THE BEAUTY NATION PTE. LTD. v HERBS HEALTH BEN CAO KANG MU PTE. LTD. & Anor

Facts

The Beauty Nation Pte Ltd owns the intellectual property, including 15 registered trade marks, for a range of Traditional Chinese Medicine supplements sold as Miri, Vitroman, Root King and Quan Wei. A related company, Root King Pte Ltd (RKPL), with the same directors, distributed the products to retailers. Herbs Health Ben Cao Kang Mu Pte Ltd, a TCM clinic and shop run by Mr Chong Tuck Seng, was an authorised retailer from 2011 and was supplied by RKPL until about October 2023. Its related company, TCM Shop SG Pte Ltd, sold the products on its website, and from 2022 Herbs Health also sold them on Shopee and Lazada. The listings used photographs Mr Chong took and, from mid-2022, Beauty Nation's own advertising materials. Only genuine products were ever sold.

On 13 October 2023 Beauty Nation sent a cease and desist letter alleging copyright and trade mark infringement and threatening court proceedings. The defendants stopped selling online and Herbs Health ceased to be a retailer. Beauty Nation then sued in Originating Claim No 138 of 2025, under the simplified process for certain intellectual property claims, for copyright infringement, trade mark infringement and inverse passing off. The defendants counterclaimed for groundless threats of infringement proceedings.

Issues

1. Whether the defendants' use of the photographs and advertising materials infringed copyright, or was covered by an implied licence.
2. Whether the defendants' use of the trade marks in online sales and advertising was without Beauty Nation's consent.
3. Whether the defendants passed themselves off as the source of the products.
4. Whether the cease and desist letter was an actionable groundless threat, and whether relief should be granted.

Holding

Dedar Singh Gill J dismissed Beauty Nation's claims for copyright infringement, trade mark infringement and passing off. On the counterclaim, the court found the threat of trade mark proceedings actionable but made no order, as no basis for any of the relief sought was shown. Costs were to be heard separately.

Reasoning

On copyright, the court held that an implied licence arose by conduct, drawing on Helme v Maher [2015] EWHC 3151 (IPEC). Beauty Nation had pleaded that it observed the defendants' online selling and imagery since 18 January 2017, and its director's later account that it learned of the listings only in 2022 was inconsistent and rejected. Despite that knowledge, RKPL, which acted for Beauty Nation in all dealings with retailers, kept supplying Herbs Health monthly without objection over a relationship of more than a decade built on trust. Earlier self-taken photographs were removed only because they were outdated, not on copyright grounds. The licence extended to TCM Shop as the online arm and lasted until the cease and desist letter. Online sales also benefited Beauty Nation as manufacturer.

The same facts showed implied consent to the use of the trade marks when offering and advertising the goods, so no ground of infringement under s 27 of the Trade Marks Act 1998 was made out. On inverse passing off, goodwill existed, but there was no misrepresentation. The allegation of price manipulation was unproven, the "No Brand" allegation had no documentary support, adding "Herbs Health" to listing titles identified the retailer, and the trade marks and the "Root King" brand remained visible, so buyers received exactly the genuine goods they expected.

The letter was an objective threat of proceedings, and the trade mark threat was actionable because it concerned sale and advertising rather than the excluded acts in s 35(1) of the Trade Marks Act 1998. But relief is discretionary. No loss was shown, since the remaining stock was sold in the shop by January 2024, a declaration was unnecessary once the infringement claims failed, and further threats were unlikely. The judge criticised the claim as lacking legal and commercial logic, observing that Beauty Nation could simply have revoked the licence instead of using a process meant for parties of modest means to stifle legitimate competition.

From the judgment