Case Details
- Citation: [2016] SGHC 131
- Title: Allergan, Inc and another v Ferlandz Nutra Pte Ltd
- Court: High Court of the Republic of Singapore
- Date of Decision: 20 July 2016
- Case Number: Suit No 34 of 2013
- Coram: George Wei J
- Judgment Length: 44 pages; 21,336 words
- Plaintiffs/Applicants: Allergan, Inc; Allergan Singapore Pte Ltd
- Defendant/Respondent: Ferlandz Nutra Pte Ltd
- Counsel for Plaintiffs: Alban Kang and Oh Pin-Ping (Bird & Bird ATMD LLP)
- Counsel for Defendant: Wang Yingyu and Roxanne Low (Via Law Corporation)
- Legal Areas: Tort — Malicious Falsehood; Trade Marks and Trade Names — Groundless threat; Trade Marks and Trade Names — Infringement
- Additional Claims/Issues: Passing off
- Trade Mark at Issue: “LATISSE” (word mark) registered by the First Plaintiff under the Trade Marks Act (Cap 332, 2005 Rev Ed) in Class 5
- Sign(s) Alleged to Infringe: “Plain Lassez” sign and “Lassez Device” sign (collectively, “the Allegedly Infringing Signs”); also relevant “Lassez ‘Ingredient’” sign for passing off
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) including ss 27(2)(b), 28(4), 35(2)
- Key Authorities Cited: The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] 2 SLR(R) 690; Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] 2 SLR 941; Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2015] SGHC 216; Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911; and the cited malicious falsehood/groundless threat and passing off authorities referenced in the judgment
Summary
Allergan, Inc and Allergan Singapore Pte Ltd sued Ferlandz Nutra Pte Ltd for trade mark infringement, passing off, and malicious falsehood arising from the marketing of an eyelash growth-enhancement product called the “Lassez Product”. The plaintiffs relied principally on their registered word mark “LATISSE” and alleged that the defendant’s branding and promotional materials were sufficiently similar to create confusion among the relevant public. The plaintiffs also alleged that the defendant made false statements about the plaintiffs’ rights and products, and that the defendant’s conduct caused (or was calculated to cause) pecuniary harm.
The High Court (George Wei J) approached the case by separating the claims into distinct doctrinal inquiries: (i) trade mark infringement under s 27(2)(b) of the Trade Marks Act (including the similarity of marks and likelihood of confusion), (ii) groundless threats under s 35(2) (counterclaim by the defendant), (iii) passing off (goodwill, misrepresentation, and damage), and (iv) malicious falsehood (publication of a false statement, malice, and intention to cause pecuniary damage). The court’s reasoning emphasised the “mark for mark” comparison, the perspective of the average consumer with imperfect recollection, and the evidential requirements for each tort and statutory cause of action.
What Were the Facts of This Case?
The First Plaintiff, Allergan, Inc, is an American healthcare company with offices worldwide. Its Singapore subsidiary, the Second Plaintiff, distributes Allergan’s healthcare products in Singapore. The central product in the dispute was an eyelash growth product sold in Singapore since January 2011: the “Latisse Product”. The Latisse Product is used to treat eyelash hypotrichosis, a medical condition involving inadequate or insufficient eyelashes. The plaintiffs emphasised that it is the only product approved by the United States Food and Drug Administration (FDA) for that condition.
In Singapore, the plaintiffs marketed the Latisse Product under two “Latisse Signs”: a registered word mark “LATISSE” and an unregistered sign referred to as the “Latisse Device Sign”. The “LATISSE” mark was registered by the First Plaintiff under the Trade Marks Act in Class 5 of the Nice Classification. Class 5 covers pharmaceuticals and medical preparations, including pharmaceutical preparations used to treat eyelashes (as reflected in the application specification). The Latisse Device Sign incorporated the word “Latisse” and a design resembling eyelashes positioned above the letters “isse”.
The defendant, Ferlandz Nutra Pte Ltd, is a Singapore company importing and distributing cosmeticeutical and neutraceutical products. It was incorporated by its sole director and shareholder, Mr Lee, in 2005. In July 2012, the defendant brought into Singapore an eyelash growth-enhancement product made in America, marketed as the “Lassez Product”. The defendant marketed the Lassez Product using three signs: (i) a “Plain Lassez” sign, (ii) a “Lassez Device” sign, and (iii) a “Lassez ‘Ingredient’” sign. The plaintiffs’ infringement case focused on the first two signs, while the “Ingredient” sign was relevant particularly to the passing off inquiry.
Procedurally, the defendant later objected—belatedly—to the “Plain Lassez” sign being considered as the defendant’s sign for trade mark infringement, arguing that the “Lassez Device Sign” was the sign actually used to market the product. The court treated this objection as precluded by the defendant’s own admissions in its pleadings that it had previously sold the Lassez Product using reference to both the Plain Lassez sign and the Lassez Device sign. The court also noted that the defendant’s pending trade mark application relating to the Plain Lassez sign was opposed by the plaintiffs and held in abeyance pending the outcome of the proceedings.
What Were the Key Legal Issues?
The dispute raised four broad categories of issues. First, the plaintiffs alleged trade mark infringement of the LATISSE mark under s 27 of the Trade Marks Act. Within this, the court had to decide whether the defendant’s “Allegedly Infringing Signs” were similar to the LATISSE mark, whether the Lassez Product fell within goods identical with or similar to those for which the LATISSE mark was registered, and whether there was a likelihood of confusion among the relevant public.
Second, the defendant counterclaimed that the First Plaintiff made groundless threats of infringement proceedings under s 35(2) of the Trade Marks Act. This counterclaim depended on the defendant’s ability to show that the threats were “groundless” in the sense that the plaintiffs’ infringement position failed.
Third, the plaintiffs pursued passing off. That required proof of goodwill in Singapore, a misrepresentation by the defendant that created a likelihood of confusion, and actual or likely damage to the plaintiffs’ goodwill.
Fourth, the defendant was alleged to have spread malicious falsehood about the plaintiffs. This tort required proof that the defendant published a false statement, did so maliciously, and that the statement was calculated to cause pecuniary damage.
How Did the Court Analyse the Issues?
For trade mark infringement under s 27(2)(b), the court applied the structured test articulated by the Court of Appeal in The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd. To succeed, the plaintiffs had to establish three elements: (1) similarity between the defendant’s sign and the registered mark, (2) use in relation to goods or services identical with or similar to those covered by the registration, and (3) a likelihood of confusion on the part of the public arising from the first two factors. The court noted that there was no challenge to the registration of the LATISSE mark, narrowing the inquiry to similarity, goods, and confusion.
On the similarity of marks inquiry, the court drew on the Court of Appeal’s guidance in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd. The court emphasised that similarity is assessed by considering visual, aural, and conceptual similarities, with the relative weight of each aspect depending on the facts. Importantly, the court reiterated that the comparison is “mark for mark”, without importing extraneous matters, and that the perspective is that of the average consumer who exercises some care and good sense. The court also stressed the relevance of imperfect recollection, and the practical reality that consumers do not compare marks like lawyers in a laboratory.
The court further described the similarity assessment as a matter of impression rather than a mechanistic exercise, citing Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd and the “feel” characterisation from the authorities. This approach is consistent with the Singapore courts’ tendency to treat trade mark similarity as a holistic evaluative exercise. The court then proceeded to identify the relevant “average consumer” in the context of eyelash products marketed to treat or enhance eyelashes, and to apply that consumer perspective to the visual, aural, and conceptual features of “LATISSE” versus the “Plain Lassez” and “Lassez Device” signs.
Although the provided extract truncates the remainder of the judgment, the court’s methodology is clear from the portion quoted: it first defines the average consumer, then compares the dominant features of the marks, and finally determines whether the signs are similar in a way that can support a finding of likelihood of confusion. In trade mark cases, the similarity of marks is only one component; the court must also consider whether the goods are identical or similar to the registered goods and whether confusion is likely. The plaintiffs’ reliance on the Class 5 registration and the specification relating to pharmaceutical preparations used to treat eyelashes indicates that the court would examine the nature of the Lassez Product and its market positioning against the registered goods.
For the groundless threats counterclaim, the court’s analysis would have turned on the statutory scheme under s 35(2). Typically, such claims require the court to assess whether the threats were made without reasonable basis. The defendant’s counterclaim was premised on its “successful defence” of the plaintiffs’ infringement claims, meaning that if the plaintiffs failed on infringement, the threats might be characterised as groundless. The court’s earlier separation of the infringement issues into distinct categories suggests it would have treated the groundless threats question as dependent on the substantive outcome of the infringement and related findings.
For passing off, the court would have applied the classic tripartite structure: goodwill, misrepresentation, and damage. The plaintiffs’ goodwill would likely be inferred from their long-standing sales in Singapore since 2011 and the medical and regulatory positioning of the Latisse Product. The misrepresentation inquiry would focus on whether the defendant’s branding and marketing created a likelihood of confusion as to origin, sponsorship, or association. The “Lassez ‘Ingredient’” sign was flagged as relevant to this inquiry, implying that the court would scrutinise the content and presentation of that sign to determine whether it conveyed misleading comparative or factual claims about the plaintiffs’ product.
For malicious falsehood, the court would have required more than mere falsity. The tort demands publication of a false statement, malice (in the sense of knowledge of falsity or reckless disregard), and that the statement was calculated to cause pecuniary damage. The plaintiffs’ pleaded case suggests that the defendant’s statements were not treated as mere puffery or ordinary marketing claims, but as assertions capable of affecting commercial interests. The court’s structured approach to the elements—false statement, malice, and pecuniary damage—indicates that it would have examined the evidential basis for the statements and the defendant’s state of mind at the time of publication.
What Was the Outcome?
The extract provided does not include the court’s final dispositive orders. However, the judgment is structured around the four categories of claims and the defendant’s counterclaim, and the court’s analysis indicates that it would have made findings on (i) trade mark infringement under s 27(2)(b), (ii) whether any groundless threats were made under s 35(2), (iii) whether the defendant’s conduct amounted to passing off, and (iv) whether malicious falsehood was established. The practical effect of the outcome would therefore include either injunctive relief and/or damages (or an account of profits) for the plaintiffs if infringement/passing off/malicious falsehood were made out, and dismissal of the counterclaim if the threats were not groundless.
Conversely, if the court found that the plaintiffs failed to prove one or more essential elements—particularly likelihood of confusion for trade mark infringement or the malice and pecuniary damage elements for malicious falsehood—the defendant would likely have obtained dismissal of those claims and potentially succeeded on the groundless threats counterclaim. For practitioners, the key takeaway is that the court treated each cause of action as requiring proof of its own elements rather than relying on overlap between the claims.
Why Does This Case Matter?
This decision is significant for Singapore trade mark and unfair competition practice because it demonstrates the court’s disciplined, element-by-element approach to infringement, passing off, groundless threats, and malicious falsehood. The court’s emphasis on the similarity of marks inquiry—visual, aural, and conceptual comparison from the standpoint of the average consumer with imperfect recollection—reinforces the doctrinal framework that lawyers must apply when advising on branding, packaging, and comparative advertising.
For trade mark owners, the case also highlights the importance of aligning the infringement analysis with the registration scope. The LATISSE mark was registered in Class 5 with a specification relating to pharmaceutical preparations used to treat eyelashes. That registration context matters when assessing whether the defendant’s goods are identical or similar. Practitioners advising on product categories, regulatory claims, and market positioning should therefore ensure that infringement arguments are anchored to the registered goods and the evidence of actual market similarity.
For defendants and marketers, the case is a reminder that comparative advertising and the use of a competitor’s mark in promotional materials can raise trade mark “use” issues and potential liability, depending on how the materials are presented and whether they create confusion. The groundless threats counterclaim also underscores that enforcement communications must be made with reasonable basis; otherwise, the statutory risk under s 35(2) may arise if infringement is not ultimately established.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), including:
- Section 27(2)(b) (infringement where sign is similar, used for identical/similar goods, and there is likelihood of confusion)
- Section 28(4) (fair use in the context of trade mark use, as raised in the pleadings)
- Section 35(2) (groundless threats of infringement proceedings)
Cases Cited
- The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] 2 SLR(R) 690
- Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] 2 SLR 941
- Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2015] SGHC 216
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911
- [2015] SGHC 216
- [2016] SGHC 131
- [1953] MLJ 215
Source Documents
This article analyses [2016] SGHC 131 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.