Allergan, Inc v Ferlandz Nutra: Trademark Infringement, Passing Off, Injurious Falsehood
In Allergan, Inc and another v Ferlandz Nutra Pte Ltd, the High Court of Singapore heard an application by Ferlandz Nutra Pte Ltd for leave for its officer to act on its behalf in a suit brought by Allergan, Inc and its subsidiary, concerning trademark infringement, passing off, and injurious falsehood. The plaintiffs alleged that the defendant's product infringed their registered LATISSE trademark. The defendant counterclaimed for groundless threat of suit. The court dismissed the defendant's application, finding that the defendant had not sufficiently demonstrated financial impecuniosity to justify granting leave.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Defendant's application for leave for its officer to act on its behalf dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
High Court case between Allergan, Inc and Ferlandz Nutra regarding trademark infringement, passing off, and injurious falsehood. The court dismissed the defendant's application for its officer to act on its behalf.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Allergan, Inc | Plaintiff | Corporation | Application by Defendant Dismissed | Won | Alban Kang Choon Hwee, Oh Pin-Ping |
| Ferlandz Nutra Pte Ltd | Defendant | Corporation | Application for Leave Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| George Wei | Judicial Commissioner | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Alban Kang Choon Hwee | ATMD Bird & Bird LLP |
| Oh Pin-Ping | ATMD Bird & Bird LLP |
4. Facts
- Allergan, Inc. manufactures an eyelash-growth product marketed under the LATISSE trademark.
- The LATISSE trademark is registered in Singapore under the Trade Marks Act.
- Ferlandz Nutra Pte Ltd distributes an eyelash-growth product under the LASSEZ trademark.
- Allergan claims Ferlandz's LASSEZ trademark infringes the LATISSE trademark and amounts to passing off.
- Ferlandz Nutra Pte Ltd applied for leave for its officer, Mr. Lee, to act on its behalf in the suit.
- Ferlandz Nutra Pte Ltd claimed financial difficulties as the reason for the application.
- Mr. Lee is the sole director and shareholder of Ferlandz Nutra Pte Ltd.
5. Formal Citations
- Allergan, Inc and another v Ferlandz Nutra Pte Ltd, Suit No 34 of 2013 (Summons No 5175 of 2014), [2015] SGHC 5
6. Timeline
| Date | Event |
|---|---|
| Writ issued with endorsed statement of claim | |
| Defence and counterclaim filed | |
| Defendant's solicitors discharged | |
| Accounting and Corporate Regulatory Authority report date | |
| Mr. Lee swore an affidavit in support of the application | |
| Hearing adjourned to enable the defendant to file a further affidavit | |
| Further affidavit in support of the defendant’s application affirmed and filed by Ms. Lee | |
| Ms Lee appointed as corporate secretary of the defendant | |
| Hearing resumed and adjourned | |
| Mr. Lee filed a supplemental affidavit in support of the application | |
| Trial dates vacated pending decision on the application | |
| Judgment handed down in Bulk Trading SA v Pevensey Pte Ltd and another | |
| Solicitors for the plaintiffs wrote in to the Supreme Court Registry | |
| Mr. Lee wrote in by email | |
| Judgment reserved |
7. Legal Issues
- Application for Leave for Officer to Act on Behalf of Company
- Outcome: The court dismissed the defendant's application for leave, finding that the defendant had not sufficiently demonstrated financial impecuniosity to justify granting leave.
- Category: Procedural
- Sub-Issues:
- Compliance with Order 1 Rule 9(2) of the Rules of Court
- Financial Impecuniosity as Justification for Leave
- Related Cases:
- [2014] SGHC 236
- [2000] 3 SLR(R) 745
- Trade Mark Infringement
- Outcome: Not ruled upon directly, as the application concerned procedure.
- Category: Substantive
- Sub-Issues:
- Similarity of Trademarks
- Likelihood of Confusion
- Fair Use
- Comparative Advertising
- Passing Off
- Outcome: Not ruled upon directly, as the application concerned procedure.
- Category: Substantive
- Sub-Issues:
- Reputation
- Misrepresentation
- Damage
- Injurious Falsehood
- Outcome: Not ruled upon directly, as the application concerned procedure.
- Category: Substantive
- Sub-Issues:
- False Statement
- Malice
- Damage
8. Remedies Sought
- Injunction
- Damages
- Account of Profits
9. Cause of Actions
- Trade Mark Infringement
- Passing Off
- Injurious Falsehood
10. Practice Areas
- Commercial Litigation
- Intellectual Property Litigation
11. Industries
- Pharmaceuticals
- Cosmetics
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Bulk Trading SA v Pevensey Pte Ltd | High Court | Yes | [2014] SGHC 236 | Singapore | Addressed the principles applicable to an Order 1 Rule 9(2) application in extenso and was heavily relied upon by the court in the present judgment. |
| Lea Tool and Moulding Industries Pte Ltd (in liquidation) v CGU International Insurance plc (formerly known as Commer Union Assurance Co plc) | Singapore | Yes | [2000] 3 SLR(R) 745 | Singapore | Discussed the court's inherent power to allow an officer to appear on behalf of a company in exceptional cases prior to the amendments to the Rules of Court. |
| Wee Soon Kim Anthony v Law Society of Singapore | Court of Appeal | Yes | [2001] 2 SLR(R) 821 | Singapore | Cited regarding the court's inherent jurisdiction and when it could be invoked. |
| Wellmix Organics (International) Pte Ltd v Lau Yu Man | Singapore | Yes | [2006] 2 SLR(R) 117 | Singapore | Cited regarding the court's inherent jurisdiction and its limitations. |
| Hondon Development Limited and another v Powerise Investments Limited and another | Hong Kong Court of Appeal | Yes | [2003] HKCA 323 | Hong Kong Special Administrative Region | Discussed the policy argument that the benefits of incorporation are bought at a price, including the default rule that a corporation cannot act without legal advisers. |
| Tracto Teknik GMBH and another v LKL International Pty Ltd and others | English High Court | Yes | [2003] 2 BCLC 519 | England | Discussed the factors to be considered when granting leave for an employee to represent a company, including the complexity of the issues, the layperson's experience, and the financial state of the company. |
| Winn v Stewart Bros Constructions Pty Ltd | Supreme Court of South Australia | Yes | [2012] SASC 150 | South Australia | Cited for reasons for requiring a corporate litigant to first seek the leave of court before being able to represent itself in proceedings. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Rules of Court (Cap 322, R 5, 2014 Rev Ed) O 1 r 9(2) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 35 | Singapore |
| Legal Profession Act (Cap 161, 2009 Rev Ed) s 33(1) | Singapore |
| Legal Profession Act (Cap 161, 2009 Rev Ed) s 34(1)(ea) | Singapore |
| Rules of Court O 5 r 6(2) | Singapore |
| Rules of Court O 1 r 9(4) | Singapore |
| Rules of Court O 1 r 9(6) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade Mark Infringement
- Passing Off
- Injurious Falsehood
- Financial Impecuniosity
- Leave to Act
- Officer of Company
- Rules of Court
- LATISSE
- LASSEZ
15.2 Keywords
- trademark infringement
- passing off
- injurious falsehood
- leave to act
- officer of company
- financial impecuniosity
- Allergan
- Ferlandz
- LATISSE
- LASSEZ
16. Subjects
- Civil Procedure
- Intellectual Property
- Trade Marks
17. Areas of Law
- Civil Procedure
- Intellectual Property Law
- Trade Mark Law
- Passing Off
- Injurious Falsehood