International Update • An appeal board to be created within the NIIP to handle potential appeals against NIIP’s decisions, instead of going directly to court; • Stronger enforcement measures, including fair compensation to IP rights owners; • Simplified recording of license, sublicense and assignment agreements – currently, four originals of the agreement are needed for the recordal, but according to the draft law, only a certified copy or extract of the agreement will be required; • Harmonization of the ‘exclusive license’ definition with that of the Singapore Treaty — according to current regulations, a licensor retains his right to use a patent, trade mark, industrial design or plant variety even after transferring his license to a licensee. According to the draft law, this right will truly be exclusive to the license holder, that is, the licensor will lose his IP right once he transfers his license; • Clarification of what is to be done with original goods found in the same shipment with counterfeit goods – they are to be transferred to the rights holder or to their representative, provided that their appearance or purpose have not been altered; and • Clarification regarding proof of use of a trade mark – the use of a registered trade mark in a slightly different form that does not influence its distinctiveness should be considered as proper use and cannot be grounds for cancellation. RUSSIA PETOSEVIC In June 2016, the Russian PTO announced the beginning of public discussions on the introduction of the trade mark opposition system in Russia, the main goal of which is to shorten the trade mark registration process from the current 12-18 month period to 6-12 months. The proposed trade mark opposition procedure stipulates that, once a trade mark application is received, the Russian PTO conducts a formal examination on absolute grounds within 3 months of receiving the application and if no absolute grounds for refusal are found, the application is published so that third parties can file oppositions, within the next 3 months. If nobody objects to the application, the registration process continues; if an opposition is filed and the parties fail to reach an agreement within 6 months, the examiner considers the opposition and issues the final decision. The Defendant brought an eyelash growth-enhancement product (the Lassez Product) into Singapore. The Lassez Product was marketed using the unregistered plain word sign and composite sign depicted above. The Court found that the Latisse Mark and the Lassez Signs were, in their totality, similar. The competing marks were held to be aurally similar. Evidence of the French pronunciation of Latisse was not relevant – what mattered was how the Singaporean consumer would pronounce Latisse and Lassez – which, it was ruled, would result in aural confusion between the two products. The competing marks were found to be visually similar. Latisse was an inherently distinctive word that was not descriptive of the relevant goods. This made it more difficult to dispel any similarity by virtue of differences in font and colour in the case The current trade mark legislation already provides for certain elements of the opposition procedure, as anyone may file a written notice against any published application before the issuance of the final decision. However, it does not outline a procedure for the consideration of the filed notice, and the other party may not receive a copy of the issued office action or final decision. The public discussion on the new procedure is still ongoing. During a recent roundtable, a Russian PTO official stated that the new procedure has recently led to an active discussion among professionals, with 49.6% voting in favor of it, 14.1% in favor of it under certain conditions and 36.3% against it. SINGAPORE Gladys Mirandah and Chow Jian Hong, mirandah asia – singapore In Allergan, Inc and another v Ferlandz Nutra Pte Ltd, the plaintiffs Allergan, Inc (the First Plaintiff) and Allergan Singapore Pte Ltd, brought proceedings in the Singapore High Court against the defendant, Ferlandz Nutra Pte Ltd (the Defendant) for trade mark infringement relating to the Defendant’s use of the First Plaintiff's mark in the Defendant's promotional brochure. The First Plaintiff was the registered proprietor of the plain word mark LATISSE (the Latisse Mark), in relation to “pharmaceutical preparations used to treat eyelashes”. The Lattise Mark was applied to an eyelash growth product (the Latisse Product). of plain word marks. The eyelash device in the Lassez Device Sign did not dissipate the visual similarity because the word Lassez was the dominant feature of the sign, and the device was descriptive of the Lassez Product. However, the competing marks were found to be conceptually dissimilar. Both competing marks consisted of invented words with no meaning. The fact that the competing marks were based on the same foreign language was insufficient to constitute conceptual similarity. The Court found that the competing goods were similar, because they had similar uses – both promoted eyelash growth - and were sold in competition with each other, to similar users (medical patients) in similar trade channels (medical clinics). Accordingly, the Court found that there was a likelihood of confusion between the two marks. The relevant public was held to include not just medical professionals, but also end-users, because end-users were significantly involved in selecting eyelash growth-enhancing products. Even though end-users would pay a high degree of attention in the purchasing process given that the products were expensive and related to personal wellbeing, it was found that there was a likelihood that a significant portion of endusers would nevertheless be confused, given the similarity of marks and goods, and given the existence of consumer surveys as evidence pointing towards that outcome. Although it was held that the similarity was not likely to be sufficient to confuse medical professionals, the likelihood of confusion from the end-users’ perspective alone was sufficient to satisfy the requirement of a likelihood of confusion. The Court held that the Defendant could not avail itself of the comparative advertising defence from its use of the Latisse Mark, because its brochure was materially misleading. The brochure contained a chart, which gave the impression that the Lassez Product achieved better and faster clinical results than the Latisse Product. However, the chart's fine print showed that it did not in fact reveal which product delivered better results, because the basis of measurement for the graphs was not derived from a head-to-head comparison. Even if medical professionals might be expected to read the fine print in the chart, the same could not be expected of end-users. In conclusion, the Defendant was found liable for trade mark infringement. 5