Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd

• Jurisdiction: Singapore
• Judge: Chan Seng Onn J
• Judgment Date: 26 July 2011
• Neutral Citation: [2011] SGHC 176
• Court: High Court (Singapore)
• Docket Number: Suit No 9 of 2010
• Year: 2011
• Published date: 29 July 2011
• Hearing Date: 13 April 2011,12 April 2011,11 April 2011,02 June 2011,14 April 2011
• Plaintiff Counsel: M Ravindran, Sukumar Karuppiah and Justin Blaze George (Ravindran Associates)
• Defendant Counsel: Tan Tee Jim SC and Zechariah Chan Jin Han (Lee & Lee)
• Subject Matter: TRADE MARKS AND TRADE NAMES,TORT
• Citation: [2011] SGHC 176

Chan Seng Onn J:

The Plaintiff is a company incorporated under the laws of Italy. It manufactures and sells confectionary goods, including a cocoa-based hazelnut bread spread under the brand “Nutella”. The Defendant is a company incorporated under the laws of Singapore. It is in the business of retail in food and beverage and the wholesale of coffee, cocoa and tea. It owns and operates the café outlets known as “tcc – Art Boutique Caffe”, now known as “tcc – the connoisseur concerto” (“TCC”).

Factual background

The Plaintiff manufactures and markets world renown brands of confectionery such as “Ferrero Rocher”, “Nutella”, “Confetteria Raffaello”, the “Kinder” brand series (comprising “Kinder Bueno”, “Kinder Chocolate” and “Kinder Surprise”), “Mon Cheri” and “Tic Tac”.

With regard to the “Nutella” brand, the Plaintiff is the registered proprietor of the following marks in Class 30 of the International Classification of Goods and Services (“ICGS”) in Singapore (collectively referred to as the “‘Nutella’ marks”):

No	Trade Mark No	Trade mark	Specifications
1	T73/59592H (registered on 16 August 1973)		Confectionery, baking powder, chocolate products, cream comprising cocoa with or without other ingredients.
2	T82/01892B (registered on 16 April 1982)		Chocolate cream spread.
3	T04/09636H (registered on 15 June 2004)		Pastry and confectionery, chocolate candies, chocolate biscuits, chocolate bars, chocolate spreads and ice creams.

For clarity, the trade mark reproduced in the first row above (T73/59592H) will be referred to as “the ‘Nutella’ word mark”, whereas all the three trade marks above will be referred to collectively as “the ‘Nutella’ trade marks”.

On 1 August 2007, the Defendant introduced a new gourmet hot coffee beverage served in a shot glass (the “‘Nutello’ drink”, or the “Defendant’s product”) under the “Nutello” sign (the “‘Nutello’ sign”), prepared at TCC outlets by the Defendant’s baristas. I have been careful to use the word “sign” in describing the term “Nutello”, as the word “sign” has a specifically defined meaning in the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”). Section 2(1) of the TMA defines the term “sign” as:

any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof.

This is the most generic description available under the TMA, and it is necessary to use such a term so as to distinguish a “sign” from a “trade mark”, the latter having its own statutorily defined meaning of (s 2(1) of the TMA):

[a]ny sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person

It is clear from the definitions of “sign” and “trade mark” reproduced above that all trade marks are signs, but that the converse is not true. Some confusion arose in this case as a result of counsel for the Defendant referring to “Nutello” as a “mark”, when what he appeared to have meant was that “Nutello” was a “sign” (see [37]et seq). To avoid such confusion, I have consistently used the generic term “sign” to describe “Nutello” throughout this judgment.

In the Defendant’s TCC Drinks Gallery Menu, the “Nutello” drink was featured under the “Espresso Specialties” section. The “Nutello” drink is served in a shot glass and consists of, inter alia, espresso, milk foam, cocoa powder and “Nutella” chocolate cream spread. The TCC Drinks Gallery Menu describes “Nutello” as “Espresso with lashings of nutella – perfect for cocoa lovers!” Each “Nutello” drink is priced at S$5.60, excluding government taxes and service charge.

Since the launch of the “Nutello” drink, the “Nutello” name has been used in various representations in the Defendant’s promotional materials:

No	Menu	Representation
1	2009 Drinks Gallery menu
2	Booklet
3	Website

On 3 December 2009, the Plaintiff issued a cease-and-desist letter to the Defendant objecting to the Defendant’s use of the “Nutello” name and the description “Nutello – Espresso with lashings of nutella – perfect for cocoa lovers!” The Plaintiff demanded, inter alia, payment of S$50,000 as damages.

On 15 December 2009, the Defendant requested for an extension of one month, ie till 17 January 2010, to respond to the Plaintiff’s letter. However, the Plaintiff refused to accede to such a request by way of a letter dated 16 December 2009. The Plaintiff initiated the present action on 6 January 2010.

In July 2010, by reason of an annual overhaul of the entire Drinks Gallery Menu, the Defendant discontinued sales of the “Nutello” drink.

The Plaintiff’s Claims

In the Plaintiff’s statement of claim, the Plaintiff alleged that the Defendant: Infringed the Plaintiff’s “Nutella” word mark under s 27(2)(b) of the TMA by using a similar sign on identical and/or similar goods (hereinafter, the “trade mark infringement claim”); and/or Infringed the Plaintiff’s well known “Nutella” trade marks by (hereinafter, the “well known trade mark infringement claim”): using a similar sign on identical and/or similar goods, which is likely to cause confusion (under s 55(2) of the TMA); using a similar sign, in relation to any types of goods, such as to indicate a connection between those goods and the Plaintiff, and is likely to damage the Plaintiff’s interests (under s 55(3)(a) of the TMA); using a similar sign, in relation to any types of goods, which would: cause dilution in an unfair manner of the distinctive character of the Plaintiff’s “Nutella” marks (under s 55(3)(b)(i) of the TMA); or take unfair advantage of the distinctive character of the Plaintiff’s “Nutella” marks (under s 55(3)(b)(ii) of the TMA). Committed the tort of passing off (hereinafter, the “passing off claim”).

This judgment proceeds to address the various claims made by the Plaintiff. I would note at the outset that many aspects of the various claims overlap with each other, even if, at times, they do not adopt the same legal parlance. Accordingly, in order to streamline the analysis, extensive use of cross-referencing – even across different heads of claim – will be adopted where appropriate.

It should be noted that while injunctions and damages may be ordered under the trade mark infringement claim and the passing off claim, the only relief with regard to the claim of well known trade mark infringement is limited to a restraining injunction.

I turn first to consider the trade mark infringement claim.

The trade mark infringement claim (s 27(2)(b) of the TMA)

The Plaintiff’s trade mark infringement claim is based only on one of the Plaintiff’s registrations, viz, the “Nutella” word mark.

The issues presented by the trade mark infringement claim are multiple and complex. Accordingly, I shall provide a brief overview on the structure of the analysis adopted in this judgment.

The trade mark infringement claim is premised on s 27(2)(b) of the TMA which provides:

(2) A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because — … (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public.

[emphasis added]

Before infringement under s 27(2)(b) of the TMA can be considered, an important threshold issue is whether the infringing sign must be used as a trade mark in the course of trade (“the threshold issue”). This issue will be dealt with in greater detail below (see [29]et seq).

Assuming the threshold issue has been resolved in favour of the Plaintiff, the Plaintiff must still show three elements in order to establish an infringement under s 27(2)(b) of the TMA. The three elements are, namely (The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR(R) 690 (“Polo”) at [8]; cited in City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 (“City Chain”) at [43]): The alleged offending sign must be similar to the registered mark (hereinafter, “similarity of marks”); Both the sign and the mark must be used in relation to similar goods or services (hereinafter, “similarity of goods”); and On account of the presence of the first two conditions, there exists a likelihood of confusion on the part of the public (hereinafter, “likelihood of confusion on the part of the public”).

These elements will be analysed in greater detail below. However, two points should be noted here. First, although there is some link and overlap in the three conditions, it is clear that they are distinct conditions – the fact that a sign is similar to a registered mark, and/or that it is used on similar goods, does not automatically mean that there will be a likelihood of confusion on the part of the public (Polo at [8]; City Chain at [44]). Second, the third question of whether there exists a likelihood of confusion need not be considered if either of the first two conditions is not satisfied. This is because the “global assessment test” – a test which focuses on the ultimate question of whether there is a likelihood of confusion – has been decisively rejected by the Court of Appeal in Polo (see Polo at [8]; and see City Chain at [44]).

I now consider the threshold issue of whether the allegedly infringing mark must be used in a trade mark sense before the issue of trade mark infringement can be considered.

The threshold issue: Must there be trade mark use?

The Court of Appeal in City Chain considered at length the threshold issue of whether the infringing sign must be used in a trade mark sense (hereinafter,...