Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA
Jurisdiction | Singapore |
Judge | Chao Hick Tin JA |
Judgment Date | 16 October 2012 |
Neutral Citation | [2012] SGCA 56 |
Court | Court of Appeal (Singapore) |
Docket Number | Civil Appeal No 102 of 2011 |
Published date | 01 November 2012 |
Year | 2012 |
Hearing Date | 09 January 2011 |
Plaintiff Counsel | Tan Tee Jim S.C., Zechariah Chan Jin Han and Jeremiah Chew (Lee & Lee) |
Defendant Counsel | M. Ravindran, Sukumar Karuppiah and Justin Blaze George (Ravindran Associates) |
Subject Matter | Trade Marks and Trade Names,Tort,Passing Off |
Citation | [2012] SGCA 56 |
This is an appeal against the decision of a High Court judge (“the Judge”) given in Suit No. 9 of 2010 which was instituted by Ferrero S.P.A (“the Respondent”) against Sarika Connoisseur Cafe Pte Ltd (“the Appellant”) for trade mark infringement and passing off.
The Appellant, a company incorporated in Singapore, is a retailer in the food and beverage business and a wholesaler of coffee, cocoa and tea. It owns and operates a chain of cafe outlets (“cafes”) presently known as “tcc – the connoisseur concerto” (“TCC”). In its cafes, it offers customers, amongst others, a variety of gourmet coffee beverages and coffee concoctions.
The Respondent is a company incorporated in Italy. It manufactures and retails confectionery, including a cocoa-based hazelnut spread (“Nutella spread”) marketed under the brand name “Nutella”, which is the product concerned in the present case. The spread is sold at various retail outlets in Singapore, including supermarkets. The Respondent is the registered proprietor of the following marks (shown below) in Class 30 of the International Classification of Goods and Services in Singapore (“ICGS”). To avoid confusion, we will, as did the Judge, refer to the first mark as the “Nutella” word mark, while all three marks will be referred to collectively as the “Nutella” trademarks:
Background to the disputeThe facts of this case are neither complex nor in serious dispute. On 1 August 2007, the Appellant introduced a new gourmet hot coffee beverage served in a shot glass under the “Nutello” sign in its cafes. As the Judge rightly noted, the term “Nutello” is more appropriately described as a “sign”1 under the definition in section 2(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), as distinguished from a “trade mark”2 defined in section 2(1) of the TMA. The ingredients in the “Nutello” drink (“Nutello beverage”) comprised espresso, milk foam, cocoa powder and Nutella spread, amongst others. This drink was listed under the “Espresso Specialties” section of the TCC Drinks Gallery Menu (the “menu”). The menu describes the Nutello beverage as: “Espresso with lashings of nutella – perfect for cocoa lovers!” (“menu description”).
To effect sale of the Nutello beverage, the appellant had used the term “Nutello” in various forms in its promotional material such as the menu, booklet and website. They are set out below:
On 3 December 2009, the Respondent issued a cease-and-desist letter to the Appellant, objecting to the latter’s use of the “Nutello” sign and the menu description of the Nutello beverage. Damages amounting to S$50,000 were demanded.
On 15 December 2009, the Appellant requested an extension of one month till 17 January 2010 to respond to the Respondent’s letter, but in a letter dated 16 December 2009, the Respondent refused to accede to this request. On 6 January 2010, the latter instituted Suit No 9 of 2010 (“the action”) in the High Court.
In July 2010, sales of the Nutello beverage were discontinued by the Appellants, ostensibly due to an annual menu overhaul.
The decision below In the court below, the Judge held that:
Consequently, the Judge granted injunctions to restrain the Appellant from infringing the Respondent’s “Nutella” trademarks and from passing off its “Nutello” products as products of, or connected to, the Respondent. He also ordered that damages be assessed.
Issues in the appeal The appellant raised the following issues in this appeal (with accompanying sub-issues):
We note that the Appellant is not appealing against the finding of the Judge that the “Nutella” trademarks are well known marks, and neither has the Respondent taken issue with the Judge’s finding that there is no unfair advantage taken by the Appellant of the “Nutella” trademarks’ distinctive character under s 55(3)(b)(ii) TMA.
For ease of reference, we set out here the legislative provisions in the TMA,
Acts amounting to infringement of registered trade mark
27. — (1) ...
there exists a likelihood of confusion on the part of the public.
...
Protection of well known trade marks
55. — (1) ...
The step-by-step approach propounded in
The Judge had found that the “Nutello” sign and the “Nutella” word mark were not identical, and this finding is not challenged by the Respondent. In this appeal, the Appellant has only raised arguments on dissimilarity between the sign and the word mark and sought to dispute the individual findings of the Judge relating to visual, aural and conceptual similarity of the two.
General approach to the similarity analysis
Before we determine whether the sign and the trademark are similar, we will first set out briefly the relevant principles of this analysis. The decided cases have established that the court will consider three aspects of similarity,
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