Bird & Bird ATMD wins trade mark and passing off action for pharmaceutical giant, Allergan Inc.

In its Judgment in Allergan, Inc. and anor. v Ferlandz Nutra Pte Ltd, the court held that the defendant's promotion and sale of its cosmetic product "LASSEZ" touted to promote eyelash growth infringed Allergan's registered trade mark for "LATISSE" in Class 5 for "pharmaceutical product for the treatment of eyelashes", and also amounted to passing-off.

Allergan's trade mark infringement claim by reference to the defendant's use of the identical "LATISSE" mark in a comparative advertisement also succeeded. The court rejected the defendant's defence of "fair use" for comparative advertising under section 28(4) of the Trade Marks Act (Cap. 332) based on its finding that the advertisement was materially misleading.

The case is significant as it is the first local decision on the comparative advertising defence. It also marks the first time that the High Court considered the question of whether end-users should be included as part of the relevant public in the likelihood of confusion analysis for trade mark infringement where the subject mark is used in respect of a pharmaceutical product. The court held that the possibility of confusion amongst end-users should be taken into account in this case as the evidence showed that end-users were significantly involved in selecting the products.