduct [sic]” based on the manner in which parties acted which evinces consent and acquiescence (see [29] above). ⁸⁶ I begin with what appears to me to be the strongest ground raised by the Defendants, ie, an implied licence by conduct.

43 A licence can arise as a result of the parties’ conduct that does not hinge on the existence of any underlying contractual relationship: Copinger and Skone James on Copyright at para 4-261. The test is objective. Namely, whether the words and conduct of the alleged licensor, as made known to the alleged licensee, objectively indicated that the licensor consented to what the licensee was doing: Copinger and Skone James on Copyright at para 4-261.

44 To illustrate how an implied licence by conduct might arise, I begin by considering the case of Helme v Maher [2015] EWHC 3151 (IPEC) (“Helme”). The relevant facts in Helme were as follows:

(a) The claimant operated a jewellery business under the trade name “Hidden Gem”: at [1] and [5]. The claimant owned copyright in a logo and several commissioned photographs of her jewellery (“the claimant’s Logo and Photographs”): at [3]–[4].

(b) Some time in late 2008 and early 2009, the claimant entered into negotiations with the defendants for a joint venture, under which franchise arrangements would be granted to allow third-party businesses to operate under the “Hidden Gem” trade name: at [6]. No formal contract was concluded.

(c) Nonetheless, in view of this possible joint venture, the defendants began to advertise jewellery under the “Hidden Gem” trade name, using the claimant’s Logo and Photographs: at [7]. Such use occurred throughout 2009 and 2010: at [6].

(d) In one of the meetings, the parties discussed that the defendants would offer the jewellery to third-party companies and the claimant knew this was being done to promote the Hidden Gem brand in anticipation of the joint venture: at [16]. Further the defendants had informed the claimant during the said meeting of the appointment of a company (“Timscris”) to promote the Hidden Gem goods, to which there was no dissent: at [17]. Jewellery was sold to Timscris and Timscris had placed advertisements using the claimant’s Logo and Photographs: at [42].

(e) The claimant “never complained about any of the advertisements using the Hidden Gem name”: at [23]. In an electronic mail correspondence, the claimant had indicated to the defendants that she had seen one of the advertisements placed in a magazine, but she did not raise any objections to it: at [23]. Parties continued exchanging electronic mails “in a form which suggest[ed] no change in the atmosphere of willing co-operation”: at [23].

(f) However, the joint venture plan fell through and on 9 April 2010, the claimant’s solicitors sent a letter to the defendants and subsequently commenced an action for copyright infringement and passing off: at [6]–[7].

45 The court held that a licence arose for the defendants to use the “Hidden Gem” trade name and the claimant’s Logo and Photographs: at [32]. The court implied such a licence based on parties’ conduct. The court considered that the claimant had “enthusiastically endorsed” the defendants’ efforts to promote their joint enterprise to the best of their abilities, and also bore in mind that the parties’ relationship was one of friendship and trust and not a hard-nosed commercial arrangement: at [12] and [32]. Such a licence persisted until its termination via the letter issued on 9 April 2010: at [33].

46 In relation to Timscris’s use of the claimant’s Logo and Photographs, the court found at [43] that:

47 In my judgment, whether an implied licence to use a copyright work arises from the copyright owner’s conduct is an inquiry that turns on the specific factual matrix. Given the highly fact-sensitive nature of the inquiry, it is not practical for me to set out an exhaustive list of factors that may be relevant. Nonetheless, on the facts of Helme, it appears to me to be significant that the claimant knew of the advertisements which contained the defendants’ purportedly infringing uses and, viewed in the context that the parties were exploring the possibility of a joint venture, it was telling that the claimant did not raise any complaints and the parties continued to maintain an “atmosphere of willing co-operation” (see [44(d)–(e)] above). The claimant’s knowledge of the allegedly infringing uses cannot be analysed in a vacuum but rather, such knowledge was coloured by the parties’ pre-existing relationship. Based on the circumstances, it is easy to understand the finding that an implied licence by conduct arose in Helme.

48 I now turn to the present dispute. To recapitulate, Beauty Nation challenges the Defendants’ Uses which concern (see [16]–[17] earlier):

(a) the Defendants’ use of Mr Chong’s Photographs in TCM Shop’s Listings from 2017 to 2021; and

(b) the Defendants’ use of a combination of the Copyright Materials and Mr Chong’s Subsequent Photographs in their Online Listings from mid-2022 to October 2023. ⁸⁷

49 The Defendants rely on the course of the parties’ relationship of more than a decade to argue that an implied licence arose in fact. ⁸⁸ The Defendants argue that the continued supply of the Products to them without any objections raised, despite Beauty Nation and RKPL’s knowledge of the Defendants’ Online Listings, supports their case on consent. ⁸⁹

50 In my view, an implied licence arose by conduct permitting the Defendants’ Uses for the purpose of executing Herbs Health’s role as an authorised retailer of the Products. Three key facts lead me to this conclusion, which I consider in turn:

(a) Beauty Nation knew of the Online Listings and the Defendants’ Uses since 2017.

(b) RKPL continued to supply the Products to Herbs Health, without raising any objections, notwithstanding the Defendants’ Uses.

(c) RKPL acted on behalf of Beauty Nation in the continued supply of Beauty Nation’s Products.

51 Taken together, notwithstanding that Beauty Nation had known of the Online Listings and the Defendants’ Uses since 2017, the fact that RKPL continued to supply the Products, on behalf of Beauty Nation, to Herbs Health indicates that an implied licence for the Defendants’ Uses arose for the aforesaid period of use, up until the issuance of the Cease and Desist Letter.

52 I am mindful that for the purposes of selling the Products, TCM Shop operated in tandem as the online arm to Herbs Health (at [5]–[6] above). In my view, the broad licence granted to Herbs Health would have allowed the granting of a sub-licence to TCM Shop to similarly use Mr Chong’s Photographs, the Copyright Materials and Mr Chong’s Subsequent Photographs for the purposes of the sale and advertising of the Products (see Helme at [43], which I reproduced at [46] above).

53 I now elaborate on the evidence before me which leads me to arrive at the three key facts that give rise to the implied licence by conduct (at [50] above).

54 Beauty Nation pleaded in its statement of claim that it had known of the Defendants’ Online Listings since at least 18 January 2017: ⁹⁰

55 However, Beauty Nation abandoned its pleaded position that it had noticed the Online Listings from 2017. In his affidavit of evidence-in-chief (“AEIC”) and at trial, Mr Tan took different positions on when Beauty Nation became aware of the Online Listings.

56 Mr Tan advances the following version of events in his AEIC:

(a) He claims that he only discovered sometime in 2022 that “the Defendants had been blatantly copying and pasting” the Copyright Materials when selling the Products on “various online sites”. ⁹¹

(b) In a subsequent paragraph, he asserts that it was only on or around 30 December 2024 that Beauty Nation “first became aware of the existence” of TCM Shop. ⁹²

57 When cross-examined on the inconsistency between Beauty Nation’s pleadings and his AEIC, Mr Tan continued to claim his lack of awareness up till 2022: ⁹³

58 Mr Tan further testified that upon his supposed discovery of TCM Shop’s Website in 2022, he was “unable to locate the picture[s] of the products” and could only retrieve the “explanation for the products” from the cache data. ⁹⁴ However, Beauty Nation has also pleaded that it believes that the Defendants have used the Copyright Materials “since at least 18 January 2017”. ⁹⁵ It is thus inexplicable how Beauty Nation believed, as it pleaded, that the Defendants had used the Copyright Materials since 2017 if Mr Tan could not locate the photographs of the Products upon his alleged discovery of TCM Shop’s Website in 2022.

59 I can briefly deal with Mr Tan’s evidence that he only knew in 2024 of TCM Shop’s existence (see [56(b)] above). I do not accept Mr Tan’s evidence in this respect. In the Cease and Desist Letter dated 13 October 2023, Beauty Nation’s solicitors stated that Herbs Health was the owner and/or operator of TCM Shop. ⁹⁶ It is thus inconsistent for Mr Tan to claim that he only knew of TCM Shop’s existence on or around 30 December 2024, when Beauty Nation’s solicitors had referenced TCM Shop some months prior in the Cease and Desist Letter. In any event, Mr Tan’s own evidence in the earlier part of his AEIC and during cross-examination was that he discovered TCM Shop’s Website in 2022 ([56(a)] and [57] above). ⁹⁷

60 I have difficulty accepting Mr Tan’s evidence that Beauty Nation only became aware of the Defendants’ Online Listings from 2022. Mr Tan has not adduced cogent evidence to substantiate Beauty Nation’s change in position from its pleaded position that it had known of the Defendants’ Online Listings since 18 January 2017 (see [54] earlier). On the contrary, there are various internal inconsistencies with Mr Tan’s evidence (see [58] and [59] above). It is also material that Beauty Nation’s pleadings omit any references to its present case that it was only in 2022 when it realised that the Defendants were selling the Products online. Mr Tan cannot now attempt to backtrack from Beauty Nation’s pleaded position that it was aware of the Online Listings from 2017.

61 Therefore, I reject Mr Tan’s evidence that Beauty Nation noticed the Defendants’ online sales from 2022. I find that, as a matter of fact, Beauty Nation had noticed the Defendants’ online sales of the Products since 2017, as it has pleaded. The corollary of having observed the Defendants’ Online Listings is that Beauty Nation must have also been aware of the Defendants’ Uses in the Online Listings. Indeed, this is consistent with the fact that Beauty Nation has also pleaded its observation of the Defendants “advertising, marketing and selling the Claimant’s Products by reference to or with the use of imagery” since at least 18 January 2017. ⁹⁸ On Beauty Nation’s own account, it knew of the “imagery” used in the Online Listings, ie, the aforesaid Defendants’ Uses. ⁹⁹ Therefore, Beauty Nation knew of the Defendants’ Uses since 2017.

62 According to the Defendants, Mr Chong’s Photographs were taken down from TCM Shop’s Listings as Mr Ng had informed Mr Chong to remove these photographs which had contained “outdated and incorrect versions of the original images of the product[s]”. ¹⁰⁰ Although Beauty Nation has filed objections to some portions of Mr Chong’s AEIC, ¹⁰¹ Beauty Nation did not specifically object to Mr Chong’s evidence that he took down Mr Chong’s Photographs as Mr Ng had purportedly told him they were outdated. Moreover, Beauty Nation’s pleaded case also references the Defendants publishing outdated versions of photographs. ¹⁰² In its closing submissions, Beauty Nation also refers to the “incident in 2021 when [Mr Ng] had told the Defendants to take down the photos”. ¹⁰³ Hence, it appears that both parties accept that Mr Chong’s Photographs were taken down because they portrayed outdated versions of the Products.

63 It seems to me that Mr Chong’s Photographs were requested to be taken down because they were outdated, and not because RKPL or Beauty Nation was objecting to the use in principle on the basis of copyright infringement. This was apparent from Mr Tan’s evidence that his concern with self-taken photographs lay in the quality of such photographs: ¹⁰⁴

64 Although it may not be reflective of the legal position, as much would depend on the factual matrix (see [66] below), it is pertinent that Mr Tan himself believed that he could not prohibit an individual from taking a photograph of the Products and using the said photograph to sell the Products online: ¹⁰⁵

65 Similarly, Mr Chong was under the impression that he did not require permission to use the photographs taken by him: ¹⁰⁶

66 Viewed together, the evidence at [64]–[65] above reveals that both Mr Chong and Mr Tan shared the understanding that since Mr Chong was the author of Mr Chong’s Photographs and Mr Chong’s Subsequent Photographs, it was not open to Beauty Nation to raise objections to the Defendants’ use of the aforesaid photographs. For the avoidance of doubt, the creation of an original work derived from the infringement of copyright in another’s work may nonetheless be independently protected by copyright: Virtual Map (Singapore) Pte Ltd v Suncool International Pte Ltd [2005] 2 SLR(R) 157 at [10]. Hence, the mere fact that independent copyright may have subsisted in the photographs that Mr Chong had taken of the Products does not, by itself, mean that Mr Chong may not have infringed Beauty Nation’s copyright. Notwithstanding, the broader point is that Mr Tan, labouring under the belief that he could not object to an individual using self-taken photographs of the Products, had therefore not objected to the Defendants’ use of Mr Chong’s Photographs and Mr Chong’s Subsequent Photographs. This is consonant with Mr Tan’s evidence that he only took issue with the Defendants’ use of the Copyright Materials that began in 2022: ¹⁰⁷

67 As I explained at [62] above, Mr Chong’s evidence was that he had taken down Mr Chong’s Photographs because they were outdated and not professionally taken. ¹⁰⁸ After the Defendants recommenced online sales of the Products in 2022, Mr Chong noticed that other authorised retailers of the Products were using the Copyright Materials and thus believed that the Defendants also had the right to use the aforesaid. ¹⁰⁹ Mr Chong testified that he informed Mr Ng of the Defendants’ use of the Copyright Materials in 2022: ¹¹⁰

Mr Chong explained that the Defendants would supplement the use of the Copyright Materials with Mr Chong’s Subsequent Photographs to fulfil the e‑commerce platform’s requirement that three photographs had to be uploaded in a product listing. ¹¹¹

68 Beauty Nation has objected to Mr Chong’s evidence, on the grounds of hearsay, that he informed Mr Ng of his intention to “use [RKPL]’s promotional images and asked [Mr Ng] to let [him] know if there were any objections” and “[Mr Ng] did not object”. ¹¹² However, I find that Mr Chong’s evidence is only relevant in so far as he is testifying that he himself had informed Mr Ng of the Defendants’ use of the Copyright Materials and had asked him to raise any objections. I find no need to consider what Mr Ng’s response was, if any, as the main point here is that there is no record of any objections to the use of the Copyright Materials and Mr Chong’s Subsequent Photographs by Beauty Nation or RKPL up until the Cease and Desist Letter was issued.

69 Significantly, the evidence reveals that Mr Ng, on behalf of RKPL, persistently supplied the Products to Herbs Health for over a decade without objections, notwithstanding the Defendants’ Uses (see [9] and [12] above):

(a)  No objections was raised to the Defendants’ use of Mr Chong’s Photographs in 2017 (see [63] and [66] above). After they were taken down because they were outdated, RKPL still maintained the supply of the Products.

(b) Even after the Defendants began using the Copyright Materials and Mr Chong’s Subsequent Photographs, the supply of the Products to Herbs Health continued for a prolonged period of a year. The Invoices tendered showed that the sale of the Products persisted on a monthly basis from 12 October 2022 till 26 September 2023. ¹¹³ This timeline coincided with the Defendants’ use of the Copyright Materials and Mr Chong’s Subsequent Photographs from mid-2022 to October 2023. Moreover, this period of continued supply of the Products was coupled with the absence of any objections from either RKPL or Beauty Nation to the use of the Copyright Materials and Mr Chong’s Subsequent Photographs.

Accordingly, despite the Defendants’ Uses, the fact remains that RKPL continued to sell the Products to Herbs Health for a substantial period of time.

70 It is clear to me that RKPL acted, at all material times, on behalf of Beauty Nation in so far as dealings with authorised retailers of the Products were concerned. This much was conceded by Mr Tan: ¹¹⁴

71 First, Beauty Nation and RKPL are related companies. They share the same shareholders and directors, ie, Mr Tan and Ms Tan. ¹¹⁵ RKPL functioned as the operating company handling the sales, distribution and administration of the Products. ¹¹⁶ In substance, RKPL was the operative arm of Beauty Nation as the latter was merely the “dedicated intellectual property holding company”. ¹¹⁷

72 Second, RKPL had considerable discretion when it dealt on behalf of Beauty Nation. Mr Tan accepted during cross-examination that RKPL handled all of Beauty Nation’s dealings with the authorised retailers of the Products. ¹¹⁸ Furthermore, Mr Tan gave evidence that RKPL had the sole discretion in determining who to appoint as an authorised retailer: ¹¹⁹

73 Third, Mr Ng played an instrumental role in facilitating RKPL’s function as the operative arm of Beauty Nation. Herbs Health purchased the Products from RKPL directly and not from Beauty Nation. ¹²⁰ Mr Tan confirmed that he and Ms Tan did not personally interact with the authorised retailers of the Products. ¹²¹ At all material times, Mr Tan had not met or communicated with Mr Chong. ¹²² This was because all dealings between Beauty Nation and the authorised retailers of the Products were conducted through RKPL’s representatives, in particular, Mr Ng. ¹²³ Indeed, Mr Ng was listed as the “salesman” in the majority of the Invoices issued. ¹²⁴ From Mr Chong’s perspective, Mr Ng was the “only point of contact throughout these 12 years” of being an authorised retailer of the Products. ¹²⁵ From the foregoing evidence, it would be artificial to construe the actions of Mr Ng, acting as a representative of RKPL, disparately from Beauty Nation.

74 Relatedly, Beauty Nation submits that in so far as the Defendants argue that any consent was granted by Mr Ng’s representations, Mr Ng was acting in the capacity of RKPL and not Beauty Nation. ¹²⁶ I cannot agree with this substance-free contention. The objective evidence reveals that for all material purposes, Mr Ng, as representative of RKPL, acted on behalf of Beauty Nation in its dealings with the Defendants. It lies ill in the mouth of Mr Tan to cherry-pick which actions by RKPL it ought to be bound by when Beauty Nation had afforded wide discretion to Mr Ng to manage the relationships with authorised retailers of the Products. In this vein, I find that Mr Ng’s conduct in his capacity as a representative of RKPL in dealing with Herbs Health, namely, the decision to continue the supply of the Products for a prolonged period of time (see [69] above), was carried out on behalf of Beauty Nation.

75 Taken together, the facts reveal that Beauty Nation, acting through RKPL, had impliedly consented by its conduct to the Defendants’ Uses. Bearing in mind that RKPL acted on behalf of Beauty Nation for the purposes of appointing and managing authorised retailers of the Products, the fact that RKPL continued to supply the Products to Herbs Health despite Beauty Nation being aware of the Online Listings and the Defendants’ Uses from 2017, viewed in tandem with the lack of objections to the aforesaid use, is telling. I find that implied consent to the use of the aforesaid materials had arisen by conduct based on the specific factual matrix before me (at [54]–[74] above). I also bear in mind that any advertising and sale of the Products by the Defendants benefitted Beauty Nation as the manufacturer of the Products. From a commercial perspective, there was every reason to consent to Defendants’ Uses. Cognisant of the relationship between Herbs Health and RKPL spanning over a decade that was built on mutual trust in the context of a “traditional neighbourhood business” (see [8] above), I am satisfied that an implied licence to use the relevant materials (ie, Mr Chong’s Photographs, the Copyright Materials and Mr Chong’s Subsequent Photographs) arose notwithstanding the absence of an express agreement.

76 Having found that an implied licence by conduct arose for the Defendants’ Uses, this suffices to dispose of Beauty Nation’s copyright infringement claim. I do not proceed to consider the other defences, inter alia, an implied contractual licence and acquiescence.

77 I therefore dismiss Beauty Nation’s claim for copyright infringement.

78 Beauty Nation claims that the Defendants used the Trade Marks since at least 18 January 2017 in the course of “advertising, marketing and selling” the Products in their Online Listings. ¹²⁷ Beauty Nation’s case is that such use constitutes trade mark infringement under s 27 of the TMA. ¹²⁸

79 The relevant parts of section 27 of the TMA reads:

80 The Defendants take the position that no trade mark infringement occurred. As authorised retailers of the Products, they contend that Beauty Nation had expressly and/or impliedly granted the Defendants a licence to use the Trade Marks. ¹²⁹

81 In my opinion, the issue lies in whether Beauty Nation, as the proprietor of the Trade Marks, consented to the Defendants’ use of the Trade Marks in the course of trade. This is because each ground of trade mark infringement requires that the mark is used without the consent of the trade mark proprietor. It is observed in Tan Tee Jim SC, Law of Trade Marks in Singapore (Sweet & Maxwell, 4th Ed, 2021) (“Law of Trade Marks in Singapore”) at para 11.081 that:

I would add that the aforesaid consent may be given by the trade mark proprietor, or on the proprietor’s behalf.

82 I first identify the relevant uses of the Trade Marks. In my judgment, the Defendants offered the Products bearing the Trade Marks for sale and put them on the market pursuant to s 27(4)(b) of the TMA. Further, the Trade Marks were used in the course of advertising by the Defendants in their Online Listings under s 27(4)(e) of the TMA.

83 In this connection, Beauty Nation argues that no implied licence arose for the Defendants to use the Trade Marks to advertise the Products online. ¹³⁰ Beauty Nation further submits that the Trade Marks were infringed as it did not consent to the Defendants putting the Products for sale online. ¹³¹ However, Mr Tan could not identify the basis behind this ostensible restriction on online sales. ¹³²

84 I am satisfied that the Defendants’ use of the Trade Marks was done with Beauty Nation’s consent. The same key factual findings I made for the copyright claim, summarised at [50] above, apply equally to the trade mark infringement claim. To reiterate, despite Beauty Nation’s own pleaded position that it observed the Defendants advertising, marketing and selling the Products bearing the Trade Marks since 2017, RKPL, acting on Beauty Nation’s behalf, continued to supply the Products for a prolonged period up until the Cease and Desist Letter without any objections to the use of the Trade Marks by RKPL or Beauty Nation. Given the parties’ relationship which extended beyond a decade and was built on trust and confidence, the consistent supply of the Products without objections notwithstanding knowledge of the use of the Trade Marks, evinces implied consent to use the same. Accordingly, Beauty Nation impliedly consented to the Defendants’ use of the Trade Marks in the sale and advertising of the Products.

85 As I have found that the Defendants used the Trade Marks with Beauty Nation’s consent, there is no need for me to examine the specific elements of each ground of trade mark infringement. Beauty Nation’s claim for trade mark infringement fails at this stage.

86 In an inverse passing off situation, one trader misrepresents himself as the source of another trader’s goods or services: Tessensohn Denyse Bernadette v John Robert Powers School Inc [1994] 1 SLR(R) 470 (“John Robert Powers School”) at [23]. This is as opposed to classic passing off where one trader misrepresents that his goods or services emanate from another trader.

87 Nonetheless, the classical trinity of goodwill, misrepresentation and damage apply equally to a claim for inverse passing off: John Robert Powers School at [25]. The following must thus be established (Singsung Pte Ltd v LG 26 Electronics Pte Ltd [2016] 4 SLR 86 (“Singsung”) at [34]; John Robert Powers School at [25]):

(a) goodwill is attached to the claimant’s business as a whole;

(b) the defendants misrepresented themselves as the commercial source of the claimant’s goods or services; and

(c) the claimant’s goodwill was damaged as a consequence.

88 Beauty Nation submits that it has proven the three elements of inverse passing off (see [87] above): ¹³³

(a) Beauty Nation had acquired goodwill in its business under the Trade Marks through longstanding, extensive use and promotion. ¹³⁴

(b) The Defendants were misrepresenting themselves as the commercial source of the Products by, inter alia, inserting “Herbs Health” in the title of their Online Listings. ¹³⁵

(c) The Defendants damaged Beauty Nation’s goodwill, causing a “loss of custom and tarnishment of [Beauty Nation’s] brands and marks”, diversion of Beauty Nation’s business and damage to Beauty Nation’s “reputation amongst customers”. ¹³⁶

89 The Defendants aver that as authorised retailers of the Products, they were supplying genuine goods originating from Beauty Nation. ¹³⁷ The Defendants explain that the inclusion of “Herbs Health” in the title of their Online Listings was intended to identify the seller of the Products and not the manufacturer. ¹³⁸ Accordingly, the Defendants submit that no misrepresentation as to the source of the Products arose. ¹³⁹ Further, the Defendants argue that there is no evidence that damage flowed from any alleged misrepresentation. ¹⁴⁰

90 Goodwill is the attractive force that brings custom which attaches to the claimant’s business. Goodwill exists in Singapore when a business offers a product for sale in this jurisdiction and a customer purchases the product here: Singsung at [67]. Beauty Nation has demonstrated the availability of the Products in Singapore through various department stores, pharmacies and online channels. ¹⁴¹ The Defendants have also not disputed the existence of goodwill attaching to Beauty Nation’s business. Accordingly, I find that Beauty Nation has established goodwill in its business under the Trade Marks.

91 Under the misrepresentation inquiry, the threshold requirement is that the claimant’s mark must be distinctive of its goods or services: Singsung at [38]. As the Defendants do not contest the said requirement, I proceed on this basis.

92 Next, for a misrepresentation to be actionable, the claimant must prove that the defendant has made a misrepresentation and this gives rise to actual or a likelihood of confusion: Singsung at [70]. This confusion may manifest in the relevant public being led to believe that the defendant is the source of goods or services that are in fact offered by the claimant, owing to the defendant’s misrepresentation as to the trade origin of the claimant’s goods or services.

93 Beauty Nation relies on the following conduct by the Defendants which, in its view, amounted to a misrepresentation that the Defendants were the commercial source of the Products and caused confusion amongst consumers: ¹⁴²

(a) The Defendants’ action of adding the labels “Herbs Health” and “No Brand” to the title of their Online Listings confused consumers into believing that the Defendants were the original manufacturers of the Products. ¹⁴³ I set out an example of Herbs Health’s Listings for reference: ¹⁴⁴

(b) The Defendants engaged in price manipulation by offering discounts and providing erroneous information regarding the prices of the Products, which led consumers to associate the Products with the Defendants. ¹⁴⁵

94 I first address the allegations regarding the Defendants’ price manipulation. These remain unproven. Beyond bare averments, Beauty Nation has not led evidence to prove this point. On the contrary, Mr Chong explained that Herbs Health did not offer discounts on its e-commerce platforms while TCM Shop offered a maximum of 10% discount on TCM Shop’s Website, consistent with the pricing in Herbs Health’s physical retail store. ¹⁴⁶ In any event, such pricing strategies are, at best, commercial decisions.

95 I turn to consider the manner in which the Defendants have titled their Online Listings.

96 There is no merit to Beauty Nation’s allegation in so far as the alleged conduct of the Defendants inserting “No Brand” in the title of their Online Listings’ was concerned, as both Mr Tan and his counsel conceded that they could not point to any documentary evidence in Mr Tan’s AEIC to support this claim. ¹⁴⁷ I reject this evidence-free allegation.

97 Regarding the Defendants’ incorporation of “Herbs Health” before Beauty Nation’s Trade Marks in the title of their Online Listings, Mr Chong clarified why he chose to adopt such a naming convention: ¹⁴⁸

Mr Chong explained that he was reportedly taught to do so by employees from Lazada in order to identify the authorised retailer operating the online store. ¹⁴⁹ He had used the same naming convention for Herbs Health’s Shopee listings, although his evidence was that Shopee’s employees did not give similar instructions. ¹⁵⁰ I am mindful that Beauty Nation has objected to Mr Chong’s evidence pertaining to the references made to his communications with the Lazada employees as the relevant staff has not been called to testify. ¹⁵¹ I find no need to rely on Mr Chong’s testimony in so far as it concerns the alleged instructions by Lazada employees on how to title the listings of the Products. The broader point remains, that it is hard to understand how a likelihood of confusion could arise from the mere inclusion of the “Herbs Health” label in the title of the Online Listings.

98 Ultimately, Beauty Nation’s Trade Marks remained identifiable in the Online Listings, thereby indicating that Beauty Nation was the source of the Products. It is crucial that the title of the Online Listings retained Beauty Nation’s Trade Marks and the accompanying photographs used in the Online Listings clearly illustrated Beauty Nation’s Trade Marks. In addition, Herbs Health’s Listings on Lazada specifically state “Brand: Root King”. ¹⁵² During cross-examination, Mr Tan was able to identify the source of the Product from an example of one of Herbs Health’s Listings on Lazada: ¹⁵³

When prompted with other examples pertaining to Herbs Health’s Listings on Shopee, Mr Tan similarly identified “Root King” as the brand of the Product. ¹⁵⁴

99 Overall, Beauty Nation has not sufficiently proven how the insertion of “Herbs Health” in the title of the Online Listings had misrepresented the origin of the Products. Instead, I find that Beauty Nation’s Trade Marks remained identifiable as the true source of the Products such that the naming convention of adding “Herbs Health” before Beauty Nation’s Trade Marks per se did not give rise to any likelihood of confusion.

100 I am unable to conceive how confusion regarding the source of the Products would arise in principle. As authorised retailers of the Products, the Defendants were, at all material times, selling genuine goods from Beauty Nation that were sourced from RKPL. The commercial source of the Products was therefore not displaced.

101 In this regard, the policy considerations that inverse passing off seeks to address are not engaged on the facts. Inverse passing off protects the situation where a consumer makes a mistake as to the attributes of goods or services that are acquired from the defendant: Golden Season Pte Ltd v Kairos Singapore Holdings Pte Ltd [2015] 2 SLR 751 (“Golden Season”) at [230]. The consumer is thereby induced to acquire the defendant’s goods or services under the mistaken belief that the defendant’s goods or services enjoy the same goodwill as the claimant’s: Golden Season at [230]. On the facts, consumers who purchased the Products from the Defendants were under no such mistaken belief. They purchased the Products from the Defendants under the rightful impression that they were genuine goods sourced from Beauty Nation, and they received legitimate products originating from Beauty Nation.

102 It follows that Beauty Nation has not proven, on a balance of probabilities, that an actionable misrepresentation arose on the facts. In the result, Beauty Nation’s claim for inverse passing off fails. There is no need for me to consider whether any damage to Beauty Nation’s goodwill occurred.

103 The statutory tort of groundless threats of infringement proceedings strikes a balance between protecting intellectual property rights and addressing the use of threats of legal proceedings to chill legitimate activities: Singsung at [129].

104 The Defendants argue that Beauty Nation’s issuance of the Cease and Desist Letter (at [20] above) constituted groundless threats of copyright and trade mark infringement proceedings under s 499 of the CA and s 35 of the TMA respectively. The Defendants seek a declaration that Beauty Nation’s threats were groundless and unjustified, an injunction against the continuation of the threats and damages in respect of any loss sustained by the threats. ¹⁵⁵

105 In response, Beauty Nation submits that its allegations of copyright and trade mark infringement were not groundless. ¹⁵⁶ Beauty Nation also asserts that Herbs Health has not shown that it was an aggrieved person. ¹⁵⁷

106 I first set out the relevant parts of s 499 of the CA:

107 Section 35 of the TMA, in part, reads:

108 In the Cease and Desist Letter (reproduced at [20] above), Beauty Nation alleged, inter alia, the following:

(a) Products bearing the Trade Marks were “display[ed] and referenc[ed]” in the Online Listings to “further [the Defendants’] business as a Chinese Medicine Shop”.

(b) The Copyright Materials were featured during advertising in the Online Listings.

(c) The aforesaid conduct constituted an infringement of Beauty Nation’s intellectual property rights.

(d) Beauty Nation demanded that Herbs Health cease and desist from the unauthorised use of the Trade Marks and the Copyright Materials in the Online Listings. Further demands for a signed copy of an undertaking, payment of damages, written confirmation of removal and a published written apology were also made.

(e) Beauty Nation reserved its rights to commence court proceedings should its demands not be met.

109 There can be little doubt that a reasonable person in the Defendants’ position would objectively view the statements summarised in [108] above as threats to sue for trade mark and copyright infringement: Triple D Trading Pte Ltd v Fanco Fan Marketing Pte Ltd [2023] 3 SLR 1417 (“Triple D Trading”) at [61].

110 In relation to the groundless threat of trade mark infringement proceedings, I consider whether the threat was rendered unactionable by virtue of ss 35(1)(a)–(c) of the TMA. The Defendants argue that the Cease and Desist Letter contained a threat of trade mark infringement proceedings which exceeded that of an application of a mark to goods (ie, s 35(1)(a) of the TMA) as the acts complained of related to the use, marketing and advertising. ¹⁵⁸ On the other hand, Beauty Nation alleges that the demands contained in the Cease and Desist Letter concerned an excluded act falling within ss 35(1)(a)–(c) of the TMA. ¹⁵⁹ However, Beauty Nation has not elaborated on why this is the case.

111 In my opinion, the threat in the Cease and Desist Letter remains actionable. The plain language of ss 35(1)(a)–(c) of the TMA does not exclude threats made in relation to further acts such as the sale and/or advertising of goods bearing the impugned mark from being actionable: Triple D Trading at [67]. Likewise, the acts complained of in the Cease and Desist Letter were not limited to the mere application of the Trade Marks to the Products, which would otherwise have been excluded by virtue of s 35(1)(a) of the TMA, but extended to the Defendants’ advertising and sale of these goods in the Online Listings.

112 Neither did the threat concern the importation of goods bearing the Trade Marks or a supply of services under the Trade Marks, which would otherwise have been excluded by virtue of ss 35(1)(b)–(c) of the TMA respectively. While some of the Trade Marks are registered in Class 35 for, amongst others, advertising services (see [3] above), I am mindful that the threat in the Cease and Desist Letter was in respect of the Defendants’ advertising of the Products (ie, goods) under the Trade Marks. In any event, the advertising of services using a registered trade mark does not constitute a supply of services under the mark pursuant to s 35(1)(c) of the TMA: Dr Babor GmbH & Co KG v Sante De Beaute Pte Ltd [2018] 5 SLR 928 at [57]. It follows that the Defendants’ advertising of the goods bearing the Trade Marks would not fall within s 35(1)(c) of the TMA. In the circumstances, the threat of trade mark infringement proceedings in the Cease and Desist Letter is actionable under s 35(1) of the TMA.

113 The grant of relief for groundless threats of proceedings is discretionary. The court will undertake a fact-sensitive inquiry regarding whether the actions that were claimed to be groundless threats were warranted and whether the court should exercise its discretion to award relief considering, inter alia, the cost consequences of the failed claim: Singsung at [148]. To that end, the following principles are relevant when determining the appropriateness of relief (Singsung at [148]):

(a) The grant of a declaration and an injunction are discretionary remedies.

(b) The court retains a discretion to refuse an inquiry as to damages if the damage suffered is likely to be trivial or negligible, or if there is no evidence of loss to the claimant.

Other reasons why relief may not be granted are when the groundless threats claim is futile or unnecessary, or there is no reasonable expectation of the threats being repeated: Law of Trade Marks in Singapore at para 15.027.

114 The Defendants say that because there was no underlying copyright or trade mark infringement, such threats were groundless. ¹⁶⁰ However, that is not the end of the inquiry. A failed claim of infringement does not ipso facto warrant relief for groundless threats of infringement proceedings, as any relief is ultimately discretionary: Singsung at [148]. The court must thus consider whether, in all the circumstances, there is any reason to grant relief upon a claim of groundless threats that is founded on a failed allegation of infringement: Singsung at [148]. The abovementioned considerations at [113] are thus relevant.

115 I find that the Defendants have not substantiated any discernible loss arising from the threats in the Cease and Desist Letter. The Defendants argue that the threats in the Cease and Desist Letter had caused immediate commercial impact arising from the Defendants’ removal of the Online Listings of the Products. ¹⁶¹ Additionally, these losses apparently flowed directly from the Cease and Desist Letter as the threats had caused them to immediately halt their online sales, remove their Online Listings and clear their stock, leading to an end to their revenue. ¹⁶² However, according to Mr Chong’s own evidence, the remaining stock of the Products was thereafter sold in Herbs Health’s physical retail outlet and all stock was successfully sold by January 2024. ¹⁶³ In these circumstances, it is unclear what losses the Defendants could have sustained from taking down the Online Listings. On the Defendants’ own account, they managed to realise the economic benefit of the remnant stock by selling it in Herbs Health’s physical retail store. Accordingly, the Defendants have not established that any loss arose from the threats set out in the Cease and Desist Letter.

116 Regarding the Defendants’ prayer for declaratory relief, I look no further than to adopt the Court of Appeal’s holdings in Singsung at [149]:

Further, as Herbs Health has ceased to be an authorised retailer of the Products and the Defendants have stopped selling the Products, ¹⁶⁴ it is unlikely that Beauty Nation would issue new threats. As such, the Defendants have not demonstrated any basis for me to grant an injunction against the continuance of the threats.

117 Accordingly, I make no order regarding the counterclaim as the Defendants have not sufficiently shown that the relief they seek is appropriate.

118 To conclude, I dismiss Beauty Nation’s claims for copyright and trade mark infringement, as well as passing off. Additionally, I make no order in relation to the Defendants’ counterclaim of groundless threats of copyright and trade mark infringement proceedings.

119 Litigation is aimed at resolving genuine disputes between parties. It is not intended for the mounting of a frivolous claim with the ulterior purpose of gaining some commercial leverage. Such a principle assumes special significance for proceedings under the Simplified Process for Certain Intellectual Property Claims, which the present claims are brought under. This process is, in general, meant for parties with fewer financial resources. Court proceedings under this process should not be misused to commence an action which lacks sufficient legal basis and is designed to stifle legitimate and fair competition in the market place.

120 On that note, the legal and commercial logic of this dispute is incomprehensible. Beauty Nation attempted to restrain, what it had regarded as a long-standing trusted authorised retailer, from selling and advertising its genuine Products online by alleging copyright and trade mark infringement, and passing off. Viewed in the context of the relationship between Herbs Health and RKPL that subsisted beyond a decade and was built on mutual trust, it would have sufficed for Beauty Nation to revoke its implied licence by requesting the removal of the Online Listings and bringing the matter to an end. To exacerbate the situation, despite the Defendants having ceased all sales of the Products, Beauty Nation still commenced this action and prayed for, inter alia, an injunction to restrain further acts of infringement. Bearing in mind that the Defendants were at all material times selling Beauty Nation’s genuine Products, it defies logic that any damage would have been suffered by Beauty Nation.

121 I shall hear parties separately on costs.