Allergan, Inc. and another Ferlandz Nutra Pte Ltd

• Jurisdiction: Singapore
• Judgment Date: 20 July 2016
• Date: 20 July 2016
• Docket Number: Suit No 34 of 2013
• Court: High Court (Singapore)

Allergan, Inc and another

and

Ferlandz Nutra Pte Ltd

[2016] SGHC 131

George Wei J

Suit No 34 of 2013

High Court

Tort — Malicious falsehood — Defendant distributed 2009 letter by US Food & Drug Administration that stated that first plaintiff’s promotional materialswere misleading — Whether defendant published false statement

Tort — Passing off — Damage — Plaintiffs and defendant were selling eyelash growth-enhancement products — Whether there was blurring — Whether there was tarnishment — Whether there was restriction on expansion

Tort — Passing off — Goodwill — Plaintiffs marketed its product, a prescription drug, to medical professionals only — Whether plaintiffs enjoyed relevant goodwill in their business in Singapore

Tort — Passing off — Misrepresentation — Defendant sold its product under name “Lassez” while plaintiffs sold their product under name “Latisse” — Whether defendant made misrepresentation that created likelihood of confusion

Trade Marks and Trade Names — Groundless threat — Plaintiffs threatened defendant that it would commence proceedings for trademark infringement — Whether plaintiff liable for making groundless threat of infringement proceedings — Section 35 Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names — Infringement — Defendant used plaintiffs’ registered trademark in its brochure — Whether defendant’s use of plaintiffs’ trademark constituted “use” in trademark sense — Whether defendant’s use of plaintiffs’ registered trademark constituted fair use in comparative advertising — Sections 27(1) and 28(4)(a) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names — Infringement — Plaintiffs and defendant were involved in eyelash growth-enhancement product — Whether defendant’s allegedly infringing sign similar to plaintiffs registered trade mark — Whether allegedly infringing signs used in relation to similar goods or services — Whether there was likelihood of confusion — Section 27(2) Trade Marks Act (Cap 332, 2005 Rev Ed)

Facts

Allergan, Inc (“the First Plaintiff”) was an American company that developed and commercialised healthcare products. It was also the registered proprietor of a word mark (“the LATISSE mark”) inrelation to “pharmaceutical preparations used to treat eyelashes”. The LATISSE mark was applied to an eyelash growth product (“the Latisse Product”). The Latisse Product was marketed and distributed by Allergan Singapore Pte Ltd (“the Second Plaintiff”, or collectively, “the Plaintiffs”), a wholly–owned Singapore subsidiary of the First Plaintiff. The Latisse Product was also marketed under an unregistered composite sign depicting the word “Latisse” with an eyelash device above the word (“the Latisse Device Sign”).

Ferlandz Nutra Pte Ltd (“the Defendant”) was a Singapore company that imported and distributed cosmeticeutical and neutraceutical products. Mr Lee Boon Guan (“Mr Lee”) was the Defendant’s sole director. In July 2012, the Defendant brought into Singapore an eyelash growth–enhancement product (“the Lassez Product”). The Lassez Product was marketed using the a plain word sign, “Lassez”, and a composite sign depicting the word “Lassez” with an eyelash device below the word (the latter is referred to as “the Lassez Device Sign” and collectively, “the Allegedly Infringing Signs”).

The Plaintiffs commenced proceedings against the Defendant for two claims of trademark infringement and claims in passing off and malicious falsehood. The claims of trademark infringement under s 27(2) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”) and passing off related to the Defendant’s sale of the Lassez Product under the Allegedly Infringing Signs.

The Plaintiffs’ claim of trademark infringement under s 27(1) of the TMA related to the Defendant’s use of the LATISSE mark in the Defendant’s promotional brochure. he Defendant relied on the defence of comparative advertising under s 28(4)(a) of the TMA.

The Plaintiffs’ claim in malicious falsehood related to Mr Lee’s distribution of a copy of a letter (“the FDA Letter”) by the US Food & Drug Administration (“the FDA”) to the staff of Temasek Medical Center (“TMC”) on or around May 2012. The FDA Letter, dated 10 September 2009, set out the FDA’s view that the First Plaintiff promotional materials and website in relation to the Latisse Product were misleading and requestedremedial action. The First Plaintiff, which had complied with the FDA’s request, alleged that Mr Lee’s distribution constituted a statement that the First Plaintiff’s promotional materials continue to be misleading. The Defendant took the position that the distribution only meant that the First Plaintiff’s promotional materials were misleading at the date of the FDA Letter.

The Defendant counterclaimed for groundless threat of infringement proceedings under s 35 of the TMA.

Held, allowing the claim in part and dismissing the counterclaim:

(1) In assessing the similarity of marks, the court was to assume the mantle of a notional average consumer, and not delve into the detailed characteristics and perceptions of the actual consumers: at [35].

(2) The LATISSE mark was aurally similar to the Allegedly Infringing Signs. Evidence of the French pronunciation of “Latisse” was of no direct relevance, for what had to be ascertained was how the Singaporean consumer would pronounce “Latisse” and “Lassez”: at [40].

(3) The LATISSE mark was visually similar to the Allegedly Infringing Signs. “Latisse” was similar to “Lassez” in length and structure. Differences in font size and colour were insufficient to dispel the similarity. The LATISSE mark was registered in block letters, and that covered the use of the word in every front or style. “Latisse” was also an inherently distinctive word as it was a newly–coined and meaningless word that did not say anything about the character, quality, nature or attributes of the goods or services. This made it more difficult to establish dissimilarity by asserting differences in font and colour. The eyelash device in the Lassez Device Sign did not dispel similarity, as the word “Lassez” was the dominant feature of the Lassez Device Sign, and the eyelash device had clear descriptive connotations: at [42], and [44] to [46].

(4) The LATISSE mark was not conceptually similar to the Allegedly Infringing Signs. Similarity in the sense that they appeared to be based on a foreign language, even the same foreign language, was not sufficient to amount to conceptual similarity: at [49].

(5) As a whole, the LATISSE mark was similar to the Allegedly Infringing Signs: at [50].

(6) In assessing the similarity of goods, the comparison was between the allegedly infringing goods and the product in respect of which the trade mark was registered for. Here, the comparison was between the Lassez Product and “pharmaceutical preparations used to treat eyelashes”: at [51] and [53].

(7) While the Lassez Product was in broad terms a cosmetic product, not pharmaceutical one, that was not conclusive of the issue of similarity of goods. Products in different classes of the International Classification of Goods and Services under the Nice Agreement might still be similar: at [55].

(8) The factors identified in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (“British Sugar”) to determine the similarity of goods (including the uses, users and trade channels and substitutability of the actual goods produced by the parties) were relevant as a guide to assist a court in assessing the similarity of goods. Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2013] 1 SLR

531 did not stand for the proposition that these factors were inapplicable when

the comparison was between the allegedly infringing goods and goods within the trade mark specification that had not yet been produced: at [56] to [60].

(9) The application of the British Sugar factors and a comparison of the Lassez Product with the specification for the LATISSE mark indicated that the goods were similar: at [61] to [64].

(10) In the likelihood of confusion inquiry, the relevant section of the public included the end–users as the end–users could have a significant degree of involvement in the selection process of their eyelash growth-enhancing product: at [82].

(11) The likelihood of confusion from the end-users’ perspective alone was sufficient to meet the requirement of the likelihood of confusion, regardless of whether medical professionals were similarly confused: at [86].

(12) The end–users had a relatively high level of attentiveness as the products related to personal well-being and were expensive: at [100].

(13) There was a likelihood that end–users would be confused, given the similarity of marks, similarity of goods and the survey evidence which indicated that a significant portion of end–users would be confused: at [114].

(14) The Defendant’s use of the LATISSE mark in the brochure was use in the trade mark sense as it referred the reader to the Latisse Product for the purpose of the comparison that was being made with the Lassez Product. Comparative advertising normally involved the identification of the products that were being compared: at [129] and [130].

(15) The enactment of s 28(4)(a) of the TMA in 2004 meant that the court was no longer bound by the case law principles developed in respect of the previous provision on comparative advertising. Whilst it was clear that Parliament in enacting s 28(4)(a) of the TMA was referencing the US fair use doctrine, this court was not bound by US decisions on fair use. Our courts would determine what sort of fair use in comparative advertising accords with fair practices in the market which was truly reflective of the needs of Singapore and her stakeholders: at [147].

(16) The defendant bore the burden of proving fair use: at [148].

(17) The question of whether the inclusion of a false statement negated fair use depended on the nature of the statement (eg, whether it significantly undermined the...