High court rules on “relevant public” and comparative advertising

12th December 2016

The Singapore High Court has ruled that the “relevant public” – for the purposes of determining the likelihood of confusion for trade mark infringement where pharmaceutical products are concerned should include end-users, when the end-users are involved in selecting the products they would use. The High Court also ruled on the defence of comparative advertising for the first time, holding that the defence does not apply when the advertisement in question was misleading.

In Allergan Inc. & Anor v Ferlandz Nutra Pte Ltd, the Claimant, Allergan, owned a registered trade mark for LATISSE in respect of “pharmaceutical preparations for the treatment of eyelashes”. The Defendant promoted and sold an eyelash growth product under the sign LASSEZ. The Singapore High Court decided that the Defendant’s acts amounted to trade mark infringement.

In relation to the assessment of the likelihood of confusion, the Defendant argued that the “relevant public” should be confined to medical practitioners because end-users of the Claimant’s products had no access to them other than through medical practitioners. The Court disagreed. It held that endusers should also be taken into account if (but only if) endusers were involved in selecting the products they would use. In this instance, end-users would ask clinic staff for eyelash growth-enhancing products and then be referred to both the Latisse and Lassez products, which were displayed side-byside in clinics.

Separately, in considering the applicability of the defence of “fair use” for comparative advertising, the Court held that in deciding whether the use was “fair”, a relevant consideration was whether the advertisement contained a materially false or misleading statement.

The Defendant’s advertisement used results for the two products which were based on different tests in different studies. This was deemed misleading and, accordingly, the defence did not apply.

Take-aways:

• When selecting a name or logo, even where products and services are primarily targeted at professionals or available to end-users only through professionals, brands should consider whether end-users will play any role in the selection process. If so, the perspective of end-users must be taken into account to ensure that the product or service can be properly distinguished from a competitor’s.
• When using comparative advertising in marketing products or services, brand owners are advised to ensure that the data presented is directly comparable. If this is not possible, then the data should not be included in a comparative chart or table. Additionally, clear and prominent disclaimers should be included in the advertisement to alert the user to any differences.
• Brands would do well to be mindful of who may have access to their marketing material, and ensure that it is prepared accordingly. If information is not intended for end-users, the advertisers ought to make that clear in the ad, and take steps to ensure that it will not be seen by end-users in the ordinary course of events.

This report is based on an article which first appeared in Intellectual Property Magazine. The authors represented the Claimant in this case.

Originally published in BrandWrites 7th Edition.