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 Reserved: Yes (judgment date 20 July 2016)
- 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 Causes of Action (as pleaded): Passing off
- Key Statutory Provisions Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”): s 27(2)(b), s 28(4), s 35(2)
- Trade Mark at Issue: “LATISSE” word mark registered by the First Plaintiff in Class 5 (Nice Classification)
- Other Sign/Mark: “Latisse Device Sign” (not registered)
- Defendant’s Product: “Lassez Product” marketed under “Plain Lassez Sign” and “Lassez Device Sign” (and other related signage)
- Judgment Length: 44 pages; 21,336 words
- Cases Cited (as provided): [1953] MLJ 215; [2015] SGHC 216; [2016] SGHC 131 (including the same citation as the case itself)
Summary
Allergan, Inc and Allergan Singapore Pte Ltd brought proceedings against Ferlandz Nutra Pte Ltd for trade mark infringement, passing off, and malicious falsehood. The dispute centred on an eyelash growth product marketed in Singapore under the LATISSE brand by the Plaintiffs and a competing eyelash growth-enhancement product marketed by the Defendant under closely resembling “Lassez” branding. The Plaintiffs alleged that the Defendant’s use of the “Lassez” signs infringed their registered LATISSE word mark, and that the Defendant’s promotional materials and conduct also gave rise to passing off and malicious falsehood claims.
In parallel, the Defendant counterclaimed for groundless threats of infringement proceedings under s 35(2) of the Trade Marks Act. The High Court (George Wei J) structured the analysis into four broad categories: (i) infringement under s 27(2)(b), including the similarity of marks and likelihood of confusion; (ii) groundless threats; (iii) passing off; and (iv) malicious falsehood. The judgment applies established Singapore trade mark principles on the “similarity of marks” inquiry and the “average consumer” perspective, emphasising that the assessment is impressionistic (“more a matter of feel than science”) and must be conducted “mark for mark” without extraneous considerations.
What Were the Facts of This Case?
The First Plaintiff, Allergan, Inc, is an American healthcare company that develops and commercialises healthcare products globally. Its Singapore subsidiary, Allergan Singapore Pte Ltd, distributes the First Plaintiff’s products in Singapore. The product at the heart of the dispute is an eyelash growth treatment known as the Latisse Product, which the Plaintiffs have sold in Singapore since January 2011. The product is designed to treat eyelash hypotrichosis, a medical condition involving inadequate or insufficient eyelashes. The judgment notes that the Latisse Product is the only product approved by the US Food and Drug Administration (FDA) for the treatment of hypotrichosis.
In Singapore, the Plaintiffs marketed the Latisse Product under both a registered word mark and an unregistered sign. The registered mark is the LATISSE word mark, 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 Plaintiffs also used a “Latisse Device Sign”, which combines the word “Latisse” with a design resembling eyelashes; this device sign was not registered.
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 Boon Guan, and the judgment describes it as essentially his business structured through a corporate entity. In July 2012, the Defendant imported into Singapore an eyelash growth-enhancement product manufactured in America, marketed under the “Lassez” branding.
The Defendant marketed the Lassez Product using multiple signs. The Plaintiffs’ infringement case focused on two of those signs: the “Plain Lassez Sign” and the “Lassez Device Sign” (collectively, the “Allegedly Infringing Signs”). A third sign, the “Lassez ‘Ingredient’ Sign”, was not central to the trade mark infringement claim but was relevant to the passing off inquiry. The Defendant later raised, belatedly, an objection that the “Plain Lassez Sign” should not be considered as the Defendant’s sign for trade mark infringement because the Defendant allegedly used the “Lassez Device Sign” to market the product. The court treated this objection as precluded by the Defendant’s admissions in its pleadings that it had previously sold the Lassez Product using reference to both signs, and also noted inconsistency with the Defendant’s pending trade mark application relating to the Plain Lassez Sign.
What Were the Key Legal Issues?
The High Court identified four main categories of issues: infringement, groundless threats, passing off, and malicious falsehood. The first and most substantial issue was whether the Defendant infringed the First Plaintiff’s registered LATISSE mark under s 27 of the Trade Marks Act. Within that infringement inquiry, the court broke down subsidiary questions into: (a) whether the Allegedly Infringing Signs are similar to the LATISSE mark; (b) whether the Defendant’s Lassez Product is identical with or similar to the goods for which the LATISSE mark is registered (pharmaceutical preparations used to treat eyelashes); and (c) whether, given similarity and goods overlap, there exists a likelihood of confusion among the relevant public.
The infringement analysis also included a second track: whether the Defendant’s use of the LATISSE mark in comparative advertising constituted “use” in the trade mark sense, and whether such use could qualify as “fair use” under s 28(4) of the TMA. This reflects a common tension in trade mark law between protecting brand owners and permitting comparative advertising, provided the statutory conditions are met.
Beyond infringement, the court had to decide whether the First Plaintiff was liable for making groundless threats of infringement proceedings under s 35(2) of the TMA. This counterclaim depended on the Defendant’s ability to successfully defend against the Plaintiffs’ infringement claims, because groundless threats liability is typically linked to the absence of a valid basis for the threatened proceedings.
How Did the Court Analyse the Issues?
The court began with the trade mark infringement claim under s 27(2)(b) of the TMA, which provides that a person infringes a registered trade mark if, without consent, he uses in the course of trade a sign that is similar to the trade mark, used in relation to goods or services identical with or similar to those for which the mark is registered, and there exists a likelihood of confusion on the part of the public. The court relied on the Court of Appeal’s formulation in The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd, which sets out the three elements: similarity of sign and mark, similarity/identity of goods, and likelihood of confusion.
With respect to the similarity of marks inquiry, the court applied the approach summarised in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd. The court emphasised that the similarity assessment must consider visual, aural, and conceptual similarities. The relative weight of each aspect depends on the facts, including the nature of the goods and the types of marks involved. Importantly, the court reiterated that there is no rigid rule that one aspect is always sufficient or always necessary. The assessment is conducted “mark for mark”, without taking extraneous matters into account, and from the perspective of the average consumer who exercises some care and good sense, rather than an unthinking person in a hurry. The court also recognised that average consumers have imperfect recollection, which can affect how marks are remembered and compared.
The court further reinforced that the similarity inquiry is impressionistic. It cited Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd for the proposition that similarity is “more a matter of feel than science”. It also referred to Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc, where the Court of Appeal described the comparison as “ultimately and inevitably a matter of impression rather than one that can be resolved as a quantitative or mechanistic exercise”. This framing is significant because it signals that courts should not over-engineer the analysis by treating similarity as a purely technical exercise; instead, they must evaluate how the marks would likely be perceived in the real world.
In applying these principles, the court first identified the relevant “average consumer” for the eyelash growth product context. Although the excerpt provided stops before the court’s full conclusion on consumer identity and the final similarity/confusion analysis, the structure indicates that the court would consider how consumers in Singapore purchase and evaluate eyelash growth products—particularly given the medical/healthcare framing of the Plaintiffs’ product and the likely role of clinics or intermediaries in purchase decisions. The court’s approach to the average consumer is crucial because it affects the likelihood of confusion assessment: a more informed or more cautious consumer may reduce confusion, while a consumer who relies on branding cues may be more susceptible to confusion.
On the infringement “first category” (supplying Lassez Products to clinics), the Plaintiffs relied on s 27(2)(b) and argued that the Defendant’s sign usage in that supply chain infringed the LATISSE mark. On the “second category” (use of the LATISSE mark in promotional brochures), the court would have assessed whether the Defendant’s brochures constituted “use” of the mark in the trade mark sense and whether the comparative nature of the advertising could be protected as fair use under s 28(4). Comparative advertising is often permitted, but the statutory “fair use” defence typically requires that the use is in accordance with honest practices and does not unfairly take advantage of or harm the distinctive character or repute of the mark.
After addressing infringement, the court would have turned to the groundless threats counterclaim. The excerpt indicates that the Defendant’s groundless threats claim was premised upon the Defendant’s successful defence of the Plaintiffs’ infringement claims. This means the court’s findings on infringement likely had a direct bearing on whether the threats were “groundless” within the meaning of s 35(2). The court then would have analysed passing off, which typically requires proof of goodwill, misrepresentation leading to confusion, and damage (or likely damage). Finally, the malicious falsehood claim required proof that the Defendant published a false statement, that it was published maliciously, and that it was calculated to cause pecuniary damage.
What Was the Outcome?
The provided extract does not include the court’s final findings and orders. However, the judgment’s organisation makes clear that the court was required to determine (i) whether the Defendant infringed the LATISSE mark under s 27(2)(b) in relation to the Allegedly Infringing Signs, including the likelihood of confusion; (ii) whether the Defendant’s comparative advertising use of the LATISSE mark was actionable or protected by s 28(4); (iii) whether the Plaintiffs were liable for groundless threats under s 35(2); (iv) whether the Plaintiffs succeeded in passing off; and (v) whether the Defendant’s conduct amounted to malicious falsehood.
For practitioners, the practical effect of the outcome would depend on which claims succeeded: if infringement and/or passing off were established, the court would likely grant injunctive relief and ancillary orders (such as delivery up or account of profits/damages, depending on the pleaded and proven heads of relief). If the Defendant succeeded on the groundless threats counterclaim, the court would likely award damages or other relief for the threats. The malicious falsehood outcome would similarly determine whether the Defendant’s statements were actionable and whether damages were recoverable.
Why Does This Case Matter?
This case is useful for lawyers because it brings together several overlapping intellectual property causes of action—trade mark infringement, groundless threats, passing off, and malicious falsehood—within a single commercial dispute. That combination is common in brand competition cases, particularly where a defendant’s product is marketed with branding that may be perceived as close to a registered mark and where comparative advertising or claims about product superiority are made.
Substantively, the judgment is a strong illustration of Singapore’s trade mark infringement framework under s 27(2)(b). It reiterates the governing approach to the similarity of marks inquiry: visual, aural, and conceptual comparison from the perspective of the average consumer, using an impressionistic “mark for mark” assessment. The court’s reliance on Hai Tong, Rovio, and Staywell underscores that similarity is not a mechanical exercise and that courts will focus on how marks are likely to be remembered and perceived in context.
For practitioners, the case also highlights the importance of pleading and evidential consistency. The court treated the Defendant’s late objection to which sign was actually used for infringement as precluded by admissions in pleadings. This serves as a reminder that trade mark litigation often turns on the precise factual matrix of marketing and distribution, and that procedural and pleading positions can constrain later arguments.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed): s 27(2)(b)
- Trade Marks Act (Cap 332, 2005 Rev Ed): s 28(4)
- Trade Marks Act (Cap 332, 2005 Rev Ed): s 35(2)
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
- [1953] MLJ 215 (as cited in the judgment metadata provided)
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.