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
- Judgment Reserved: (as stated) Judgment reserved
- Plaintiffs/Applicants: (1) Allergan, Inc; (2) Allergan Singapore Pte Ltd
- Defendant/Respondent: Ferlandz Nutra Pte Ltd
- Legal Areas: Tort (malicious falsehood); Trade Marks and Trade Names (infringement, groundless threats); Passing off
- Core Claims: Trade mark infringement; passing off; malicious falsehood
- Counterclaims: Groundless threats of infringement proceedings
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”) (including ss 27, 28(4), 35(2))
- Cases Cited: [2015] SGHC 216; [2016] SGHC 131
- Judgment Length: 85 pages, 22,893 words
Summary
Allergan, Inc and Allergan Singapore Pte Ltd (“the Plaintiffs”) sued Ferlandz Nutra Pte Ltd (“the Defendant”) over the Defendant’s marketing and sale in Singapore of an eyelash growth-enhancement product branded as “LASSEZ” (the “Lassez Product”). The Plaintiffs relied on their registered trade mark “LATISSE” (and an unregistered “Latisse Device” sign) used for an FDA-approved eyelash hypotrichosis treatment product (the “Latisse Product”). The Plaintiffs alleged trade mark infringement, passing off, and the tort of malicious falsehood. The Defendant counterclaimed that the Plaintiffs made groundless threats of infringement proceedings.
The High Court (George Wei J) addressed the dispute through a structured analysis of (i) trade mark infringement under the Trade Marks Act, including the similarity of signs and the likelihood of confusion, (ii) whether the Defendant’s comparative advertising fell within the statutory “fair use” framework, (iii) passing off—goodwill, misrepresentation, and damage, and (iv) malicious falsehood—falsehood, malice, and likelihood of pecuniary damage. The Court also considered the Defendant’s counterclaim for groundless threats, which depended on the success or failure of the Plaintiffs’ infringement claims.
While the extracted text provided here is partial, the judgment’s architecture makes clear that the Court treated trade mark infringement and passing off as distinct causes of action with overlapping but legally different elements. The decision is therefore particularly useful for practitioners because it demonstrates how Singapore courts approach (a) the “average consumer” and end-user segments in confusion analysis, (b) the “use in the trade mark sense” requirement for comparative advertising, and (c) the evidential linkage required for malicious falsehood and groundless threats.
What Were the Facts of This Case?
The First Plaintiff, Allergan, Inc, is an American healthcare company with offices in more than 100 countries and over 10,000 employees. The Second Plaintiff, Allergan Singapore Pte Ltd, is the wholly owned Singapore subsidiary that distributes the First Plaintiff’s products in Singapore. The central product in the litigation is an eyelash growth product sold in Singapore since January 2011: the Latisse Product. It is indicated for eyelash hypotrichosis, a medical condition characterised by inadequate or insufficient eyelashes, and is described as the only product approved by the US Food and Drug Administration (“FDA”) for the treatment of hypotrichosis.
The Plaintiffs marketed the Latisse Product under both a registered word mark and an unregistered sign. The registered mark is the word “LATISSE” (the “LATISSE mark”), registered in Class 5 under the Nice Classification. The specification relevant to the case is “Pharmaceutical preparations used to treat eyelashes”. The Plaintiffs also used a sign referred to as the “Latisse Device Sign”, which combines the word “Latisse” with a design resembling eyelashes. The Latisse 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 Mr Lee, who is its sole director and shareholder, and the Defendant’s business is essentially Mr Lee’s own enterprise structured through a company. In July 2012, the Defendant brought into Singapore an eyelash growth-enhancement product made in America: the Lassez Product. The Defendant marketed the Lassez Product under three signs: (i) the “Plain Lassez Sign” (LASSEZ), (ii) the “Lassez Device Sign” (LASSEZ with a device element), and (iii) the “Lassez ‘Ingredient’ Sign”.
For the purposes of trade mark infringement, the Plaintiffs alleged infringement only in respect of the Defendant’s use of the Plain Lassez Sign and the Lassez Device Sign (together, the “Allegedly Infringing Signs”). The Lassez “Ingredient” Sign was treated as relevant mainly to the passing off inquiry. A notable procedural point arose when the Defendant belatedly objected to the Plain Lassez Sign being considered as the Defendant’s sign for infringement. 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 the Plain Lassez Sign and the Lassez Device Sign. The Defendant’s own pending trade mark application for the Plain Lassez Sign was also noted as inconsistent with its position.
What Were the Key Legal Issues?
The first major issue was whether the Defendant infringed the Plaintiffs’ registered LATISSE mark under s 27 of the Trade Marks Act. This required the Court to consider whether the Allegedly Infringing Signs were similar to the LATISSE mark, whether the Lassez Product was identical with or similar to the goods for which the LATISSE mark was registered, and whether there was a likelihood of confusion among the relevant public.
Within the infringement inquiry, the Court had to decide subsidiary questions about the “average consumer” and the relevant segment of the public. The judgment extract highlights that the Court examined (i) who the relevant consumers were and whether end-users were part of the relevant public, (ii) the identity of end-users, (iii) whether medical professionals were likely to be confused, and (iv) the role of aural, visual, and conceptual similarity in the overall similarity assessment.
The second major issue concerned the Plaintiffs’ comparative advertising. The Plaintiffs alleged that the Defendant used the LATISSE mark in promotional brochures for the Lassez Product. The Court therefore had to determine whether such brochures constituted “use” in the trade mark sense and, if so, whether the Defendant could rely on the statutory defence of fair use under s 28(4) of the TMA. This involved an analysis of the history and principles of s 28(4)(a), including a comparison between the English and US positions.
Third, the Defendant counterclaimed that the Plaintiffs were liable for making groundless threats of infringement proceedings under s 35(2) of the TMA. This claim depended on whether the Plaintiffs’ infringement allegations were ultimately successful. Fourth, the Court had to determine passing off: whether the Plaintiffs had goodwill in Singapore, whether the Defendant made a misrepresentation likely to cause confusion, and whether the Plaintiffs suffered or were likely to suffer damage. Finally, the Court considered malicious falsehood: whether the Defendant published a false statement, whether it was published maliciously, and whether it was calculated to cause pecuniary damage.
How Did the Court Analyse the Issues?
The Court’s analysis of trade mark infringement followed a conventional yet detailed Singapore approach: it first assessed similarity of signs, then similarity of goods, and finally likelihood of confusion. The extract indicates that the Court treated similarity as a multi-factor inquiry, examining aural, visual, and conceptual similarity. This is consistent with established trade mark jurisprudence that similarity is not assessed in the abstract but in the context of how consumers perceive marks in real-world purchasing conditions.
Crucially, the Court did not treat “the public” as a monolith. It analysed who the relevant consumers were and whether end-users and medical professionals formed part of that relevant public. In markets involving healthcare-adjacent products, the level of attention and the purchasing channel can materially affect confusion analysis. The Court therefore examined the identity of end-users and considered whether medical professionals were likely to be confused, reflecting the idea that confusion must be assessed from the perspective of the relevant section of the public, not merely from the perspective of an abstract consumer.
On the similarity of goods, the Court considered whether the Lassez Product was identical with or similar to the pharmaceutical preparations used to treat eyelashes for which the LATISSE mark was registered. Even where the Defendant’s product is marketed as a cosmeticeutical or neutraceutical rather than a pharmaceutical, the inquiry is not purely label-based. It turns on the nature of the goods, their purpose, and how consumers understand them. The Court’s reasoning, as signposted in the extract, therefore linked the “actual product” to the registered specification: the Latisse Product was treated as the actual product to which the LATISSE mark had been applied, and the Lassez Product was evaluated against that backdrop.
For the second category of alleged infringement—use of the LATISSE mark in comparative advertising—the Court addressed two threshold questions. First, it asked whether the Defendant’s promotional brochures constituted “use” in the trade mark sense. This requirement is significant: not every mention of a mark in advertising automatically amounts to trade mark use. The Court then considered whether the Defendant could rely on the fair use defence under s 28(4). The extract indicates that the Court reviewed the history of s 28(4)(a) and compared English and US approaches, before applying the principles to the facts. This comparative method suggests the Court was attentive to the policy balance underlying comparative advertising: allowing truthful comparisons while preventing unfair exploitation of trade mark goodwill.
In passing off, the Court separated the inquiry into goodwill, misrepresentation, and damage. The extract indicates that the Court examined whether the Plaintiffs had goodwill attached to the goods and services they provided in Singapore. It then assessed whether the Defendant made a misrepresentation creating a likelihood of confusion. The Court’s focus on “intentions of Mr Lee”, the similarity of promotional materials, product packaging, and price disparity shows that the misrepresentation analysis was not limited to side-by-side mark comparison. It also considered the overall get-up and commercial context in which consumers would encounter the Defendant’s marketing.
For damage, the Court considered whether the Plaintiffs had or were likely to have suffered damage as a result of the misrepresentation. The extract specifically references blurring and tarnishment. These are classic categories of passing off damage: blurring refers to dilution of distinctiveness (consumers associating the mark with the defendant’s goods rather than the claimant’s), while tarnishment refers to harm to reputation. The Court’s approach indicates that it treated damage as a forward-looking inquiry where evidence of likely harm can suffice.
On malicious falsehood, the Court applied the tort’s structured elements: publication of a false statement, malice, and calculation to cause pecuniary damage. The extract indicates that the Court considered whether the Defendant published a false statement about the First Plaintiff, whether it was published maliciously, and whether it was calculated to cause pecuniary damage. This is a demanding standard for claimants because malicious falsehood requires more than mere inaccuracy; it requires proof of malice (in the relevant sense) and a causal or at least likely pecuniary impact.
Finally, the groundless threats counterclaim under s 35(2) of the TMA was necessarily linked to the success of the Plaintiffs’ infringement claims. The Court’s reasoning would therefore have been attentive to whether the Plaintiffs had a reasonable basis for their threats. The extract indicates that the Defendant’s counterclaim was premised upon the Defendant’s successful defence of the Plaintiffs’ trade mark infringement claims. This reflects the statutory policy: threats made without a proper foundation can be actionable, but the law also recognises that rights holders may legitimately assert claims where there is a credible basis.
What Was the Outcome?
The provided extract does not include the Court’s final orders. However, the judgment’s detailed structure shows that the Court had to determine, in sequence, whether trade mark infringement was made out (including comparative advertising and fair use), whether the Plaintiffs succeeded in passing off and malicious falsehood, and whether the Defendant succeeded on its groundless threats counterclaim.
To complete the practical value of this case note for researchers, the final section of the judgment (not included in the extract) would need to be consulted to confirm which claims were allowed or dismissed, and whether any injunctions, declarations, damages, or costs orders were made. For practitioners, the key takeaway is that the Court treated each cause of action as requiring proof of distinct elements, and that the comparative advertising and threats issues were analysed through specific statutory frameworks.
Why Does This Case Matter?
This decision is significant for Singapore trade mark and unfair competition practice because it demonstrates how courts handle disputes at the intersection of pharmaceutical/healthcare-adjacent products, comparative advertising, and consumer confusion. The Court’s emphasis on identifying the relevant public—including whether end-users and medical professionals are likely to be confused—provides a useful template for future cases where the purchasing process and level of attention may differ from ordinary consumer goods.
From a trade mark perspective, the case is also instructive on the “use in the trade mark sense” and “fair use” analysis under s 28(4). Comparative advertising is common in commercial markets, but it can create legal risk when it uses registered marks in ways that may imply endorsement or sponsorship. The judgment’s structured approach—first determining whether there is trade mark use, then assessing fair use—helps practitioners frame arguments and evidence.
For passing off and malicious falsehood, the case underscores the evidential burden. Passing off requires proof of goodwill and a misrepresentation likely to cause confusion, plus damage (including blurring or tarnishment). Malicious falsehood requires publication of a false statement, malice, and a likelihood of pecuniary damage. These elements are often contested, and the judgment’s breakdown indicates the types of evidence that can be relevant: promotional materials, packaging, pricing context, and the intent behind marketing conduct.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), including:
- Section 27 (trade mark infringement)
- 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.