Case Details
- Citation: [2016] SGHC 131
- Title: Allergan, Inc & Anor 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
- Judge: George Wei J
- Hearing Dates: 20, 21, 22, 25, 26 January 2016; 26 February 2016
- Procedural Posture: Judgment reserved
- Plaintiffs/Applicants: (1) Allergan, Inc; (2) Allergan Singapore Pte Ltd
- Defendant/Respondent: Ferlandz Nutra Pte Ltd
- Core Causes of Action: Trade mark infringement; passing off; malicious falsehood; counterclaim for groundless threats of infringement proceedings
- Legal Areas: Tort (malicious falsehood); Trade Marks and Trade Names (infringement; groundless threats; comparative advertising/fair use); Passing off
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”)
- Cases Cited: [2015] SGHC 216; [2016] SGHC 131
- Judgment Length: 85 pages; 22,893 words
Summary
This High Court decision concerns a dispute between the well-known pharmaceutical and healthcare company Allergan and a Singapore distributor, Ferlandz Nutra, over the marketing of an eyelash growth-enhancement product. Allergan’s case was anchored on its registered word mark “LATISSE” (and related unregistered get-up/signs) used in connection with pharmaceutical preparations for treating eyelash hypotrichosis. Ferlandz imported and marketed a competing product, the “Lassez Product”, using signs that included “LASSEZ” and a device incorporating an eyelash-like design.
The court addressed multiple layers of intellectual property and commercial tort claims: (i) whether Ferlandz infringed Allergan’s registered trade mark under s 27 of the TMA, including both “supply to clinics” and “comparative advertising” theories; (ii) whether Allergan was liable for groundless threats of infringement proceedings under s 35(2) of the TMA (based on Ferlandz’s successful defence); (iii) whether Ferlandz was liable in passing off by misrepresenting an association with Allergan’s goods; and (iv) whether Ferlandz was liable for spreading malicious falsehood about Allergan. The judgment also required careful analysis of consumer perception, similarity of marks, similarity of goods/services, and the likelihood of confusion.
While the provided extract truncates the later portions of the judgment, the structure and pleaded issues show that the court undertook a full trade mark infringement analysis (including the “average consumer” and the “use in the trade mark sense” questions for comparative advertising), then moved to the distinct but related tort frameworks of passing off and malicious falsehood, and finally considered the statutory counterclaim for groundless threats. The decision is therefore useful both for trade mark doctrine and for the practical interplay between infringement, passing off, and threats litigation.
What Were the Facts of This Case?
The first plaintiff, Allergan, Inc, is an American company that develops and commercialises healthcare products, with offices in more than 100 countries and more than 10,000 employees. The second plaintiff, Allergan Singapore Pte Ltd, is Allergan’s wholly owned Singapore subsidiary and distributes Allergan’s products in Singapore. The dispute centres on an eyelash growth product sold in Singapore since January 2011: the “Latisse Product”.
The Latisse Product is designed to treat eyelash hypotrichosis, a medical condition characterised by inadequate or insufficient eyelashes. It is described as the only product approved by the United States Food & Drug Administration (“FDA”) for the treatment of hypotrichosis. Allergan marketed the product under both a registered word mark and an unregistered sign. The registered mark is the word “LATISSE”, registered in Class 5 under the Nice Classification. The specification relevant to this case is “pharmaceutical preparations used to treat eyelashes”. The mark is also registered worldwide in numerous jurisdictions.
In addition to the registered word mark, Allergan used a “Latisse Device Sign” comprising the word “Latisse” and a design resembling eyelashes, positioned above the letters “isse”. This device sign was not registered. The plaintiffs’ infringement case therefore relied on the registered LATISSE mark for the statutory trade mark claims, while also using the broader marketing presentation to support passing off and confusion-based arguments.
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, and the company’s business is essentially Mr Lee’s own commercial structure. In July 2012, Ferlandz imported into Singapore an eyelash growth-enhancement product made in America, referred to as the “Lassez Product”. The Lassez Product was marketed under three signs: a plain “Lassez” sign, a “Lassez Device Sign” (with an eyelash-like device element), and a “Lassez ‘Ingredient’ Sign”.
Allergan alleged trade mark infringement only in relation to two of these signs: the “Plain Lassez Sign” and the “Lassez Device Sign” (collectively, the “Allegedly Infringing Signs”). However, the defendant later objected—belatedly in closing submissions—that the plain sign should not be treated as its relevant sign for infringement purposes because it claimed that the device sign was the one actually used to market the product. The court noted that this objection was precluded by the defendant’s admissions in its pleadings that it had previously sold the Lassez Product using both signs, and the court also observed inconsistency with the defendant’s own pending trade mark application relating to the plain sign.
What Were the Key Legal Issues?
The court grouped the issues into four broad categories: trade mark infringement; groundless threats; passing off; and malicious falsehood. The first and most substantial category was whether Ferlandz infringed Allergan’s registered LATISSE mark under s 27 of the TMA. This required the court to examine similarity of signs, similarity of goods/services, and likelihood of confusion, applying the statutory infringement framework.
Within the infringement analysis, the court considered two pleaded “categories” of infringement. The first category concerned whether Ferlandz infringed by supplying Lassez Products to clinics in a manner that used signs allegedly similar to LATISSE. The second category concerned whether Ferlandz infringed by using the LATISSE mark in promotional brochures for the Lassez Product, including in comparative advertising. For the second category, the court had to consider whether the brochures constituted “use” of the mark in the trade mark sense and whether the conduct could be justified as “fair use” under s 28(4) of the TMA.
The second major issue was Ferlandz’s counterclaim that Allergan was liable for making groundless threats of infringement proceedings under s 35(2) of the TMA. This claim depended on the outcome of the infringement proceedings: if Allergan’s threats were groundless, statutory liability could follow.
The third and fourth issues were tort-based. For passing off, the court had to determine whether Allergan had goodwill in Singapore, whether Ferlandz made a misrepresentation likely to cause confusion, and whether Allergan suffered or was likely to suffer damage as a result. For malicious falsehood, the court had to determine whether Ferlandz published a false statement about Allergan, whether it was published maliciously, and whether it was calculated to cause pecuniary damage.
How Did the Court Analyse the Issues?
The court’s trade mark infringement analysis followed the conventional structure for s 27 infringement: it first assessed similarity between the allegedly infringing signs and the registered mark, then considered whether the goods/services were identical or similar, and finally evaluated whether there was a likelihood of confusion among the relevant public. The judgment extract shows that the court treated the “average consumer” as the reference point and broke down similarity into aural, visual, and conceptual components.
On similarity of signs, the court analysed the allegedly infringing signs against the LATISSE mark. This included examining how the marks would be perceived in ordinary commercial use, including the extent to which the shared phonetic elements (“Latisse” versus “Lassez”) might produce aural similarity, the extent to which the word components and device elements might create visual similarity, and whether the overall impression conveyed a similar conceptual message. The court then drew a conclusion on similarity, which served as a necessary foundation for the likelihood of confusion inquiry.
Next, the court considered whether the Lassez Product was identical with or similar to the goods and services for which the LATISSE mark was registered. Importantly, the court treated the “actual product to which the LATISSE mark has been applied” as relevant to the analysis. The Latisse Product was described as a pharmaceutical preparation approved by the FDA to treat hypotrichosis. The court therefore had to decide whether Ferlandz’s cosmeticeutical/neutraceutical eyelash growth-enhancement product fell within the relevant competitive field such that consumers would regard the products as coming from the same or economically linked undertakings.
Having found similarity in the first two conditions (as the extract indicates the court proceeded on the basis that the first two conditions were satisfied), the court then turned to likelihood of confusion. This required identification of the relevant public and the relevant section of the public. The court specifically examined whether end-users were part of the relevant public and whether medical professionals were likely to be confused. This is a critical nuance in pharmaceutical-adjacent disputes: if sales are channelled through clinics, the decision-maker and the ultimate consumer may differ, and both groups may have different levels of attention and knowledge.
The court analysed the identity of end-users and whether they would be confused, and separately considered the likelihood of confusion among medical professionals. The presence of clinics as intermediaries also affected the practical likelihood of confusion: even if end-users are less informed, professionals might still be influenced by branding and comparative claims. The court’s approach reflects the principle that the likelihood of confusion is assessed in relation to the relevant public, which may include both purchasers and those who influence purchase decisions.
For the second category of alleged infringement—comparative advertising—the court addressed two subsidiary issues. First, it asked whether the promotional brochures containing the LATISSE mark constituted “use” in the trade mark sense. This is a doctrinal requirement: not every mention of a mark in advertising automatically amounts to trade mark “use” for infringement purposes. Second, it considered whether the brochures could be justified as “fair use” within s 28(4) of the TMA. The judgment extract indicates that the court reviewed the history of s 28(4)(a) and compared the English position with the US position, then applied the principles to the facts.
In doing so, the court would have evaluated whether the comparative advertising was genuinely fair and not misleading, and whether it took unfair advantage of the mark or undermined its distinctiveness. The extract also shows that the court considered the “US position” and compared it with the English position, suggesting that the court treated comparative advertising as a contested area where policy considerations (freedom of commercial speech versus protection of trade mark functions) matter.
After trade mark infringement, the court addressed passing off. The passing off analysis required proof of goodwill, misrepresentation, and damage. The extract indicates that the court examined the plaintiffs’ goodwill attached to the goods and services they provide, then assessed whether Ferlandz made a misrepresentation creating a likelihood of confusion. The court’s passing off reasoning also appears to have considered the defendant’s intentions (including “intentions of Mr Lee”), the similarity of signs, the similarity of promotional materials, product packaging, and price disparity. These factors are consistent with a holistic assessment of whether consumers would believe there was a commercial connection between the defendant’s product and the plaintiffs’ brand.
For damage, the court considered whether there was likely harm in the form of “blurring” and “tarnishment”. Blurring refers to dilution of distinctiveness, where the mark’s ability to indicate origin is weakened by association with other products. Tarnishment refers to harm to reputation, where the mark is linked with inferior or undesirable qualities. The court’s explicit reference to these concepts indicates a sophisticated approach to the damage element in passing off, particularly where the defendant’s product is positioned as an alternative or substitute.
Finally, the court considered malicious falsehood. The extract shows the court structured the analysis around whether Ferlandz published a false statement, whether it was published maliciously, and whether it was calculated to cause pecuniary damage. This tort requires more than mere falsity; malice and the commercial impact must be established. The court’s final conclusion would therefore depend on the evidence of what was said, the defendant’s state of mind, and the likely effect on business relationships or sales.
What Was the Outcome?
The extract provided does not include the court’s final orders or the ultimate findings on each claim and counterclaim. However, the judgment’s detailed structure indicates that the court determined each pleaded issue in sequence: trade mark infringement (including both supply-to-clinics and comparative advertising theories), groundless threats under s 35(2) (dependent on the infringement outcome), passing off (goodwill, misrepresentation, and damage including blurring/tarnishment), and malicious falsehood (false statement, malice, and pecuniary damage). The practical effect would be reflected in the final declarations and/or injunctions, damages or accounts of profits (if awarded), and the disposition of the counterclaim for groundless threats.
For practitioners, the key practical takeaway is that the court treated the dispute as multi-track: even if one claim fails, others may succeed (or vice versa). The outcome would therefore be assessed claim-by-claim, rather than assuming that the failure of infringement automatically defeats passing off or malicious falsehood, or that success in infringement necessarily triggers groundless threats liability.
Why Does This Case Matter?
This case is significant for Singapore trade mark and unfair competition doctrine because it illustrates how courts analyse similarity and confusion in a pharmaceutical-adjacent context where intermediaries (clinics and medical professionals) may influence purchase decisions. The court’s explicit focus on the “relevant public” and whether end-users and medical professionals are likely to be confused is particularly relevant for brand owners and competitors operating in healthcare and regulated consumer markets.
It also matters for comparative advertising. The court’s attention to whether advertising constitutes “use” in the trade mark sense and whether it can be justified under s 28(4) of the TMA provides guidance for businesses that compare their products with branded competitors. The judgment’s reference to the history of the provision and comparison with other jurisdictions underscores that comparative advertising is not automatically protected; it must be fair and must not mislead or exploit the mark’s goodwill.
From a litigation strategy perspective, the case demonstrates the procedural and evidential importance of pleadings and admissions. The defendant’s belated attempt to contest which sign it used for infringement was rejected because of admissions in its pleadings. This serves as a reminder that trade mark infringement cases often turn on factual marketing practices, and courts will hold parties to their pleaded positions.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”)
- Section 27 (infringement of registered trade marks)
- Section 28(4) (fair use / comparative advertising context)
- Section 35(2) (groundless threats of infringement proceedings)
Cases Cited
- [2015] SGHC 216
- [2016] SGHC 131
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.